Offc Action Outgoing

The assigned examining attorney acknowledges receipt of applicant’s response. Through the response, applicant has submitted a color claim, which is acceptable; a color claim, which is not acceptable and an amended drawing, which is not acceptable. Applicant did not provide an amended description of the mark as previously required.

The examining attorney acknowledges applicant’s clarification that applicant is not claiming the shape of the product packaging as an element or feature of the mark. Therefore, the examining attorney withdraws the refusal of the mark as non-distinctive product packaging under Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.

The following requirements are now made FINAL: 1) amended drawing to properly show the elements be claimed as a mark; 2) amended color location statement; 3) amended description of the mark. See37 C.F.R. §2.64(a).

Amended Drawing of the Mark Required

Applicant has confirmed that the shape of the product packaging is not an element or feature of the mark. In addition, applicant amended the original drawing of the mark to dot out the shape of the packaging.

However, the amended drawing submitted on July 24, 2008 does not feature the entire shape of the product packaging in dotted out form. Specifically, the circle/round portion featured at the top of the packaging has not been dotted out. This element is part of the overall shape of the product packaging, which applicant has indicated, is not an element or feature of the mar k.

For marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that applicant claims as its mark. See 37 C.F.R. §2.52(b)(2); TMEP §§807.10, 1202.02(d); In re Minn. Mining & Mfg. Co., 335 F.2d 836, 839, 142 USPQ 366, 368-69 (C.C.P.A. 1964). If the mark cannot be adequately depicted in a single rendition, applicant must file a petition to the Director requesting that the requirement to provide a single rendition of the mark be waived. TMEP §807.10.

If the drawing includes additional matter not claimed as part of the mark (i.e., that reflects the position or placement of the mark), applicant must depict the additional matter using broken lines. 37 C.F.R. §2.52(b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 1202.02(d); see In re Water Gremlin Co., 208 USPQ 89, 91 (C.C.P.A. 1980).

In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that (1) indicates that the mark is a configuration of the goods or their packaging or a specific design feature of the goods or packaging, and (2) describes in detail the features that applicant claims as its mark. See 37 C.F.R. §§2.37, 2.52(b)(2); In re Famous Foods, 217 USPQ at 178; TMEP §§807.10, 1202.02(d). If the drawing includes broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the description should include a statement indicating that the matter shown in broken lines is not part of the mark and serves only to show the position or placement of the mark. 37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(d).

Amended Description of the Mark Required

The examining attorney continues this requirement as noted in the prior office action and for the reasons set forth above. The description of the mark featured in applicant’s response dated January 4, 2008 is not acceptable because it does not specify that matter shown in broken lines is not a part of the mark and serves only to show the position or placement of the mark. 37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(d).

Applicant may adopt the following, if accurate:

The mark consists of the colors green, yellow, black and white applied to product packaging with fine yellow lines beginning approximately one-third from the top of the green background, and with the word "PROFOOT" featuring a horizontal line under the letter "o" in the color green against a white background and surrounded by a black rectangle border with rounded corners all appearing on the upper right hand corner of the product packaging. The matter shown in broken lines is not part of the mark and serves only to show the position or placement of the mark on the product packaging.

Amended Color Location Statement Required

Applicant’s amended color location statement is not acceptable because it is incomplete. The color claim and location statement must identify all the colors in the mark on the drawing. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.

Therefore, applicant must submit a complete color claim and description of the mark that references all of the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.

The following color claim and color location statement are suggested:

The color(s) green, yellow, white and black is/are claimed as a feature of the mark. The color green appears on the product packaging, with fine yellow lines beginning approximately one-third from the top of the green background, and with the word "PROFOOT" featuring a horizontal line under the letter "o" in the color green against a white background and surrounded by a black rectangle border with rounded corners all appearing on the upper right hand corner of the product packaging.

Proper Response to Final Action

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

/Linda M. Estrada/

Trademark Attorney, Law Office 104

U.S. Patent & Trademark Office

(571) 272-9298

(571) 273-9104 Fax

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.