Offc Action Outgoing

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 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 United States; and

(2) Canadian agents/attorneys who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).

37 C.F.R. §§11.1, 11.14; TMEP §602.

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, 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. See TMEP §§602.03, 712.03.

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

The referenced application 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(a), 2.65(a); TMEP §§711, 718.03.

NON-DISTINCTIVE CONFIGURATION REFUSAL

Registration is refused because the applied-for mark consists of a nondistinctive configuration of packaging for the goods that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593 (C.C.P.A. 1967); In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138 (C.C.P.A. 1960); In re J. Kinderman & Sons, Inc., 46 USPQ2d 1253 (TTAB 1998); TMEP §1202.02(b)(ii).

In this case, the applied-for mark is not inherently distinctive because it is merely a rectangular box.

In response to this refusal, applicant may submit evidence that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) by submitting examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark in the United States, 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 matter as a mark for the goods. See 37 C.F.R. §2.41(a), TMEP §§1212.06 et seq. The evidence must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211, 54 USPQ2d 1065, 1068 (2000).

In determining whether the applied-for mark has acquired distinctiveness, the following factors are generally considered: (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods, such as in unsolicited media coverage and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative. Id.; 37 C.F.R. §2.41; see TMEP §§1212 et seq.

In establishing 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 or between two foreign countries is not evidence of acquired distinctiveness in the United States. In re Rogers, 53 USPQ2d 1741, 1746 (TTAB 1999); TMEP §§1010, 1212.08.

Applicant must also respond to the requirements set forth below.

DESCRIPTION OF THE MARK

Applicant must submit an accurate and concise description of the literal and design elements in the mark. 37 C.F.R. §2.37; see TMEP §§808 et seq.

The following description of the mark is suggested:

The mark consists of a three-dimensional configuration of the packaging for the goods, namely, the rectangular panels thereof, with the letters “YSL” shown within a small rectangle design that appears in the lower portion of the front panel of the packaging design, and a pattern featuring {describe the pattern on the box}, which appears on all panels of the packaging.

PLEASE NOTE: If Applicant is seeking to register only the YSL logo in a certain location on the packaging for the goods, Applicant must submit a new drawing featuring broken or dotted lines to show the mark’s position on the goods or container, with solid lines to show the mark itself,. In addition, Applicant’s description of the mark must indicate that the portion shown in dashed lines is not a feature of the mark and is shown for locational or background purposes only.

COLOR CLAIM STATEMENT

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 gold, purple, white and black are claimed as a feature of the mark.”

COLOR LOCATION STATEMENT

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 gold appears in the letters “YSL”; the colors gold and white appear in the pattern design on the panels of the packaging; the color purple appears in the background of the small rectangle design; and the color black borders the square at the upper end of the larger rectangle.”

OWNERSHIP OF PRIOR REGISTRATIONS

If applicant is the owner of U.S. Registration Nos. 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. 1025591 and 1289676.

SEARCH RESULTS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

/StevenFine/

Trademark Attorney

Law Office 110

(571) 272-9158

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.