Offc Action Outgoing

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. 

 

 

Serial Number  78/582271

 

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

 

No Conflicting Marks Noted

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.

 

Refusal - 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 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 pictures of two t-shirts displaying the proposed mark in large size across the front of the shirts in such a manner that it would merely be perceived as an ornamental design feature of the shirts, rather than a source indicating trademark.

 

As to the size of the proposed mark appearing on the specimens, the larger the display relative to the size of the goods, the more likely that consumers will not view the ornamental matter as a mark.  See, e.g., In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (SUMO merely ornamental in part because the wording “appears in large lettering across the top-center portion of the T-shirts and caps”); International Order of Job’s Daughters v. Lindberg and Co., 633 F.2d 912, 208 USPQ 718 (9^th Cir. 1980), cert denied 452 U.S. 941 (1982) (prominent display on jewelry was evidence that the proposed mark was being used in a non-trademark fashion).

 

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

 

(1)   claiming acquired distinctiveness by 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);

 

(2)   claiming acquired distinctiveness through ownership of a prior U.S. registration(s) for the same mark and the same or related goods and/or services by submitting the following in an affidavit or signed declaration under 37 C.F.R. §2.20:  “The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration No.^ on the Principal Register for the same mark for related goods or services.”  37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.;

 

(3)   claiming acquired distinctiveness based on five years use by submitting the following statement in an affidavit or signed declaration under 37 C.F.R. §2.20:  “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.”  37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.;

 

(4)   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);

 

(5)   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”, verified with an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); or

 

(6)   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.

 

Requirements

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

Identification of Goods

The wording “clothing” in the identification of goods needs clarification because it does not identify the types of clothing by the common commercial name, e.g., shirts, t-shirts, pants.  Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate:

 

International Class 25

Clothing, namely, (identify the types of clothing by the common commercial name, e.g., t-shirts).

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Color Claim and Color Description Omitted

The applicant has submitted a color drawing of the mark, but has omitted the color claim and color description.  Applicant must submit the following color claim and color description:  (1) a statement that “the color red is claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the color red appears in the two star designs.”  37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

 

 

/John Dwyer/

Examining Attorney

Law Office 116

Telephone 571-272-9155

Facsimile 571-273-9116

John.dwyer1@uspto.gov

 

 

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 has been 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.