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:

 

Mark Fails to Function as Trademark

Registration is refused because the proposed mark, as used on the specimen of record, only identifies a particular character; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127; see In re Caserta, 46 USPQ2d 1088 (TTAB 1988). 

A design of a character is registrable as a trademark only where the record shows that it is also used in a manner that would be perceived by consumers as identifying and distinguishing the goods in addition to identifying the character.  See In re Hechinger Inv. Co. of Del., Inc., 24 USPQ2d 1057, 1059 (TTAB 1991).  According to the specimen, the proposed mark is being used solely to identify a character and does not identify applicant’s goods because here, the mark is used to identify a particular turtle character.  As displayed on the specimen, the “HIDI” element identifies the characters.  Moreover, the specimen does not appear to be used with goods.

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.

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

Specimen

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods and/or services specified in the statement of use.  A statement of use must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services in the statement of use.  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). 

In the present case, the exact nature of the specimen is unclear. 

 

Therefore, applicant must submit the following:

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

 

(2)   The following statement, verified with an affidavit or 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 §904.09.  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 §§904.04 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.56 and 2.88.

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

Conclusion

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/ingrideulin/

Ingrid Eulin

Law Office 111

(571) 272-9380

 

 

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.