UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 7/17/2008

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

The statement of use has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

Ornamental Refusal - SOU

 

Registration is refused because the applied-for mark, as used on the specimen of record, is merely a decorative or ornamental feature of the goods; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §§904.07(b), 1202.03 et seq.; see, e.g., In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (holding the wording BLACKER THE COLLEGE SWEETER THE KNOWLEDGE to be a primarily ornamental slogan that is not likely to be perceived as source indicator for t-shirts); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (holding floral pattern design of morning glories and leaves for tableware nondistinctive and merely a decorative pattern with no trademark significance); cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

 

The applied-for mark, as shown on the specimen, is merely ornamental because it appears in large, bold letters and is emblazoned across the chest of applicant’s shirt.

 

When evaluating ornamental wording, “the size, location, dominance and significance of the alleged mark as applied to the goods” are all relevant factors in determining whether a mark is inherently distinctive.  E.g., In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993) (holding the applied-for mark BLACKER THE COLLEGE SWEETER THE KNOWLEDGE would be perceived as an ornamental slogan because it appeared in large, bold letters centered on the shirt, filling virtually the entire upper half of the shirt); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984); TMEP §1202.03(a).

 

The larger the display of the applied-for mark relative to the size of the goods, the more likely consumers will not view such matter as a mark.  See In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (holding the wording SUMO merely ornamental in part because the wording “appears in large lettering across the top-center portion of the T-shirts and caps”); cf. Int’l Order of Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 1090-91, 220 USPQ 1017, 1019-20 (Fed. Cir. 1984) (finding prominent display of emblem on jewelry did not show trademark use); 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).  Thus, where consumers have been conditioned to recognize trademarks in a certain location, as on the breast area of a shirt, ornamental matter placed in a different location is less likely to be perceived as an indicator of source.  See TMEP §1202.03(a), (b).

 

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 1982).  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 identified in the application.  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, 2.33:  “The substitute specimen was in use in commerce prior to the expiration of time allowed to applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.05.  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.

 

Sample Declaration

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  Applicant should add this declaration to the end of its response, properly signed and dated by a person authorized under 37 C.F.R. §2.33(a).  TMEP §804.01(b).

 

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 the 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)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

General 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.

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark 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).

 

Applicant should provide a current telephone number with its response to expedite processing.  TMEP §302.03(a).

 

To expedite prosecution of this application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

 

 

/Kevin M. Dinallo/

Trademark Examining Attorney

United States Patent & Trademark Office

Law Office 107

571-272-9731

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 7/17/2008 FOR

APPLICATION SERIAL NO. 78944177

 

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

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=78944177&doc_type=OOA&mail_date=20080717 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.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 notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 7/17/2008.

 

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 at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

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

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

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