Offc Action Outgoing

Upon reconsideration, the nondistinctive configuration of the goods refusal is withdrawn. Also, the applicant’s claim of ownership of its prior registrations has been entered.

However, the applicant must respond to the following requirements:

Deletion/Amendments to Drawings Not Permitted in Section 66(a) Applications – Requirement for New Drawing Maintained

In its response, applicant withdrew its statement that the mark is “three-dimensional.” This statement is unacceptable because applicant, in effect, is amending its drawing, and a mark cannot be amended in an application filed under Trademark Act Section 66(a). TMEP §§807.13(b), 1904.02(g).

Contrary to applicant’s assertion, the examining attorney’s conclusion that the mark depicts a circular-shaped, three-dimensional bottle was not based on the concentric circular pattern in the design of the mark. The conclusion that the mark is three-dimensional was made because the applicant’s application filed under Section 66(a) clearly indicates that the mark is a “three-dimensional mark” (the “THREE DIMENSIONAL MARK” field in the application says “YES”).

Therefore, the mark in this application remains a “three-dimensional” mark, as indicated in the original application.

Furthermore, the applicant’s original drawing remains unacceptable because it does not show the mark in three dimensions. Applicant must submit a new drawing showing the mark in three dimensions, and in compliance with the requirements set forth below.

Configuration Mark – Drawings in General

For marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that applicant claims as its mark. See 37 C.F.R. §2.52(b)(2); TMEP §§807.10, 1202.02(d); In re Minn. Mining & Mfg. Co., 335 F.2d 836, 839, 142 USPQ 366, 368-69 (C.C.P.A. 1964). If the mark cannot be adequately depicted in a single rendition, applicant must file a petition to the Director requesting that the requirement to provide a single rendition of the mark be waived. TMEP §807.10.

If the drawing includes additional matter not claimed as part of the mark (i.e., that reflects the position or placement of the mark), applicant must depict the additional matter using broken lines. 37 C.F.R. §2.52(b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 1202.02(d); see In re Water Gremlin Co., 208 USPQ 89, 91 (C.C.P.A. 1980).

In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that (1) indicates that the mark is a configuration of the goods or their packaging or a specific design feature of the goods or packaging, and (2) describes in detail the features that applicant claims as its mark. See 37 C.F.R. §§2.37, 2.52(b)(2); In re Famous Foods, 217 USPQ at 178; TMEP §§807.10, 1202.02(d). If the drawing includes broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the description should include a statement indicating that the matter shown in broken lines is not part of the mark and serves only to show the position or placement of the mark. 37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(d).

Description of the Mark

In its response, applicant’s description of the mark is unacceptable because it does not indicate that the mark is a configuration of the goods or their packaging or a specific design feature of the goods or packaging.

Applicant must submit a concise and accurate description of the mark. 37 C.F.R. §2.37; see TMEP §§808 et seq. The following is suggested:

The mark consists of a configuration of a portion of the packaging for the goods, namely, the rectangular front panel thereof, with the letters “YSL” shown within a smaller rectangle design that appears in the upper portion of the front panel of the packaging design, and a pattern of concentric circles, or portions thereof.

Color Drawing – Clarification of Color Claim and Location Statement

The drawing shows the mark in color; however, the applicant’s response contains a color claim and color location statement that states colors that do not appear in applicant’s original drawing

Applications for marks depicted in color must include both a statement listing all of the colors claimed as a feature of the mark and a statement describing where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq.

Therefore, applicant must clarify its color claim and color location statement, and ensure that all colors described appear in the drawing. Applicant may use the following, if accurate:

“The colors purple, gold, black and silver are claimed as a feature of the mark. The color purple appears in the letters “YSL” and in the alternating concentric circle design on the rectangular front panel of the packaging; the color gold appears in the background of the small rectangle design; and the color black and silver appear in the alternating concentric circle design on the rectangular front panel of the packaging.”

/Andrew Rhim/

Examining Attorney

Law Office 101

phone (571) 272-9711

fax (571) 273-9101

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.