UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 9/18/2013

 

 

 

 

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.

 

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Summary of Issues

 

•  Sections 1, 2 and 45 color refusal

•  Request for information—color mark

•  Color description of the mark

•  Disclaimer requirement

 

Sections 1, 2 and 45 Color Refusal

 

Registration is refused because the applied-for color mark, consisting of one or more colors used on some or all of the surfaces of a product or product packaging, is not inherently distinctive.  Such marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985); cf. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000).

 

In this case, the proposed mark consists of the color WHITE as applied to the goods.  Potential purchasers do not initially view such use of color as a trademark for the goods but as ornamentation.

 

Color marks are never inherently distinctive and can only be registered on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness.  See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985); cf. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000).

 

Therefore, the applied-for mark has been refused registration on the Principal Register.

 

Suggest Amendment to Supplemental Register

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.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

Request for Information—Color Mark

 

To permit proper examination of the applied-for color mark, applicant must provide the following information and documentation:

 

(1) An explanation as to whether the identified color(s) serve(s) any purpose as used on the goods;

 

(2) An explanation as to whether the identified color(s) is/are a natural by-product of the manufacturing process for the goods;

 

(3) Any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the applied-for color mark;

 

(4) An explanation as to whether any statutes, regulations, ordinances, codes or industry standards require, regulate and/or standardize the use of the identified color(s) on the goods;

 

(5) An explanation as to the use of the identified color(s) in applicant’s industry and any other similar use of color in applicant’s industry;

 

(6) An explanation describing any other similar use of color by applicant;

 

(7) An explanation as to whether competitors produce the goods in the identified color(s) and in color(s) other than the identified color(s); and

 

(8) Color photographs and color advertisements showing competitive goods in applicant’s industry.

 

(9) Is the color as used on the insulator portion of the port used to identify to the user a corresponding color on the prong of the adapter such that the two colors match up for ease of installation?

 

(10) Is there an industry standard for color coding of insulators, ports, prongs or anything having to do with the goods in question?

 

See 37 C.F.R. §2.61(b); TMEP §814.

 

Color Claim and Description of the Mark

 

The applicant must submit an amended color claim for the colors white and black.

 

The applicant must submit a more accurate statement describing where the color appears and how it is used on the mark.  37 C.F.R. § 2.52(b)(1); TMEP § 807.07(a).  The drawing shows the color white appearing in only one insulator port and specifically located in the upper-left corner of the goods.  Moreover, there is no label on the goods, but rather the wording INPUT is in the color black.

 

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.

 

Applicant must submit the following:

 

            The colors white and black are claimed as a feature of the mark.

 

The mark consists of a cable television amplifier wherein the color white appears in one insulator within a port located in the upper-left corner of the goods with the word “INPUT” in the color black proximate thereto, that identifies the port as a input port.  The matter shown by the dotted lines is not part of the mark and serves only to show positioning of the mark, that is of the white colored insulator within a port relative to the word “INPUT” in the color black.

 

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).

 

*If applicant did not intend the color black to be claimed, then such wording should be deleted from the drawing of the mark. Since such wording is in the mark and described as such, then such color claim must be needed.

 

Disclaimer Requirement

 

Applicant must disclaim the descriptive wording “INPUT” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); TMEP §§1213, 1213.03(a). 

 

The attached evidence from online third parties show that INPUT ports are common parts of the goods.  Therefore, the wording merely describes the applicant’s goods.

 

As a result, the merely descriptive term INPUT must be disclaimed apart from the mark as shown.

 

A “disclaimer” is a statement in the application record that applicant does not claim exclusive rights to an unregistrable component of a mark; a disclaimer does not affect the appearance of the mark or physically remove disclaimed matter from the mark.  TMEP §§1213, 1213.10.  An unregistrable component of a mark includes wording and designs that are merely descriptive of an applicant’s goods and/or services.  15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq.  Such words or designs need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).

 

The following cases further explain the disclaimer requirement:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).

 

Applicant may submit the following standardized format for a disclaimer:   

 

No claim is made to the exclusive right to use “INPUT” apart from the mark as shown.

 

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

 

*Please note that applicant may disregard this requirement if the applicant amends the drawing of the mark to delete the word INPUT.

 

 

 

 

/William T. Verhosek/

William T. Verhosek

Examining Attorney

USPTO/Law Office 114

571-272-9464

william.verhosek@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 9/18/2013 FOR U.S. APPLICATION SERIAL NO. 76714207

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 9/18/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.