| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79144333 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION | |
| MARK FILE NAME | http://tmng-al.gov.uspto.report/resting2/api/img/79144333/large |
| LITERAL ELEMENT | AUSTRALIA |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
This is in response to the non-final office action issued on July 31, 2015. The Examining Attorney has taken the position that Applicant’s Mark is unregistrable in Classes 14 and 26 for failure to function as a trademark, and in Class 45 as failure to function as a service mark. Applicant respectfully disagrees. I. Introduction Applicant has applied to register its Mark for “military badges for wear made of precious metal; decorative pins of precious metal; ornamental pins of precious metal” in Class 14; “military badges for wear, not of precious metal; embroidered badges; badges for wear made of non-metal; badges for wear made of common metal” in Class 26; and “Military services being defence, intelligence, protection and surveillance services, namely, civil protection services, police protection services, analyzing defense, intelligence, protection and surveillance strategies, providing consultation and information concerning homeland safety and security, national security, counter-terrorism and public safety issues, providing consultation and information in the field of emergency response for communities, providing information in the field of the military, military tactics and strategies, providing intelligence and information to local, state, and federal law enforcement agencies relating to organized crime networks that operate across jurisdictional lines, security consultancy, surveillance services” in Class 45. In Applicant’s submission dated February 27, 2015, Applicant provided various information in response to inquiries from the Examining Attorney, including, inter alia, that Applicant was not presently offering the goods in Classes 14 and 26 for sale and that the distribution of the goods was limited to awards for performance and to members of Foreign Armed Forces. Applicant now submits the attached Exhibit A, which updates the information response to the Examining Attorney’s prior inquiries. The attached Exhibit A constitutes web printouts wherein Applicant’s goods are offered for sale, including into the United States. II. Applicant’s Mark Functions as a Trademark a. The Goods Constitute Goods in Trade The Examining Attorney has taken the position that “[t]he applied-for mark does not function as a trademark because the evidence in the record indicates that applicant uses the proposed mark only on items incidental to conducting its own military activities in Australia, and not on items intended to be used by others in the United States.” At the outset, Applicant submits that this conclusion is not warranted in this Request for Extension of Protection of an International Registration under Section 66(a). In an application under Section 66(a), where use is not required prior to registration, the Examining Attorney may still issue a refusal on the basis that the mark is not for use on goods in trade “where the record clearly indicates that the mark will not be used on goods in trade.” TMEP § 1202.06(c). It is appropriate for the Examining Attorney to request additional information to make this determination. Here, however, the Examining Attorney’s inquiries all were directed toward the present use of the mark. Of course, in a Section 66(a) application, present use is not required. The Examining Attorney’s inquiries did not solicit information clearly indicating “that the mark will not be used on goods in trade” (emphasis added). The additional evidence submitted by the Applicant demonstrates that there is present use of the mark for consumers in the United States with regard to particular goods, which is not required in this application. The evidence also demonstrates an intention to use the mark for all covered goods. In order to be registrable as a trademark, the mark must be used or intended to be used in conjunction with goods in trade. Whether the goods constitute goods in trade, rather than merely incidental to the applicant’s services, is determined on a case-by-case basis by factors including whether applicant’s good: 1. is simply the conduit or necessary tool useful only to obtain applicant’s services; 2. is so inextricably tied to and associated with the service as to have no viable existence apart therefrom; and 3. is neither sold separately from no has any independent value apart from the services. TMEP § 1202.06 (quoting In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1162 (TTAB 2013). In light of the additional evidence now provided by Applicant, Applicant submits that the record does not demonstrate that its goods are merely incidental to its services. The Examining Attorney’s sole reason for drawing his conclusion is that “applicant uses the proposed mark only on items incidental to conducting its own military activities in Australia, and not on items intended to be used by others in the United States.” Contrary to the Examining Attorney’s conclusion, Applicant has demonstrated that Applicant licenses the sale of the goods to U.S. consumers through third-party sellers. See Exhibit A. Further, the goods are not simply a conduit or necessary tool useful only to obtain Applicant’s services. Applicant’s services covered by the application are military services. Applicant may provide its services with or without badges, ornamental pins, and the like. This is quite distinguishable from the case cited by the Examining Attorney, in which computer software was merely used to render the registrant’s internet retail services. Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012). Also as distinguishable from the cases cited by the Examining Attorney, Applicant’s goods would have viable existence apart from the services. Again, this differs from another case cited by the Examining Attorney, in which the applicant’s annual reports would not exist without the applicant’s financial services. In re Thomas White Int’l, Ltd., 106 USPQ2d 1158 (TTAB 2013). There, the Board asked the question, “What is being offered for sale?” and the answer was investment management services, rather than reports which simply constituted sales documents for the services. Id. In this case it is, inter alia, the badges that are offered for sale. Finally, as demonstrated by Exhibit A, Applicant’s goods are in fact sold separately from the provision of Applicant’s military services and have value of their own. Applicant submits that its goods in Classes 14 and 26 are analogous to collateral promotional products. The NASDAQ Stock Market, Inc. v. Antartica, S.R.L., 69 USPQ2d 1718, *15 (TTAB 2003). Moreover, Applicant submits that the public is accustomed to seeing these types of collateral goods related to the services of military forces. Attached hereto as Exhibit B are copies of registrations and TSDR status printouts for ornamental pins owned by branches of the United States military. Moreover, while Applicant is not required to provide specimens of the use of its mark, Applicant submits that a specimen in the nature of the attached Exhibit A would constitute an acceptable specimen, demonstrating use of Applicant’s marks both as the ornamental pins themselves, i.e., collateral good as discussed above, and on the packaging for the goods, i.e., affixed to boxes for the ornamental pins. Accordingly, Applicant submits that the mark is for use on goods