PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77113729 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The examiner has refused registration on the basis that applicant’s mark is merely a “color designation” and therefore does not function as a trademark.  

The examiner appears to make two separate arguments objecting to the registrability of applicant’s mark.  The first one goes to whether applicant’s mark is merely a color designation, and therefore not functioning as a mark.  The second is that, since the mark principally appears on a crayon inside of the box, consumers would not perceive the mark as indicating a source of origin since they would not see it until after the product is purchased and opened, and would merely regard it as a color designation.  Applicant is aware of no authority that would support an argument that a mark must appear on the exterior of packaging.

As to the issue of descriptiveness, Applicant respectfully disagrees that applicant’s color name marks are no more than simply “creative color names.”  Crayola is well known, not only as a manufacturer of high quality crayons, markers and other art materials, but as a source of memorable and identifiable colors that transcend the products on which they are used.  The names chosen by Crayola are not simply model line identifiers or “creative names,” but are monikers intended to tie the crayons on which they appear to the well-known line of Crayola colors.  For example, in 1990, Crayola retired several crayon color names which resulted in strong consumer response, including demonstrations at Crayola’s corporate headquarters. This incident, as well as the general strong public connection with Crayola crayon colors is described in the Nov. 1999 issue of Smithsonian Magazine (see Attachment 1).  The name “Indian Red” was dropped from the crayon colors in 1999, and its replacement name was selected from names submitted by over 250,000 consumers.  The press coverage given to Crayola’s color names attests to the consumer recognition and not of the colors on which they appear but because of their association and identification of a product as being from Crayola product (see Attachments 2 and 3). 

Moreover, researchers have concluded, in examining arbitrary and ambiguous Crayola crayon names similar to the one in this application, that consumers preferred products with ambiguous color names, not because the names increased the appreciation of the color or qualities of the article itself, but because of the strengthened tie to the source of the products.  See The Effect of Color and Flavor Names on Consumer Choice, Association for Consumer Research (see Attachment 4).

In that study, the authors stated:

“An examination of the colors in a Crayola crayon box reveals an interesting phenomenon – while the original Crayola crayons box contained six colors (black, blue, brown, green, orange, and red), Crayola now offers 120 different colors, and the most recent of these (e.g., purple heart, razzmatazz, tropical rain forest, fuzzy wuzzy brown) are increasingly ambiguously named. These types of ambiguous color (and flavor) names have been proliferating and are appearing in all sorts of product categories from ice-cream (e.g., Ben and Jerry’s Chubby Hubby) to juice drinks (e.g., Gatorade’s Glacier Freeze) to nail polish (e.g., Hard Candy’s Trailer Trash), leading at least one reporter to exclaim, “there is no red” (Schulz 2001).

…

“Our results suggest that color names can influence purchase, and that this effect is related to the novelty and specificity (or lack thereof) of the names and people’s tendency to treat information in the marketplace as part of a conversation between the consumer and the company.”

Clearly, the names chosen by Crayola function to identify Crayola brand crayons in particular and the names are valued and recognized by consumers as an indicator of source that uniquely identifies the crayons as being from Crayola.

Applicant believes that Crayola’s color names are source identifiers clearly differentiated from the product identifiers at issue in In re Peterson, and In re Dana, where the number and letter combinations are clearly true numbering schemes that have no purpose other than identifying the part numbers.  While admittedly, Crayola’s color names do serve some function to “name” the color, they serve and additional purpose as outlined above, and that additional purpose overrides the identification function. This has been recognized by the TTAB, which stated “Depending on the nature or manner of use, it is possible for an alphanumeric designation, which functions only in part to designate model or grade, to be inherently distinctive, and hence not require any evidence of secondary meaning in order to be protected as a trademark.”  Neapco Inc. v. Dana Corp, 12 U.S.P.Q.2d 1746 (T.T.A.B. 1989).  Courts have also held that “for a mark to be found merely descriptive as a grade designation, it must be used solely as a grade designation and not in any source-indicating function.” (Iowa Paint. Mfg. Co. v. Hirschfield’s Paint Mfg. Inc., 296 F. Supp. 2^nd 983, 995 (S.D. Iowa 2003)(emphasis in original).  In the present case, the name chosen for Crayola’s crayon does not merely designate the color of the crayon, but that the unique nature and character of the chosen name comes only from Crayola.

Applicant respectfully refers the examiner to a very large body of registered marks that are simply the names of individual products in a larger line, whether they be individual plush toys given a “name” to identify them, or colors in a line of cosmetic or paint products.  A compelling case for the registrability of Applicant’s mark is demonstrated by a review of a sampling of color names registered for use in connection with goods.  A cursory review of USTPO records revealed at least the following registrations for various cosmetics, paints and inks, all of which are clearly references to the colors of the products themselves:

