Offc Action Outgoing

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

Informational: No Similar Marks Found

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

Refusal: Failure to Function as a Trademark

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

The applied-for mark, as shown on the specimen, does not function as a trademark because the mark only appears in large print on the front of the applicant’s catalog that contains information regarding the identified goods. Consumers viewing the mark on the applicant’s specimen will not see the mark as indicating the source of the applicant’s goods.

The specimen of record, along with any other relevant evidence of record, is reviewed to determine whether an applied-for mark is being used as a trademark. In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998). Not every word, design, symbol or slogan used in the sale or advertising of goods and/or services functions as a mark, even though it may have been adopted with the intent to do so. A designation cannot be registered unless purchasers would be likely to regard it as a source-indicator for the goods. In re Manco, Inc., 24 USPQ2d 1938 (TTAB 1992); TMEP §1202.

Applicant may respond to this refusal by submitting the following:

(1) A substitute specimen showing the mark in use in commerce for the goods specified in the application; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

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. See TMEP §§904.03 et seq.

If submitting a substitute specimen requires amendment to the dates of use, applicant must verify the amended dates in an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. If the same specimen is submitted with an allegation of use, the same refusal will issue.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant must respond to the requirements set forth below.

Requirement: Disclaimer

Applicant must disclaim “THE PICTORIAL REPRESENTATION OF A BOW FOR PLAYING MUSICAL INSTRUMENTS” apart from the mark as shown because it merely describes the goods as identified in the identification of goods. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03.

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.10.

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:

No claim is made to the exclusive right to use “THE PICTORIAL REPRESENTATION OF A BOW FOR PLAYING MUSICAL INSTRUMENTS” apart from the mark as shown.

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

Requirement: Color Drawing With No Color Claim and No Color Location Statement

Applicant has submitted a color drawing but has not specified whether color is being claimed as a feature of the mark. Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the color(s) appear in the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii). In addition, the color claim and color location statement must identify all the colors in the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii).

Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:

(1) If color is not a feature of the proposed mark, applicant must submit a substitute black and white drawing of the mark to replace the color drawing of record. However, amendments or changes to the mark will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(a)(i), 807.14.; or

(2) If color is a feature of the proposed mark, applicant must submit both a statement listing all of the colors that are claimed as a feature of the mark and a statement describing where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a). If black, white and/or gray appear in the mark and are not being claimed as colors, applicant must also include a statement that the color(s) <black, white, and/or gray> represent background, outlining, shading and/or transparent areas and are not part of the mark. TMEP §807.07(d). The following format is suggested: “The colors orange, green, white, brown, black, silver, and purple are claimed as a feature of the mark. The color orange appears in the frog design and in the foot at the bottom of the mark. The color green appears in the frog design. The color white appears in the frog design, in the bow design, and in the leg design at the bottom of the mark. The color brown appears in the frog design and in the bow design. The color black appears in the frog’s eyes and the bow design. The color silver appears in the bow design. The color purple appears in the leg design at the bottom of the mark.”

See TMEP §807.07(b).

Requirement: Concise Description of the Mark Needed

Applicant must submit a concise description of the mark. 37 C.F.R. §2.37; see TMEP §§808 et seq. The following is suggested:

The mark consists of a frog perched on top of a bow for playing musical instruments. A purple and white leg extends below the middle of the bow. There is an orange foot attached to the bottom of the purple and white leg.

Requirement: Applicant Must Submit a Substitute Specimen or Amend the Filing Basis to Section 1(b) – Printed Catalog Not Acceptable for Goods

The specimen is not acceptable to show trademark use in a display associated with the goods because, although identified as a catalog page or webpage, it does not show the mark in close proximity to a picture of the goods. Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56(b)(1); TMEP §§904.03(h)-(i).

A printed or web catalog, web page, or similar specimen is acceptable to show trademark use as a display associated with the goods only if it includes (1) a picture of the relevant goods, (2) the mark appearing sufficiently near the picture of the goods so as to associate the mark with the goods, and (3) information necessary to order the goods (e.g., sales form, price list, instructions for ordering, etc.) or a visible weblink to order the goods. Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In re Dell Inc., 71 USPQ2d 1725, 1727-1729 (TTAB 2004); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); TMEP §§904.03(h), (i).

An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

Therefore, applicant must submit the following:

(1) A substitute specimen showing the mark in use in commerce for the goods specified in the application; 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 at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); 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, or photographs that show the mark on the goods or packaging. TMEP §§904.03 et seq.

If submitting a substitute specimen requires amendment to the dates of use, applicant must verify the amended dates in an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c).

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).

Pending a proper response, registration is refused because the specimen does not show use of the applied-for mark in commerce as a trademark. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).

Response Guidelines

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).

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Seth A. Rappaport/

Seth A. Rappaport

Trademark Examining Attorney

Law Office 103

Phone: (571) 270-1508

Fax: (571) 270-2508

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.