To: | Bluebeards Inc. (moira@bluebeardcare.com) |
Subject: | TRADEMARK APPLICATION NO. 78801702 - BLUEBEARDS ORIGINAL - N/A |
Sent: | 7/27/2006 9:21:17 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/801702
APPLICANT: Bluebeards Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BLUEBEARDS ORIGINAL
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 78/801702
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.
Accordingly, the applicant must disclaim the descriptive wording “ORIGINAL” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because it is a laudatory term and indicates the outstanding quality of the applicant’s goods. See Exhibit 1.
Laudatory terms, i.e., those terms that attribute quality or excellence to goods or services, are considered descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k). That is, laudatory terms, phrases and slogans are nondistinctive and unregistrable without proof of acquired distinctiveness. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND).
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use ORIGINAL apart from the mark as shown.
The mark as depicted on the drawing does not agree with the mark as it appears on the specimen, and clarification is required. 37 C.F.R. §2.51; TMEP §§807.12 and 807.12(a). In the present case, the drawing displays the mark as pirate skull and sword with the wording BLUEBEARDS above the design and the wording ORIGINAL underneath the design. The specimen shows the mark as a pirate skull and sword over a black flag with the wording BLUEBEARDS and ORIGINAL in a different font than depicted in the drawing. Applicant may not submit an amended drawing to conform to the display on the specimen because the character of the mark would be materially altered, i.e., the mark on the specimens creates a different commercial impression from the mark on the drawing. 37 C.F.R. §2.72(a); TMEP §§807.12, 807.12(a), 807.14 et seq and 904.09.
Therefore, applicant must do one of the following:
(1) submit a substitute specimen showing use of the mark as it appears on the drawing, with a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or
(2) amend the basis to Section 1(b) and satisfy all the requirements for this new basis. TMEP §806.03(c).
COLOR CLAIM AND DESCRIPTION INCOMPLETE – FAIL TO REFERENCE ALL COLORS IN MARK
The color claim and color description do not list all the colors appearing in the drawing of the mark. Applicant must submit a complete color claim and color description of the mark that reference all the colors appearing in the drawing of the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii).
The following color claim and color description are suggested:
The colors blue, brown, gold, black and white are claimed as a feature of the mark. The color dark blue appears in the pirate hat. The color blue appears in the beard. The color brown appears in the circle design in the background. The color gold appears underneath the pirate hat and in the outline of the pirate hat. The color black appears in the wording and in the outline of the skull and sword designs, including the eye patch and eye and nose sockets. The color white appears in the skull and sword designs.
Applicant should add the following declaration paragraph to the end of its response, and include a dated signature by a person authorized under 37 C.F.R. §2.33(a). 37 C.F.R. §2.20.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
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(Print or Type Name and Position)
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(Date)
Please note, there is no required format or form for responding to this 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 following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Maria-Victoria Suarez/
Trademark Attorney
Law Office 102
571-272-9264
maria-victoria.suarez@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
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.