Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/663324

 

This Office Action is in response to Applicant’s communication of January 19, 2007.

 

A disclaimer statement as to the word “AIRBORNE” has been entered into the record.

 

PLEASE NOTE that the requirement for a description of the mark is hereby maintained and continued.

 

Ornamentation Refusal

 

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is a decorative or ornamental feature of the goods and would not be perceived as a mark by the purchasing public. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); TMEP §§1202.03 et seq.

 

The specimen consists of a photograph of a circular plaque that is alleged to be six inches in diameter that is essentially a three-dimensional rendition of the proposed mark.  The proposed mark is ornamental as used on the specimen because the size and the location of the mark on the specimen indicate that the mark is the primary and only ornamental feature of the plaque and would not be perceived as an identifier of the source of the goods by the consumer.

 

Please be advised that in connection with wording that is ornamental, “the size, location, dominance, and significance of the alleged mark as applied to the goods” are all relevant factors to consider in determining whether the proposed mark is inherently distinctive. In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984). Also, as to the size of the proposed mark appearing on the specimens, the larger the display relative to the size of the goods, the more likely that consumers will not view the ornamental matter as a mark. See, e.g., In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (SUMO merely ornamental in part because the wording “appears in large lettering across the top-center portion of the T-shirts and caps”); International Order of Job’s Daughters v. Lindberg and Co., 633 F.2d 912, 208 USPQ 718 (9^th Cir. 1980), cert denied 452 U.S. 941 (1982) (prominent display on jewelry was evidence that the proposed mark was being used in a non-trademark fashion).

 

Applicant may overcome this stated ornamental refusal by doing one of the following, as appropriate:

 

(1) claiming acquired distinctiveness by submitting evidence that the proposed mark has acquired distinctiveness of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f). Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods. See TMEP §1202.03(d);

 

(2) claiming acquired distinctiveness through ownership of a prior U.S. registration(s) for the same mark and the same or related goods and/or services by submitting the following in an affidavit or signed declaration under 37 C.F.R. §2.20: “The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration No. [specify applicable registration(s)] on the Principal Register for the same mark for related goods or services.” 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.;

 

(3) claiming acquired distinctiveness based on five years use by submitting the following statement in an affidavit or signed declaration under 37 C.F.R. §2.20: “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.” 37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.;

 

(4) submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods. University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982). That is, applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through applicant’s use of the proposed mark with goods or services other than those identified here. In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984). Applicant must establish that, as a result of this use on other goods or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods. See TMEP §1202.03(c);

 

(5) submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that ”the substitute specimen was in use in commerce at least as early as the application filing date”, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.59(a); or

 

(6) amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

Although the trademark examining attorney has refused registration, applicant may respond to the stated refusals to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusals to register, then applicant must also respond to the following requirement.

 

Identification of Goods

The identification of goods requires clarification.  Applicant is required to adopt the suggested language below, in light of the specimen submitted by Applicant. TMEP §1402.01. Applicant must adopt the appropriate international classification number for the goods and services identified in the application. The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services. 37 C.F.R. §6.1; TMEP §§1401 et seq.

 

Applicant may adopt the following identification, if accurate;

 

International Class 6: “metal plaque, namely, non-leaded plaque made of bronze with brownish black powder coat finish to commemorate the memory of all airborne veterans.”

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

 

/Peter Cheng/

Trademark Examining Attorney

Law Office 114

Phone - (571)272-9021

Fax No. - (571)273-9114

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.