Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/218975

 

The assigned trademark examining attorney has reviewed the referenced Statement of Use and has determined the following.

 

REFUSAL TO REGISTER – THE MARK IS ORNAMENTAL:

 

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is a decorative or ornamental feature of the <goods/packaging for the goods> and would not be perceived as a mark by the purchasing public.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; See In re Owens‑Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987); TMEP §§1202.03 et seq.

 

The specimen consists of toothbrush product packaging, and the proposed mark is ornamental as used on the specimen because it would note be perceived as mark by the purchasing public. Instead, the proposed mark appears on the specimen in a decorative, ornamental manner. Moreover, the proposed mark covers a great deal of the upper portion of the background of the packaging and though not repetitive, creates a “wallpaper” effect. Major Pool Equip. Corp. v. Ideal Pool Corp., 203 USPQ 577, 582 (N.D. Ga. 1979).

 

Accordingly, the mark is now refused registration.

 

Applicant may also overcome the stated ornamental refusal by doing one of the following, as appropriate:

 

(1)     submitting evidence that the proposed mark has acquired distinctiveness of the applicant’s goods in commerce under Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  See TMEP §1202.03(d); or

 

(2)     submitting evidence that the proposed mark is an indicator of secondary source or sponsorship for the identified goods.  University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182 (TTAB 1982).  That is, applicant may submit evidence showing that the proposed mark would be recognized as a trademark or service mark through applicant’s use of the proposed mark with goods or services other than those identified here.  In re Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  Applicant must establish that, as a result of this use on other goods or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c); or

 

(3)     submitting a substitute specimen that shows proper non-ornamental trademark use, along with a statement that <”the substitute specimen was in use in commerce at least as early as the application filing date”/”the substitute specimen was in use in commerce prior to the filing of the amendment to allege use”/”the substitute specimen was in use in commerce prior to the expiration of time allowed to applicant for filing a statement of use”>, verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §<2.59(a)/2.59(b)(1)/2.59(b)(2)>; or

 

(4)     amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

 

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

RESPONSE:

 

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.    

 

INFORMALITIES:

The applicant must also respond to the following issue.

 

MARK DIFFERS ON DRAWING AND SPECIMEN:

 

The mark as depicted on the drawing disagrees with the mark as it appears on the specimen, and clarification is required.  Specifically, the drawing displays the mark as WHITENING and a design, and the specimen shows the mark as WHITENING, a design and an oval shape with lines. [1]

 

Applicant must either:

 

(1)   submit a new drawing of the mark that agrees with the specimen but does not materially alter the mark; 37 C.F.R. §2.72(b); TMEP §§807.14, 807.14(a) and 807.14(a)(i); or

 

(2)   submit a substitute specimen that shows use of the mark shown in the drawing and includes a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed to applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.59(b) and 2.72(b); TMEP §904.09.

 

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

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

 

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney.

 

 

 

BBrown

/Brian D. Brown/

Trademark Attorney

Law Office 105

(571) 272-9293

(571) 273-9293 fax

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.