Trademark Name	Registration No.	Goods
PINK FOIL	2035705	Lipstick and nail enamel
CHERRY CRUSH	2951922	Makeup and nail enamel
CHERRIES IN THE SNOW	3050093	Lipstick and nail enamel
RAVEN RED	0378663	Enamel adapted for coating finger nails
ULTRA PURE WHITE	3210349	Interior and exterior paint
PURE NATURAL WHITE	1680906	Interior and exterior paints, primers for preparing surfaces to be painted, stains in the nature of coating and varnishes
PERMA-WHITE	1722885	Interior and exterior paint
ARCTIC WHITE	2536217	Elastomeric roof coating in the nature of paint
SKULL WHITE	2991401	Paints, varnishes, lacquers
EBONY BLACK	1169783	Printing inks
BEACON BLACK	2436142	Printing inks
CASCADE ULTRAWHITE PR	3051284	Printing inks and coatings for use in the graphic arts industry
SIMPLY RED	3227810	Paint
SIMPLY WHITE	3269817	Paint
INFINITY BLACK	1951658	Printing inks used on small offset presses used for printing handbills, flyers, letterhead, business cards, and the like
CALCUTTA BLACK	2382870	Tattoo inks, tattoo color, tattoo dye
TIPAQUE YELLOW	1586392	Pigments for use in paints, printing ink and plastics
SOLDIER BLUE	1547856	Paints for artists’ use
STONEWARE BLUE	1548803	Paints for artists’ use
AURORA PINK	0915844	Fluorescent pigments
AURORA PINK	0915365	Fluorescent printing inks (finished and partly finished)
SATURN YELLOW	1589590	Fluorescent printing inks, paints, lacquers, silk screen paints or colors, pigments and water colors for industrial use
KROMA RED	2251231	Finely divided red pigment for use in the industrial arts
COPPERAS RED	2437653	Synthetic red iron oxide pigments for use in the manufacture of cosmetics, paints, inks, plastics, automotive and industrial coatings, papers, roofing materials and in the processing of paper coatings, and artists’ paints
ROJO TORERO	3180422	Exterior paint, interior paint
SABOR A NUEZ	3173788	Exterior paint, interior paint
ROJO PASION	3168251	Exterior paint, interior paint
ROJO CANDELA	3165210	Exterior paint, interior paint
MANGO JUGOSO	3165206	Exterior paint, interior paint
MAMEY	3165204	Exterior paint, interior paint
HORCHATA	3162557	Exterior paint, interior paint
HIERBA SANTA	3162556	Exterior paint, interior paint
DURAZNO MADURO	3162555	Exterior paint, interior paint
BRISA DE MAR	3162552	Exterior paint, interior paint
ARBOL DE TAMARINDO	3162551	Exterior paint, interior paint
AMARILLO BEBITO	3162547	Exterior paint, interior paint
ALGODON AZUL	3162545	Exterior paint, interior paint
ACEITUNA PICANTE	3162543	Exterior paint, interior paint
MARRON CERAMICO	3140748	Exterior paint, interior paint
DEAD SALMON	3163103	Oil and emulsion exterior and interior paint
COOKING APPLE GREEN	3142613	Oil and emulsion exterior and interior paint
EATING ROOM RED	3142612	Oil and emulsion exterior and interior paint
PALE HOUND	3142611	Oil and emulsion exterior and interior paint
FOLLY GREEN	3136251	Oil and emulsion exterior and interior paint
OVAL ROOM BLUE	3088078	Oil and emulsion exterior and interior paint
MOUSE’S BACK	3036345	Oil and emulsion exterior and interior paint
BALLROOM BLUE	3036344	Oil and emulsion exterior and interior paint
OCTAGON YELLOW	3036343	Oil and emulsion exterior and interior paint
FARROW’S CREAM	3036342	Oil and emulsion exterior and interior paint
PRINT ROOM YELLOW	3036341	Oil and emulsion exterior and interior paint
STUDIO GREEN	3036340	Oil and emulsion exterior and interior paint
FOX RED	3036339	Oil and emulsion exterior and interior paint
SUGAR BAG LIGHT	3029909	Oil and emulsion exterior and interior paint
GREEN SMOKE	3029908	Oil and emulsion exterior and interior paint
CARD ROOM GREEN	3029907	Oil and emulsion exterior and interior paint
DORSET CREAM	3029906	Oil and emulsion exterior and interior paint
CORD	3029905	Oil and emulsion exterior and interior paint
PARMA GRAY	3029904	Oil and emulsion exterior and interior paint
STRING	2907815	Oil and emulsion exterior and interior paint
PICTURE GALLERY RED	2907814	Oil and emulsion exterior and interior paint

 

This list is by no means exhaustive.  And while applicant does not represent that they reviewed every single file referenced in the list of color registrations above, applicant has reviewed most and did not find any refusal on grounds similar to those cited by the examiner in this case, and did not find any requirement to show secondary meaning.  Crayola’s chosen names function in the same manner as the referenced marks and as a product whole, Crayola crayons are known and identified by consumers by reference to their unique colors, much more so than most of the color names referenced in this collection.

Applicant respectfully submits that its mark in the present application is arbitrary with respect to its goods and that no evidence of secondary meaning is required.  In any case, the mark submitted by applicant is clearly more arbitrary and distinctive than nearly every one of the colors cited in the above registrations.

Because applicant believes that its mark is distinctive, applicant does not believe evidence to support a Section 2(f) registration is required. 

EVIDENCE
Evidence in the nature of Smithsonian Magazine website article entitled "The Colors of Childhood (Attachment 1); Voice of America news website containing article entitled "Crayola Crayons Have Been Helping Children Color for Generations" (Attachment 2); article entitled "Crayon Color Cornucopia: Renaming the Rainbow " from college news website (Attachment 3); Association for Consumer Research website containing article entitled "The Effect of Color and Flavor Names on Consumer Choice" (Attachment 4) has been attached.
Original PDF file:
evi_1629428110-145446775_._attach_1.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_1629428110-145446775_._attach_2.pdf
Converted PDF file(s) (6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Original PDF file:
evi_1629428110-145446775_._attach_3.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_1629428110-145446775_._attach_4.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3

SIGNATURE(S)
Response Signature
Signature: /Albert P. Mauro, Jr./     Date: 09/20/2007
Signatory's Name: Albert P. Mauro, Jr.
Signatory's Position: Attorney of Record

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77113729
Internet Transmission Date: Thu Sep 20 14:56:21 EDT 2007
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2007092014562116
9949-77113729-400bdcff5374fe61bd7a059a5b
b128aa11-N/A-N/A-20070920145446775395