Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

This Office Action replies to applicant’s response to Office Action dated November 5, 2010. The applicant also filed an Amendment to Allege Use (AAU) on that same day which was previously addressed. The final office action issued as to the AAU was premature and is expressly withdrawn.

In its response to the disclaimer requirement as to the compound element the applicant made a claim of acquired distinctiveness in part. Further review of the application indicates that the disclaimer requirement as to the class 10 goods should be withdrawn. As such, the 2(f) in part claim is only relevant or applicable to the class 5 goods and is only considered in that context. The 2(f) in part claim as to class 5 is not acceptable as further discussed below. Therefore, the requirement for a disclaimer of COMPOUND is maintained.

Acquired Distinctiveness in Part:

Applicant amended the application to assert acquired distinctiveness based on five years’ use in commerce as to the COMPOUND element of the proposed mark. However, because that element of the applied-for mark is highly descriptive of applicant’s goods, the allegation of five years’ use is insufficient to show acquired distinctiveness. In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989); TMEP §1212.05(a). Additional evidence is needed.

Evidence of acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq. The Office will decide each case on its own merits.

If additional evidence is submitted, the following factors are generally considered when determining acquired distinctiveness:

(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 and/or services, such as 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. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212 et seq.

The burden of proving that a mark has acquired distinctiveness is on the applicant. Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959); TMEP §1212.01. An applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.

Allegations of sales and advertising expenditures do not per se establish that a term has acquired significance as a mark. An applicant must also provide the actual advertising material so that the examining attorney can determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers. TMEP §1212.06(b); see In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).

The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source. TMEP §1212.06(b); see In re Packaging Specialists,221 USPQ at 920; In re Redken Labs., Inc., 170 USPQ 526 (TTAB 1971).

To Respond to this Letter:

Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

Who Must Sign the Response:

It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant.

Periodically Check the Status of the Application:

To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

To Update Correspondence/e-mail Address:

Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

For other inquiries or questions about this office action, please contact the assigned examining attorney.

/Jeffrey S. DeFord/

Jeffrey S. DeFord

Examining Attorney

Law Office 115

United States Patent & Trademark Office

(571) 272-9469