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  77/113729

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

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

 

Search Results

 

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.

 

Color Designation – Failure to Function

 

Registration is refused because the proposed mark, as used on the specimen of record, merely identifies a color designation; 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 Dana Corp., 12 USPQ2d 1748 (TTAB 1989); TMEP §1202.10.

 

Matter used as a model, style, color, or grade designation serves only to describe the particular product in terms of its quality, size, color or type, and does not identify the source of the goods.  However, if the matter sought to be registered has come to be perceived by consumers as a source indicator in addition to its other function as a color designation, the term may be registrable as a trademark.  In re Petersen Mfg. Co., 229 USPQ 466, 468 (TTAB 1986).

 

The specimen shows the proposed mark used on a crayon.  This crayon is sold with other crayons inside of a box.  When purchasing the crayons, consumers cannot see the wording “BITTERSWEET” and they do not call for the goods by the wording “BITTERSWEET.”  When buying the goods and calling for the goods, consumers would recognize and ask for “Crayola®” crayons, or something similar.  It is only after purchasing the crayons and opening the box does a consumer see the proposed mark.  Considering that the wording appears where color designations for crayons are typically placed, consumers would immediately understand that “BITTERSWEET” was the color designation, albeit a creative one.

 

In support, the examining attorney attaches web pages from applicant’s website where its crayons are sold.  It is obvious that the crayons are contained in a box.  The names of the colors are not visible and nowhere on the box is there mention of the colors contained therein.

 

Accordingly, registration is refused under Trademark Act, Section 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Section 2(f) Alternative

 

Applicant may respond to the stated refusal by claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of applicant’s goods in commerce.  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 proposed mark as a trademark; and any other evidence that establishes recognition of the proposed mark as a trademark for the goods.  TMEP §1212.06 et seq

 

In other words, the evidence must show use, promotion, and recognition of the actual wording “BITTERSWEET” for crayons.  Long use alone is not sufficient in this particular case to establish acquired distinctiveness because the mark fails to function.

 

 

If applicant cannot claim acquired distinctiveness, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use), and the refusal will be withdrawn.  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.  If the same specimen is submitted with an allegation of use, the same refusal will issue. 

 

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) and 2.35(b)(1); TMEP §806.01(b).

 

 

/Jean H. Im/

Trademark Attorney

Law Office 101

571-272-9303

jean.im@uspto.gov

 

 

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.