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: 9/9/2010

 

 

This is further to the Statement of Use filed on July 21, 2010.

 

SPECIMEN REFUSAL

 

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 a t-shirt, 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 clothing, such that it dominates the overall appearance of the goods.  Lastly, the applied-for mark appears to be a mere design element 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).;

 

(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.

 

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

 

 

 

RESPONSE GUIDELINES 

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.

 

 

 

 

/Giselle M. Agosto/

Examining Attorney

Trademark Law Office 102

Phone:  (571) 272-5868

 

 

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 9/9/2010 FOR

SERIAL NO. 77648524

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should 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 9/9/2010 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.