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  76/670871

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Sections 1, 2 and 45 Colors Refusal—Ornamental or Decorative Feature

 

Registration is refused because the proposed color mark, consisting of colors applied to the goods, is merely an ornamental or decorative feature of such goods; 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; In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985); In re Star Pharms., Inc., 225 USPQ 209 (TTAB 1985); TMEP §§1202.05 and 1202.05(a).

 

In this case, the proposed mark consists of the colors ORANGE AND GRAY as applied to the goods.  Potential purchasers do not initially view such use of colors as a trademark for the goods but as ornamentation.  Therefore, the applicant must show recognition by the relevant purchasing public of the color as a trademark.  Color marks are not inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163, 34 USPQ2d 1161, 1162-1163 (1995)); In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); TMEP §1202.05(a).

 

Request for Information

Applicant must provide the following information and documentation to permit proper examination of the proposed color mark, 37 C.F.R. §2.61(b):

 

• an explanation as to whether the identified color(s) serves any purpose as used on the goods;

 

• an explanation as to whether the identified color(s) is a natural by‑product of the manufacturing process for the goods;

 

• any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the proposed mark;

 

• an explanation as to the use of color in applicant’s industry;

 

• a statement clarifying any other use of color by applicant;

 

• an explanation as to whether competitors produce the goods in the identified color(s) and in colors other than the identified color(s); and

 

• color photographs and color advertisements showing competitive goods.

 

Applicant may also submit any other evidence relevant to the issues in this case.

 

An applicant can be required to provide more information if it is necessary for proper examination of the application.  Failure to respond to a request for information is an additional ground for refusing registration.  37 C.F.R. §2.61(b); In re DTI P'ship LLP, 67 USPQ2d 1699, (TTAB 2003); TMEP §814.

 

Acquired Distinctiveness - Trademark Act § 2(f)

If applicant continues to prosecute this application, then applicant must also establish that the proposed color mark has become distinctive of the goods, that is, that it has acquired distinctiveness as a source indicator.  TMEP §1202.05(a).  The burden of proof in such a case is substantial.  See In re Owens‑Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990). 

 

The submitted “five years’ use statement,” which is sufficient to establish distinctiveness in certain circumstances, is insufficient in this case.  Applicant must provide actual evidence that the proposed mark has acquired distinctiveness for the identified goods.  See In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985).

 

This evidence may consist of the following:  (1) examples of advertising and promotional materials specifically promoting the identified color as a mark; (2) dollar figures for advertising devoted to promotion of the specified color as a mark; (3) dealer and consumer statements of recognition of the specified color as a mark; and (4) any other evidence that might establish recognition of the identified color as a mark for the goods.  TMEP §§1212 et seq.

 

Amendment to Supplemental Register Suggested

The applied-for mark has been refused registration on the Principal Register.  However, applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by 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.  Please note that amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).

 

Requirement(s)

 

Applicant must respond to the following requirement(s).

 

Ownership of Prior Registrations

 

If applicant is the owner of U.S. Registration Nos. 2821860, 3010057 and 3010058, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  See the attached registrations.  The following standard format is suggested:

 

      Applicant is the owner of U.S. Registration Nos. 2821860, 3010057 and 3010058.

 

Color Drawing Requirement

 

The applicant must submit a color drawing of the mark showing the mark’s position on the goods.  The drawing of the mark must be a substantially exact representation of the mark as used or intended to be used on the goods. 37 C.F.R. §2.51; TMEP §§807.07, 1202.05(d) and 1202.05(d)(i). 

 

The goods depicted on the drawing should appear in broken lines. The broken lines inform the viewer where and how color is used on the product or package, while at the same time making it clear that the shape of the product, or the shape of the package, is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08 and 1202.05(d)(i).  In the absence of a broken-line drawing, the Office will assume that the mark is a composite mark consisting of the product shape, or the packaging shape, in a particular color.

 

In this case, the broken lines should also encompass portions of the color/configuration not claimed, e.g., the black tube, white circle, black pull-string, black handle and any other portion tha is not claimed in the colors orange and gray.

 

Please note that the Office no longer accepts black and white drawings with color lining.  37 C.F.R. §2.52(b)(1). 

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in color.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

Color Claim and Color Description of the Mark Requirement

 

The applicant must submit (1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement describing where the color(s) appear and how they are used on the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a).

 

The applicant must also include a written description of the mark, indicating that the matter shown by the dotted lines is not a part of the mark and that it serves only to show the position of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08.

 

Please note that the new drawing showing the broken lines, as indicated/suggested above, would now match the description as suggested below.

 

Applicant must submit the following: 

 

The colors orange and gray are claimed as a feature of the mark.  The mark consists of the colors orange and gray as applied to the goods.  The color orange is applied to the housing for the starter mechanism and trigger and the color gray is applied to the goods' blower housing and chassis components.  The dotted outline of the goods is intended to show the position of the mark and is not part of the mark as shown.

 

 

Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

 

 

/William T. Verhosek/

USPTO

LO 114

571-272-9464

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.