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: 7/8/2008

 

 

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.

 

Sections 1,2 and 45 - Ornamentation Refusal

Registration is refused on the Principal Register because the proposed mark, as used on the specimen of record, is solely decorative or ornamental in nature and would not be perceived as a mark by the purchasing public.  Moreover, because the proposed mark is solely decorative or ornamental, it appears incapable of functioning as a source-identifier for Applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (DAMN I’M GOOD, inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without source-indicating significance); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing the rear panel of a container for hand tools held unregistrable as merely ornamental, notwithstanding §2(f) claim); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (YOU ARE SPECIAL TODAY for ceramic plates found to be without any source-indicating significance); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1983) (WATCH THAT CHILD held not to function as a mark for construction material notwithstanding long use, where the only use was on the bumpers of construction vehicles in which the goods were transported); TMEP §§1202.03 et seq.

 

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).

 

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.”  See, e.g., In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982); In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984).  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 indication of source.  See TMEP §1202.03(b)

 

The specimen consists of a T-shirt that bears the design of the mark at its front upper center portion, and the proposed mark is ornamental as used on the specimen because it is the only design on the T-shirt and would be perceived by the ordinary consumer to serve as ornamentation of the identified goods.

 

Applicant may respond to the stated ornamental refusal by satisfying one of the following, as appropriate:

 

(1)   Claiming acquired distinctiveness by submitting evidence that the proposed mark has become distinctive of Applicant’s goods in commerce.  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 proposed mark as a trademark; and any other evidence that establishes recognition of the proposed mark as a trademark for the goods.  TMEP §1212.06 et seq;

 

(2)   Submitting evidence that the proposed 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 (TTAB 1982).  That is, Applicant may submit evidence showing that the proposed mark would be recognized as a trademark through Applicant’s use of the mark with goods or services other than those identified here.  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 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; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.;

 

(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 to Applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2).  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).

 

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

 

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 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.

 

 

                                 

 

/Dawn Han/

Trademark Examining Attorney

Law Office 107

(571) 272-9432

 

 

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 7/8/2008 FOR

APPLICATION SERIAL NO. 78944260

 

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=78944260&doc_type=OOA&mail_date=20080708 (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 7/8/2008.

 

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.