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:

This Office action is in response to applicant’s communication filed on June 23, 2010. Upon further review of the application, the examining attorney has discovered an additional refusal that must be addressed by the applicant. The examining attorney apologizes for any inconvenience. Also, the examining attorney must amend the description of the mark in order to ensure complete accuracy (see revised description requirement below. The functional refusal is maintained and continued.

Nondistinctive Configuration of Packaging

Registration is refused because the applied-for mark consists of a nondistinctive configuration of packaging for the goods that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593 (C.C.P.A. 1967); In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138 (C.C.P.A. 1960); In re J. Kinderman & Sons, Inc., 46 USPQ2d 1253 (TTAB 1998); TMEP §1202.02(b)(ii).

In this case, the applied-for mark is not inherently distinctive because the applicant’s mark consists of the applicant’s packaging for its goods.

In response to this refusal, applicant may submit evidence that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) by submitting examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark in the United States, 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 matter as a mark for the goods. See 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq. The evidence must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general. See, e.g., In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008); In re Edward Ski Prods. Inc., 49 USPQ2d 2001, 2005 (TTAB 1999); In re Pingel Enter. Inc., 46 USPQ2d 1811, 1822 (TTAB 1998).

In determining whether the applied-for mark has acquired distinctiveness, the following factors are generally considered: (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods, such as in unsolicited media coverage and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative. Id.; 37 C.F.R. §2.41; see TMEP §§1212.06 et seq.

In establishing acquired distinctiveness, applicant may not rely on use other than use in commerce that may be regulated by the United States Congress. Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States. In re Rogers, 53 USPQ2d 1741, 1746 (TTAB 1999); TMEP §§1010, 1212.08.

As an alternative to submitting evidence of acquired distinctiveness, applicant may amend the application to the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.02(b)(ii).

Description of Mark Required

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 the design of a perfume bottle and cap therefore. The bottle is generally short and broad with curved sides so that the bottom is narrower than the top. The base of the cap is gold with a series of tilted rings rising upward and surrounding a sphere top. The wording “RED PEARL” appears on the front of the bottle.

Assistance

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

/James W. Stein/

Trademark Examining Attorney

Law Office 107

Phone No. (571) 272-3056

E-mail: james.stein@uspto.gov

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. 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.

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.