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:

 

 

INTERNATIONAL REGISTRATION NO. 0950756.

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.  However, the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are as follows:

 

(1)   Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the U.S.; and

 

(2)   Canadian attorneys who represent applicants residing in Canada and who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). 

 

37 C.F.R. §10.14; TMEP §602. 

 

Other than duly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise represent applicants before the USPTO.  See TMEP §602.06(b).  Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter.  A response signed by an unauthorized foreign attorney is considered an incomplete response.  TMEP §§602, 602.03, 603.04, 605.05(a).

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

 

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

 

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.

 

Nondistinctive Configuration of Goods – Refusal

 

Registration is refused because the proposed mark consists of a nondistinctive configuration of the goods that does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127.  The U.S. Supreme Court has held that any mark that consists of a product design or of features of a product design can never be inherently distinctive and is registrable on the Principal Register only upon a showing of acquired distinctiveness under 15 U.S.C. §1052(f).  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 213-214, 54 USPQ2d 1065, 1068-1069 (2000); see Textron, Inc. v. U.S. Int’l Trade Comm’n, 753 F.2d 1019, 224 USPQ 625 (Fed. Cir. 1985); In re Craigmyle, 224 USPQ 791 (TTAB 1984); TMEP §1202.02(b)(i).

 

In response to this refusal, applicant may submit evidence that the applied-for mark has acquired distinctiveness by submitting examples of advertising and promotional materials that specifically promote the proposed mark as a trademark in the United States, 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 matter as a mark for the goods.  The evidence must relate to the promotion and recognition of the specific configuration embodied in the proposed mark and not to the goods in general. Wal-Mart, 529 U.S. at 211, 54 USPQ2d at 1068; See TMEP §§1212.06 et seq. regarding evidence of acquired distinctiveness. 

 

In determining whether the proposed mark has acquired distinctiveness, the following are some of the factors that are considered: (1) length and exclusivity of use by applicant of the mark in the United States; (2) the type, expense and amount of advertising of the mark by applicant in the United States; and (3) applicant’s efforts, such as unsolicited media coverage and consumer studies, in the United States to associate the mark with the source of the goods identified in the application.  In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 U.S.P.Q.2d 1420, 1424 (Fed. Cir. 2005).  A showing of acquired distinctiveness need not consider each of these factors, and no single factor is determinative.  Id.; see 37 C.F.R. §2.41; TMEP §1212.06 et seq. 

 

To establish acquired distinctiveness, applicant may not rely on use other than use in commerce that may be regulated by the United States Congress.  Use solely in a foreign country is not evidence of acquired distinctiveness in the United States.  See In re Rogers, 53 USPQ2d 1741 (TTAB 1999); TMEP §§1010 and 1212.08.

 

Drawings and Description of the Mark in Configuration Cases

 

The “Request for Extension of Protection to the United States” application indicates that the mark is a “three dimensional mark.”  However, the drawing is unacceptable because it does not show the mark in three dimensions.  Applicant must submit a new drawing showing the mark in three dimensions.

 

If applicant is seeking to register a configuration of the goods or their packaging or a specific design feature of the goods or packaging, then applicant should note the following additional requirements concerning the drawing for such cases.  The drawing should present a single three-dimensional view of the goods or packaging showing in solid lines those features which applicant claims as its mark and the remainder of the drawing in broken or dotted lines.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983); 37 C.F.R. §2.52(b)(2) and (b)(4); TMEP §§807.08 and 807.10.  In addition to these drawing requirements, a clear and concise description of the features claimed as the mark should also be included in such an application.  37 C.F.R. §2.37; TMEP §§807.08, 807.10 and 1202.02(d).

 

Applicant must depict the mark on the drawing using broken or dotted lines to show the mark’s position on the goods or container.  Applicant must show the mark itself using solid lines.  37 C.F.R. §2.52(b)(4); TMEP §807.08.

 

The following description of the mark is suggested:

 

The mark consists of a configuration of a circular-shaped bottle with the letters YSL shown within a rectangle design that appears in the upper portion of the bottle design.

 

Color Claim Needed

 

Applicant has submitted a color drawing, but has not submitted the required color claim.  Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark.  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., magenta, yellow, turquoise.  TMEP §807.07(a)(ii).

 

Applicant must identify the colors that are claimed as a feature of the mark.  If accurate, applicant may use the following statement:  “The colors purple and white are claimed as a feature of the mark.” 

 

Color Location Statement Needed

 

Applicant has submitted a color drawing, but has not submitted the required color location statement.  Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark.  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., magenta, yellow, turquoise.  TMEP §807.07(a)(ii).

 

Therefore, applicant must provide a description of where the colors appear in the mark.  If accurate, applicant may use the following statement:  “The color purple appears in the letters YSL and on the circular-shaped bottle design, and the color white appears in the background of a rectangle design that appears in the upper portion of the bottle design of the mark.”

Ownership of Prior Registrations

 

If applicant is the owner of U.S. Registration Nos. 0855232, 1025591 and 1289676, then applicant must also submit a claim of ownership of these marks.  37 C.F.R. §2.36; TMEP §812.  Because applicant owns more than two (2) prior registrations, applicant should insert the wording “and others” in the ownership statement, as suggested below.

 

The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 0855232, 1025591 and others.

 

See attached copies of U.S. Registration Nos. 0855232, 1025591 and 1289676.

 

 

 

/Andrew Rhim/

Examining Attorney

Law Office 101

phone (571) 272-9711

fax (571) 273-9101

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.