UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 3/25/2011

 

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).

 

Non-distinctive Product Design Refusal

Registration is refused because the applied-for mark consists of a nondistinctive product design 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; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 213-14, 54 USPQ2d 1065, 1068-69 (2000); In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006); see TMEP §1202.02(b)(i), (d).

 

In this case, the applied-for mark is not inherently distinctive because it is the design of the novelty hat and product design can never be inherently distinctive.  TMEP 1202.02(b). 

 

The Supreme Court distinguished between two types of trade dress - product design and product packaging.  If the trade dress falls within the category of product design, it can never be inherently distinctive and will always require evidence of acquired distinctiveness or secondary meaning.  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000); TMEP §1202.02(b)(i).

 

Product design almost invariably serves purposes other than source identification, and consumers are aware that even the most unusual product design is intended not to identify the source of the goods, but to render the product itself more useful or appealing.  See Wal-Mart Stores, Inc., 529 U.S. at 213, 54 USPQ2d at 1069; In re Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); TMEP §1202.02(b)(i).

 

In response to this refusal, applicant may claim acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use if applicant can establish that, as a result of applicant’s use of the mark on other goods and/or services, the mark has become distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a).

 

The following requirements must be satisfied in order to claim acquired distinctiveness for a mark in an intent-to-use application:

 

(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services by submitting evidence such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and

 

(2) Applicant must show the extent to which the goods and/or services recited in the intent-to-use application are related to the goods and/or services in connection with which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.  The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.

 

Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1771 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999); TMEP §1212.09(a).

 

As an alternative to claiming acquired distinctiveness, applicant may amend the application to the Supplemental Register after timely filing an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§1102.03, 1202.02(b)(i).  When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for an amendment to allege use or 37 C.F.R. §2.88(e) for a statement of use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirement(s) set forth below.

 

Color Claim Required and Complete Description of Mark Required

Applicant has submitted a color drawing but has indicated that color is not being claimed as a feature of the mark.  Applications for marks depicted in color must include a complete list of all the colors that are claimed as a feature of the mark and a description of the literal and design elements in the mark that specifies where the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  In addition, the color claim and mark description must reference all the colors in the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(a)(ii).  Alternatively, if color is not being claimed then a drawing showing the mark in black and white must be submitted and color should not be referenced in the description of the mark.

 

Therefore, applicant must clarify whether color is claimed as a feature of the mark by satisfying one of the following:

 

(1)  If color is not a feature of the applied-for mark, applicant must submit a substitute black and white drawing of the mark to replace the color drawing of record.  However, other amendments or changes to the mark will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(a)(i), 807.14.; or

 

(2)  If color is a feature of the applied-for mark, applicant must submit both a statement listing all of the colors that are claimed as a feature of the mark and a statement describing the literal and design elements in the mark that specifies where the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a).  If black, white and/or gray appear in the mark and are not being claimed as colors, applicant must also include a statement that the colors <black, white, and/or gray> represent background, outlining, shading and/or transparent areas and are not part of the mark.  TMEP §807.07(d).  The following format is suggested:  “The colors black, red, white and blue are claimed as a feature of the mark. The mark consists of a 14" x 14" x 6" white & blue cube shaped novelty hat bearing the stylized word THE ICEMAN COMITH! with the word THE in black and the wording ICEMAN COMITH! in red and outlined in black on the front panel of the hat.  The dotted line represents the hole in the hat where one’s head is placed and is not claimed as a feature of the mark.”

 

See TMEP §807.07(b).

 

ADVISORY:  The applicant should note that COMITH contains a typographical error.  The word is spelled COMETH.  However, the examining attorney is aware that many trademarks purposefully include misspelled words.  If the applicant intended for the word to be spelled COMITH, the drawing and description should include the word in that spelling.  However, if the spelling was merely a typographical error, the applicant may amend the drawing to the word COMETH and then should include the correct spelling in the description of the mark as well.

 

 

Drawing Unacceptable

Applicant must submit a new drawing with the dimension numbers and arrows deleted because they are not part of the mark.  See TMEP §§807.02, 807.14(a).

 

Owner of Mark Required Clarification

The name of an individual person appears in the section of the application intended for the trademark owner’s name, but the entity type is set forth as a limited liability company.  Applicant must clarify this inconsistency.  TMEP §803.03. 

 

If applicant is an individual, applicant should simply request that the entity be amended to “individual” and must indicate his/her country of citizenship for the record.  15 U.S.C. §1051(a)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §§803.02(a), 803.03(a), 803.04.  Alternatively, if applicant is a limited liability company, applicant must set forth its correct name and U.S. state or foreign country of incorporation or organization.  TMEP §§803.03(h), 803.04; see 37 C.F.R. §2.32(a)(2), (a)(3)(ii).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused under Trademark Act Section 1, 15 U.S.C. §1051, because the application was void as filed.  Only the owner of a mark may apply to register the mark.  TMEP §§803.01, 803.06, 1201.02(b).

 

Response Guidance

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

Applicant may wish to hire an attorney to assist in prosecuting this application because of the legal technicalities involved.  The Office, however, cannot aid in the selection of an attorney.  37 C.F.R. §2.11.  Applicant may wish to consult a local telephone directory for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from a local bar association attorney-referral service.

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

 

 

 

/Kelley L. Wells/

Trademark Attorney

Law Office 105

571-272-9312

kelley.wells@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/teas/eTEASpageD.htm.  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.  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.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85199203) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 3/25/2011 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

 PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification. 

 

2. Respond within 6 months, calculated from 3/25/2011 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Kelley L. Wells/

Trademark Attorney

Law Office 105

571-272-9312

kelley.wells@uspto.gov

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, please use the Trademark Electronic Application System Response to Office Action form.