Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

 

This letter responds to applicant’s communication filed on December 14, 2007.

 

Please note the two refusals of registration, one continued and one new:

 

I.                    SPECIMEN OF USE UNACCEPTABLE, REFUSAL OF REGISTRATION UNDER SECTIONS 1 AND 45 – CONTINUED

Registration was refused applicant because the specimen of use was not acceptable and did not show the applied-for mark in proper use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §§904 and 1109.09(b).  The specimen was deemed not acceptable as evidence of actual trademark use because it appeared to be merely a digital representation of the mark and therefore failed to show proper use of the mark on the goods or on packaging of the goods.

Applicant has responded to the above refusal with a new specimen, showing the mark on the packaging of what appears to be candy in the form of lip gloss.  This new specimen is unacceptable because it does not appear to show use of the mark on any of the goods identified in the application.

 

The goods named in the present application are identified as follows:  “BOARD GAMES, CARD GAMES, ACTION TYPE TARGET GAMES, AND PARLOR GAMES; BEANBAGS; TOY BUILDING BLOCKS; PAPER CARDBOARD AND PLASTIC CAPS FOR TOY GUNS, HOLDERS FOR TOY CAP GUN CAPS, AND TOY CAP GUNS; MECHANICAL ACTION TOYS; KITES; ELECTRIC ACTION FIGURES WITH LIGHTS AND SOUNDS; COLLECTIBLE ITEMS, PLASTIC TOY FIGURINES IN VARIOUS SIZES, TOY FINGER RINGS, TOY NECKLACES, TOY KEY RINGS, TOY BRACELETS; YO-YO'S; SPIN TOPS; PLASTIC TOYS, NAMELY, BALLS, RINGS, TOY JEWELRY, TOY COSMETIC CONTAINERS, TOY COSMETIC APPLICATORS, TOY DISPENSERS FOR CANDY, TOY DISPENSERS FOR FOOD PRODUCTS; TOYS INCORPORATING MAGNETS, NAMELY, MAGNETIC TOY COSMETIC APPLICATORS AND MAGNETIC TOY COSMETIC CONTAINERS, MAGNETIC TOY CANDY DISPENSERS, MAGNETIC TOY FOOD DISPENSERS, MAGNETIC TOY CANDY CONTAINERS; TOY BOXES; PLUSH TOYS; FLYING DISCS; GLASS ORNAMENTS AND DECORATIONS FOR CHRISTMAS TREES; COSTUME MASKS; STUFFED TOY ANIMALS IN VARIOUS SIZES; EQUIPMENT SOLD AS A UNIT FOR PLAYING CARD GAMES; GAME BOARDS FOR TRADING CARD GAMES; TOY STAMPS WITH FIGURES; TOY AND WATER PISTOLS, GUNS, AND CANNONS; DOLLS AND BABY DOLLS; BALLOONS; BATHTUB TOYS; SKATEBOARDS, ICE SKATES, ROLLER SKATES, AND INLINE SKATES; SURF BOARDS AND SWIM BOARDS; BALLS, NAMELY, BEACH BALLS, BASKET BALLS, BASE BALLS, FOOT BALLS, TENNIS BALLS, SPONGE BALLS; ELECTRONIC TOYS IN THE NATURE OF TOYS HAVING LIGHTS, NAMELY, LIGHT UP TOY COSMETIC APPLICATORS, LIGHT UP TOY COSMETIC CONTAINERS AND LIGHT UP TOYS FOR DISPENSING CANDY AND FOOD PRODUCTS; TOY COSMETIC CONTAINERS HAVING LIGHTS; TOY COSMETIC APPLICATORS HAVING LIGHTS, TOY CANDY DISPENSERS HAVING LIGHTS; JIGSAW PUZZLES, AND OTHER GAMES AND TOYS, NAMELY, TOY COSMETIC APPLICATORS, TOY COSMETIC CONTAINERS AND TOYS FOR DISPENSING CANDY AND FOOD PRODUCTS.”

 

The goods named in the application do not include candy items themselves, only ‘toy cosmetic containers’ therefore.  The specimen of record clearly shows the mark used in a way that identifies the candy item itself, not the container its in, per se.

 

Therefore, the new specimen is not acceptable because it does not show the applied-for mark in use in commerce on the goods identified in the application, and the refusal of registration under Trademark Act Sections 1 and 45 is hereby maintained and CONTINUED.  TMEP §§904, 940.07(a), 1109.09(b). 