in trade. b. The Mark Is More Than Merely Ornamental The Examining Attorney also has found the mark to be merely ornamental. In doing so, the Examining Attorney concluded that “[r]egistration also is refused because the applied-for mark, as its use is described in applicant’s responses to information requests, (1) is merely a decorative or ornamental feature of applicant’s clothing; and (2) does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” Thus, the Examining Attorney’s entire analysis and cases cited relate to the use of the mark in conjunction with clothing. Applicant submits that this analysis is irrelevant, as Applicant has not applied to register the mark for clothing. Furthermore, Applicant submits that a conclusion on the basis of ornamentation is inappropriate here. In an application under Section 66(a), “it is appropriate for the examining attorney to issue an ornamentation refusal where the proposed mark on its face, as shown on the drawing and described in the description, reflects a failure to function.” TMEP § 1202.03(e). Here, the Examining Attorney has not made such a showing regarding the mark on its face. The conclusion, therefore, is inappropriate. III. Applicant’s Mark Functions as a Service Mark The Examining Attorney also has refused registration of the mark in Class 45 because “[t]he applied-for mark does not function as a service mark because it is not used in a manner that would be perceived by purchasers in the United States as identifying and distinguishing the source of services recited in the application and because matter that is merely ornamental in nature does not function as a service mark.” The Examining Attorney would further have the Applicant submit “evidence of widespread use in the U.S.” The Examining Attorney’s analysis based upon the current use of the mark directed toward the United States is irrelevant in this application under Section 66(a). The Applicant is required only to attest to its intent to use the mark in the U.S., TMEP § 1904.01(c). The Applicant has gone further than that, in responding to the Examining Attorney’s inquiries. However, the Examining Attorney’s conclusions regarding the use of the mark as a service mark, on the face of the application and in light of all the evidence of record, are unwarranted. The Examining Attorney came to this conclusion on the basis of Applicant’s responses to the inquiries in the initial office action, finding that the mark is “solely part of the uniform of the Australian military.” With the exception of the first inquiry, however, all of the requests for additional information in the first office action related to Applicant’s goods, not Applicant’s services. In response to the inquiry regarding how the mark is used, Applicant submitted that “[t]he applied for mark forms part of the uniform, official correspondence, publications, signage, websites and memorials of the Australian Defence Force.” Accordingly, the record of the application itself indicates that the mark is for use for more than simply the uniform. Examples of Applicant’s advertising of its services are attached hereto as Exhibit C. The record in fact does not reflect that the mark is solely a uniform ornamentation. Indeed, while the Applicant is not required to demonstrate use of the mark, use of a service mark on official correspondence, publications, websites, etc., can constitute acceptable trademark use. In order to function as a service mark, “a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application.” TMEP § 1301.02(a). Applicant submits that the Examining Attorney’s conclusion is premature and not supported by the record. IV. Conclusion Accordingly, Applicant submits that its mark is for use with actual, registrable goods and services under the Mark and conclusions to the contrary are not supported by the evidence in this application under Section 66(a), and the application should proceed to publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_21620015371-20160201142911984021_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (12 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0005.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0006.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0007.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0008.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0009.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0010.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0011.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0012.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0013.JPG | |
| ORIGINAL PDF FILE | evi_21620015371-20160201142911984021_._Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (20 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0014.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0015.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0016.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0017.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0018.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0019.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0020.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0021.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0022.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0023.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0024.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0025.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0026.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0027.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0028.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0029.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0030.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0031.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0032.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0033.JPG | |
| ORIGINAL PDF FILE | evi_21620015371-20160201142911984021_._Exhibit_C.pdf |
| CONVERTED PDF FILE(S) (7 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0034.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0035.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0036.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0037.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0038.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0039.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\791\443\79144333\xml20\ROA0040.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - web printouts wherein Applicant's goods are offered for sale; Exhibit B - registrations and TSDR status printouts for ornamental pins owned by branches of U.S. military; Exhibit C - examples of Applicant's advertising |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /suzanna m m morales/ |
| SIGNATORY'S NAME | Suzanna M. M. Morales |
| SIGNATORY'S POSITION | Attorney for Applicant, New York and New Jersey bar member |
| DATE SIGNED | 02/01/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Feb 01 14:40:11 EST 2016 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20160201144011465277-7914 4333-550dbc277bfc15fa4515 9a8680c148a4d7c6cb75fcc25 a14e82a83f890a77764-N/A-N /A-20160201142911984021 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
This is in response to the non-final office action issued on July 31, 2015. The Examining Attorney has taken the position that Applicant’s Mark is unregistrable in Classes 14 and 26 for failure to function as a trademark, and in Class 45 as failure to function as a service mark. Applicant respectfully disagrees.
