Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

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

ORNAMENTAL – INTERNATIONAL CLASS 25 ONLY

The stated refusal refers to International Class 25 only and does not bar registration in the other classes.

Registration is refused because the applied-for mark, as used on the specimen of record, is merely a decorative or ornamental feature of applicant’s clothing; it does not function as a trademark to identify the source of applicant’s clothing and distinguish applicant’s clothing from that of others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §§904.07(b), 1202.03 et seq.

When evaluating a mark that appears to be ornamental, “the size, location, dominance and significance of the alleged mark as applied to the goods” are all relevant factors to be considered in determining whether it also functions as a trademark. E.g., In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984); see TMEP §1202.03(a). Although there is no prescribed method or place for affixation of a mark to goods, the location of a mark on the goods “is part of the environment in which the [mark] is perceived by the public and . . . may influence how the [mark] is perceived.” In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984); see In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982).

With respect to clothing, consumers have been conditioned to recognize small designs or discrete wording as trademarks if placed, for example, on the pocket or breast area of a shirt; however, consumers typically do not perceive larger designs or slogans as trademarks, especially when such matter is displayed in a different location on the clothing. See TMEP §1202.03(a), (b), (f)(i), (f)(ii); see, e.g., In re Pro-Line Corp., 28 USPQ2d at 1142 (finding “BLACKER THE COLLEGE SWEETER THE KNOWLEDGE,” centered in large letters across most of the upper half of a shirt, to be a primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d at 1667-68 (finding “SUMO,” used in connection with stylized depictions of sumo wrestlers and displayed in large lettering across the top-center portion of t-shirts and caps, to be an ornamental feature of the goods that does not function as a trademark).

In this case, the submitted specimen shows the applied-for mark appearing directly on the front of the caps and hats where ornamental elements may appear on such goods. See TMEP §1202.03(a)(b). Furthermore, the mark is displayed in a relatively large size on the hats and caps, such that it dominates the overall appearance of the goods. Lastly, the applied-for mark appears to be a stylized term with no particular trademark significance.

Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to identify the source of applicant’s goods and distinguish applicant’s goods from those of others.

Applicant may respond to the stated ornamental refusal by satisfying one of the following, as appropriate:

(1) Claiming acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods in commerce. Trademark Act Section 2(f), 15 U.S.C. §1052(f). Evidence may consist of examples of advertising and promotional materials that specifically promote, as a trademark, the mark for which registration is sought; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark; and any other evidence that establishes recognition of the applied-for mark as a trademark for the goods. See 37 C.F.R. §2.41(a); TMEP §§1202.03(d), 1212.06 et seq.;

(2) Submitting evidence that the applied-for mark is an indicator of secondary source or sponsorship for the identified goods. Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182, 182 (TTAB 1973). That is, applicant may submit evidence showing that the applied-for mark would be recognized as a trademark through applicant’s use of the mark with goods and/or services other than those being refused as ornamental. In re The Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984). Applicant must establish that, as a result of this use in connection with other goods and/or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods. See TMEP §1202.03(c).; or

(3) Amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.; or

(4) Submitting a substitute specimen that shows non-ornamental trademark use, and 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 time allowed applicant for filing a statement of use.” 37 C.F.R. §2.59(b)(2); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires 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 actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.

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

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

APPLICANT’S OPTIONS WHERE REFUSAL PERTAINS TO ONE OF MORE THAN TWO CLASSES

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:

(1) Deleting the class to which the refusal pertains;

(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or

(3) Amending the basis, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)

INFORMATION REGARDING REQUEST TO DIVIDE

Applicant has the option to divide its application into two or more separate applications in response to a refusal or requirement that pertains only to certain classes, goods, and/or services. See 37 C.F.R. §2.87; TMEP §§1110 et seq. (regarding requests to divide). This would allow the remaining classes or goods and/or services to proceed toward registration.

A request to divide can be filed either on paper via regular mail or online via the Trademark Electronic Application System (TEAS). TMEP §1110.04. The request must specify the classes or goods and/or services that are to be divided out of the application and include the required fee of $100.00 for each new application created. See 37 C.F.R. §§2.6(a)(19), 2.87(b). If dividing out some, but not all, of the goods or services within a class, applicant must additionally submit the application filing fee for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.

Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).

A request to divide must be properly signed by the applicant or an authorized attorney. See 37 C.F.R. §§2.87(f), 2.193(e)(2), 11.14; TMEP §§611.03(b), 1110.06.

Where an applicant is represented by an attorney, the attorney must sign the request. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 1110.06. The only attorneys who may sign requests and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO. See 37 C.F.R. §§2.17(e), 2.87(f), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 611.03(b), 1110.06. Foreign attorneys, other than authorized Canadian attorneys, do not have authority to sign requests or otherwise represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.5(b)(2), 11.14(c), (e); TMEP §§602.03(b)-(c), 611.03(b), 1110.06.

Where an applicant is not represented by an attorney, the request must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 1110.06. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

In addition, the proper signatory must personally sign or personally enter his/her electronic signature. 37 C.F.R. §2.193(a), (e)(2); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).

FAILURE TO RESPOND ABANDONMENT OF CLASS – ADVISORY

If applicant does not respond to this Office action within the six-month period for response, then International Class(es) 25 will be deleted from the application and the application will proceed forward for International Class(es) 13 and 22 only. 37 C.F.R. §2.65(a).

ASSISTANCE

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/Brendan D. McCauley/

Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.