 

As stated in the prior Office action, applicant may respond to this refusal by submitting the following:

 

(1)   A substitute specimen showing the mark in use in commerce for each class of goods specified in the statement of use; and

 

(2)   The following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

However, please note that upon consideration of this new specimen of record, registration is also refused as follows:

 

II.                 REFUSAL OF REGISTRATION UNDER SECTION 2(e)(1)

 

Registration is refused because the proposed mark merely describes a feature or characteristic of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  See Hunter Publ’g Co. v. Caulfield Publ’g, Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984).

 

Applicant has applied for registration of the proposed mark CANDY LIP GLOSS for goods identified as “BOARD GAMES, CARD GAMES, ACTION TYPE TARGET GAMES, AND PARLOR GAMES; BEANBAGS; TOY BUILDING BLOCKS; PAPER CARDBOARD AND PLASTIC CAPS FOR TOY GUNS, HOLDERS FOR TOY CAP GUN CAPS, AND TOY CAP GUNS; MECHANICAL ACTION TOYS; KITES; ELECTRIC ACTION FIGURES WITH LIGHTS AND SOUNDS; COLLECTIBLE ITEMS, PLASTIC TOY FIGURINES IN VARIOUS SIZES, TOY FINGER RINGS, TOY NECKLACES, TOY KEY RINGS, TOY BRACELETS; YO-YO'S; SPIN TOPS; PLASTIC TOYS, NAMELY, BALLS, RINGS, TOY JEWELRY, TOY COSMETIC CONTAINERS, TOY COSMETIC APPLICATORS, TOY DISPENSERS FOR CANDY, TOY DISPENSERS FOR FOOD PRODUCTS; TOYS INCORPORATING MAGNETS, NAMELY, MAGNETIC TOY COSMETIC APPLICATORS AND MAGNETIC TOY COSMETIC CONTAINERS, MAGNETIC TOY CANDY DISPENSERS, MAGNETIC TOY FOOD DISPENSERS, MAGNETIC TOY CANDY CONTAINERS; TOY BOXES; PLUSH TOYS; FLYING DISCS; GLASS ORNAMENTS AND DECORATIONS FOR CHRISTMAS TREES; COSTUME MASKS; STUFFED TOY ANIMALS IN VARIOUS SIZES; EQUIPMENT SOLD AS A UNIT FOR PLAYING CARD GAMES; GAME BOARDS FOR TRADING CARD GAMES; TOY STAMPS WITH FIGURES; TOY AND WATER PISTOLS, GUNS, AND CANNONS; DOLLS AND BABY DOLLS; BALLOONS; BATHTUB TOYS; SKATEBOARDS, ICE SKATES, ROLLER SKATES, AND INLINE SKATES; SURF BOARDS AND SWIM BOARDS; BALLS, NAMELY, BEACH BALLS, BASKET BALLS, BASE BALLS, FOOT BALLS, TENNIS BALLS, SPONGE BALLS; ELECTRONIC TOYS IN THE NATURE OF TOYS HAVING LIGHTS, NAMELY, LIGHT UP TOY COSMETIC APPLICATORS, LIGHT UP TOY COSMETIC CONTAINERS AND LIGHT UP TOYS FOR DISPENSING CANDY AND FOOD PRODUCTS; TOY COSMETIC CONTAINERS HAVING LIGHTS; TOY COSMETIC APPLICATORS HAVING LIGHTS, TOY CANDY DISPENSERS HAVING LIGHTS; JIGSAW PUZZLES, AND OTHER GAMES AND TOYS, NAMELY, TOY COSMETIC APPLICATORS, TOY COSMETIC CONTAINERS AND TOYS FOR DISPENSING CANDY AND FOOD PRODUCTS.”

 

The term ‘candy’ is defined as a piece of confectionery or a small piece of sweet food items.  See the attached online dictionary definition from the website of Encarta.msn.com.  Applicant’s goods clearly include ‘candy’ items and applicant has also already disclaimed such wording in its application.  The term ‘lip gloss’ is defined as a cosmetic used on the lips to make them shiny.  See the additional attached definition from Encarta.msn.com.  As seen from the specimen of record, applicant’s ‘toy cosmetic containers’ actually contain candy made in the form/shape of lip gloss. 

 

Accordingly, the combined wording CANDY LIP GLOSS merely describes a feature or characteristic of the goods – namely, containers that contain candy in the shape or form of lip gloss – and the proposed mark is properly refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

 

 

 

 

 

/Martha Santomartino/

Martha Santomartino

Trademark Attorney

Law Office 112 - USPTO

Martha.Santomartino@uspto.gov (for questions)

571-272-9416

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.