I. Introduction
Applicant has applied to register its Mark for “military badges for wear made of precious metal; decorative pins of precious metal; ornamental pins of precious metal” in Class 14; “military badges for wear, not of precious metal; embroidered badges; badges for wear made of non-metal; badges for wear made of common metal” in Class 26; and “Military services being defence, intelligence, protection and surveillance services, namely, civil protection services, police protection services, analyzing defense, intelligence, protection and surveillance strategies, providing consultation and information concerning homeland safety and security, national security, counter-terrorism and public safety issues, providing consultation and information in the field of emergency response for communities, providing information in the field of the military, military tactics and strategies, providing intelligence and information to local, state, and federal law enforcement agencies relating to organized crime networks that operate across jurisdictional lines, security consultancy, surveillance services” in Class 45.
In Applicant’s submission dated February 27, 2015, Applicant provided various information in response to inquiries from the Examining Attorney, including, inter alia, that Applicant was not presently offering the goods in Classes 14 and 26 for sale and that the distribution of the goods was limited to awards for performance and to members of Foreign Armed Forces.
Applicant now submits the attached Exhibit A, which updates the information response to the Examining Attorney’s prior inquiries. The attached Exhibit A constitutes web printouts wherein Applicant’s goods are offered for sale, including into the United States.
II. Applicant’s Mark Functions as a Trademark
a. The Goods Constitute Goods in Trade
The Examining Attorney has taken the position that “[t]he applied-for mark does not function as a trademark because the evidence in the record indicates that applicant uses the proposed mark only on items incidental to conducting its own military activities in Australia, and not on items intended to be used by others in the United States.”
At the outset, Applicant submits that this conclusion is not warranted in this Request for Extension of Protection of an International Registration under Section 66(a). In an application under Section 66(a), where use is not required prior to registration, the Examining Attorney may still issue a refusal on the basis that the mark is not for use on goods in trade “where the record clearly indicates that the mark will not be used on goods in trade.” TMEP § 1202.06(c). It is appropriate for the Examining Attorney to request additional information to make this determination. Here, however, the Examining Attorney’s inquiries all were directed toward the present use of the mark. Of course, in a Section 66(a) application, present use is not required. The Examining Attorney’s inquiries did not solicit information clearly indicating “that the mark will not be used on goods in trade” (emphasis added). The additional evidence submitted by the Applicant demonstrates that there is present use of the mark for consumers in the United States with regard to particular goods, which is not required in this application. The evidence also demonstrates an intention to use the mark for all covered goods.
In order to be registrable as a trademark, the mark must be used or intended to be used in conjunction with goods in trade. Whether the goods constitute goods in trade, rather than merely incidental to the applicant’s services, is determined on a case-by-case basis by factors including whether applicant’s good:
1. is simply the conduit or necessary tool useful only to obtain applicant’s services;
2. is so inextricably tied to and associated with the service as to have no viable existence apart therefrom; and
3. is neither sold separately from no has any independent value apart from the services.
TMEP § 1202.06 (quoting In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1162 (TTAB 2013).
In light of the additional evidence now provided by Applicant, Applicant submits that the record does not demonstrate that its goods are merely incidental to its services. The Examining Attorney’s sole reason for drawing his conclusion is that “applicant uses the proposed mark only on items incidental to conducting its own military activities in Australia, and not on items intended to be used by others in the United States.” Contrary to the Examining Attorney’s conclusion, Applicant has demonstrated that Applicant licenses the sale of the goods to U.S. consumers through third-party sellers. See Exhibit A.
Further, the goods are not simply a conduit or necessary tool useful only to obtain Applicant’s services. Applicant’s services covered by the application are military services. Applicant may provide its services with or without badges, ornamental pins, and the like. This is quite distinguishable from the case cited by the Examining Attorney, in which computer software was merely used to render the registrant’s internet retail services. Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012).
Also as distinguishable from the cases cited by the Examining Attorney, Applicant’s goods would have viable existence apart from the services. Again, this differs from another case cited by the Examining Attorney, in which the applicant’s annual reports would not exist without the applicant’s financial services. In re Thomas White Int’l, Ltd., 106 USPQ2d 1158 (TTAB 2013). There, the Board asked the question, “What is being offered for sale?” and the answer was investment management services, rather than reports which simply constituted sales documents for the services. Id. In this case it is, inter alia, the badges that are offered for sale.
Finally, as demonstrated by Exhibit A, Applicant’s goods are in fact sold separately from the provision of Applicant’s military services and have value of their own. Applicant submits that its goods in Classes 14 and 26 are analogous to collateral promotional products. The NASDAQ Stock Market, Inc. v. Antartica, S.R.L., 69 USPQ2d 1718, *15 (TTAB 2003). Moreover, Applicant submits that the public is accustomed to seeing these types of collateral goods related to the services of military forces. Attached hereto as Exhibit B are copies of registrations and TSDR status printouts for ornamental pins owned by branches of the United States military.
Moreover, while Applicant is not required to provide specimens of the use of its mark, Applicant submits that a specimen in the nature of the attached Exhibit A would constitute an acceptable specimen, demonstrating use of Applicant’s marks both as the ornamental pins themselves, i.e., collateral good as discussed above, and on the packaging for the goods, i.e., affixed to boxes for the ornamental pins.
Accordingly, Applicant submits that the mark is for use on goods in trade.
b. The Mark Is More Than Merely Ornamental
The Examining Attorney also has found the mark to be merely ornamental. In doing so, the Examining Attorney concluded that “[r]egistration also is refused because the applied-for mark, as its use is described in applicant’s responses to information requests, (1) is merely a decorative or ornamental feature of applicant’s clothing; and (2) does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.”
Thus, the Examining Attorney’s entire analysis and cases cited relate to the use of the mark in conjunction with clothing. Applicant submits that this analysis is irrelevant, as Applicant has not applied to register the mark for clothing.
Furthermore, Applicant submits that a conclusion on the basis of ornamentation is inappropriate here. In an application under Section 66(a), “it is appropriate for the examining attorney to issue an ornamentation refusal where the proposed mark on its face, as shown on the drawing and described in the description, reflects a failure to function.” TMEP § 1202.03(e). Here, the Examining Attorney has not made such a showing regarding the mark on its face. The conclusion, therefore, is inappropriate.
III. Applicant’s Mark Functions as a Service Mark
The Examining Attorney also has refused registration of the mark in Class 45 because “[t]he applied-for mark does not function as a service mark because it is not used in a manner that would be perceived by purchasers in the United States as identifying and distinguishing the source of services recited in the application and because matter that is merely ornamental in nature does not function as a service mark.” The Examining Attorney would further have the Applicant submit “evidence of widespread use in the U.S.”
The Examining Attorney’s analysis based upon the current use of the mark directed toward the United States is irrelevant in this application under Section 66(a). The Applicant is required only to attest to its intent to use the mark in the U.S., TMEP § 1904.01(c). The Applicant has gone further than that, in responding to the Examining Attorney’s inquiries. However, the Examining Attorney’s conclusions regarding the use of the mark as a service mark, on the face of the application and in light of all the evidence of record, are unwarranted.
The Examining Attorney came to this conclusion on the basis of Applicant’s responses to the inquiries in the initial office action, finding that the mark is “solely part of the uniform of the Australian military.” With the exception of the first inquiry, however, all of the requests for additional information in the first office action related to Applicant’s goods, not Applicant’s services. In response to the inquiry regarding how the mark is used, Applicant submitted that “[t]he applied for mark forms part of the uniform, official correspondence, publications, signage, websites and memorials of the Australian Defence Force.” Accordingly, the record of the application itself indicates that the mark is for use for more than simply the uniform. Examples of Applicant’s advertising of its services are attached hereto as Exhibit C.
The record in fact does not reflect that the mark is solely a uniform ornamentation. Indeed, while the Applicant is not required to demonstrate use of the mark, use of a service mark on official correspondence, publications, websites, etc., can constitute acceptable trademark use. In order to function as a service mark, “a designation must be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application.” TMEP § 1301.02(a). Applicant submits that the Examining Attorney’s conclusion is premature and not supported by the record.
IV. Conclusion
Accordingly, Applicant submits that its mark is for use with actual, registrable goods and services under the Mark and conclusions to the contrary are not supported by the evidence in this application under Section 66(a), and the application should proceed to publication.
