| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85253308 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION (current) | |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) orange is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the color orange applied to the entirety of the goods. |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT11\IMAGEOUT 11\852\533\85253308\xml6\ ROA0002.JPG |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR MARK | YES |
| COLOR(S) CLAIMED (If applicable) |
The color(s) orange is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the color orange applied to the entirety of the goods. |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 406 x 250 |
| ARGUMENT(S) | |
|
REMARKS
In the recent Office Action the Examining Attorney acknowledged Applicant’s amendment to assert acquired distinctiveness based on five years of use in commerce. However, the Examining Attorney indicated that Applicant’s allegation of five years of use is insufficient to show acquired distinctiveness because the applied-for mark is a color mark. Applicant appreciates the concerns raised by the Examining Attorney. Respectfully, Applicant believes that the concerns raised by the Examining Attorney are resolvable in view of the applicable facts and additional evidence, which establishes that the present color mark has acquired distinctiveness and is perceived as a trademark by consumers.
REQUESTED INFORMATION
In the recent Office Action, the Examining Attorney requested certain information pertaining to the mark and underlying goods in order to permit proper examination of the applied-for color mark. Applicant’s responses to the Examining Attorney’s individual requests are provided below.
(1) The color orange does not serve any purpose in the tile industry, other than as Applicant’s trademark, as used on Applicant’s goods. The color orange is not generally recognized as an indicator for use or purpose of waterproofing material, and the color orange does not serve any purpose for visual inspection or any other type of inspection.
(2) The color orange is not a natural by-product of the manufacturing process of the Applicant’s goods. The color orange is added to the Applicant’s goods during the manufacturing process. More specifically, the color is added in the form of a masterbach during the extrusion process. The color is only added for purposes of giving the product an orange color. Adding the color orange to Applicant’s product does not result in either an expedited or more economical manufacturing process.
(3) Applicant advertises extensively its orange-colored waterproofing and drainage membranes. More specifically, Applicant advertises on its website and by placing ads on the internet on third party websites. In addition Applicant places ads in tile, flooring and construction magazines and other publications such as trade journals. Further, Applicant regularly advertises at industry tradeshows throughout the U.S. Color printouts of Applicant’s website are attached as Exhibit B, and color printouts of some of Applicant’s print advertising are attached as Exhibit C.
Since 2006, Applicant has invested a substantial amount of money in advertising its orange waterproofing and drainage membranes within the U.S. Applicant’s marketing expenses for the relevant orange products since 2006 are listed below:
2006- $1,044,168.08 2007- $1,296,834.82 2008- $1,762,553.35 2009- $1,724,590.31 2010- $1,917,828.12 2011- $1,926,795.15 Total- $7,247,355.21.
In addition, sales of Applicant’s orange waterproofing and drainage membranes are substantial and have increased over the past five plus years. Specifically, Applicant’s U.S. sales of the relevant orange product total $77,652,222.79 from Jan. 1, 2005 – Nov. 14, 2008. Applicant’s U.S. sales of the relevant orange product total $115,406,747.99 from Nov. 15, 2008 – Oct. 4, 2011.
(4) Applicant has been doing business in the tile industry since 1975, and is not aware of any statutes, regulations, ordinances, codes or industry standards that require, regulate and/or standardize the use of the color orange on the goods.
(5) Applicant is not aware of any relevance of the color orange in the tile industry. Except as indicated in the paragraph below, Applicant is not aware of any third parties, including Applicant’s competitors, who use the color orange on products similar to or competing with those of the Applicant. In the event that any third party or competitor of the Applicant adopts the color orange on related goods, Applicant will consider such use an infringement of its trademark rights and the goodwill Applicant has acquired in the color orange as used on Applicant’s goods. With respect to “Dal-Seal”, the product is produced by the Nobel Company as a private label for DAL Tile, a tile and ceramic company, which also distributes tile-setting materials along with its tiles, including Schluter products. Nobel Company produces a waterproofing membrane, Nobel Seal, which is blue in color. Applicant only recently became aware that the Dal Seal product is a shade of orange. Upon information and belief, Applicant submits that the orange colored Dal Seal product entered the relevant market only after Applicant had penetrated the market with its orange waterproofing and drainage membrane products. Accordingly, Applicant considers such use of the color orange by the Nobel Company an infringement of Applicant’s trademark rights in the color orange.
(6) Applicant does not manufacture or sell its waterproofing or drainage membranes in any color other than orange.
(7) Except as discussed above, Applicant is not aware of any competitors that produce similar goods in the color orange.
(8) Color photographs and color advertisements showing competitive goods in Applicant’s industry are attached hereto as Exhibit F. Applicant’s competitors include Blanke (blue-colored product), NAC (gray-colored product), Spiderweb (tan/brown-colored product) and Laticrete (charcoal-colored product).
(9) Applicant is the owner of certain patents pertaining to the goods listed in the present application. However, none of these patents have any relevance with respect to the color orange.
EVIDENCE OF ACQUIRED DISTINCTIVENESS
A. Customer Declarations
Affidavits, declarations, and letters by members of the public as to their perception of the mark are relevant in establishing secondary meaning. In re Bose Corp., 216 U.S.P.Q. 1001, 1005 (TTAB 1983), aff’d, 227 U.S.P.Q. 1 (Fed. Cir. 1985) (“[T]he statement of a retailer that he has been in contact with many purchasers of loudspeaker systems and that a substantial number of these purchasers would recognize the depicted design as originating with Bose Corporation is certainly competent evidence of secondary meaning.”). Similarly, in the present case, Applicant is providing herewith as Exhibit A several declarations. The declarations are discussed briefly and individually below. Declaration 1: John Bridge John Bridge is an independent, professional tile installer. He has also authored a book entitled Tile Your World, which is an instructional book in the field of tile setting and installation. John Bridge is also president of John Bridge & Associates LLC, which operates the John Bridge Tile Forums, the leading source and most visited tile information website on the Internet. In his declaration, John Bridge asserts, among other things, that he recognizes the color orange as a trademark for Schulter’s products. He further states that through his contact with participants on his forum, he understands that when a consumer refers to the “orange” product, the consumer is referring to Schluter’s products. Declaration 2: Carol Seymour Carol Seymour is the Customer Support Supervisor for Applicant, Schluter Systems L.P. In her declaration, Ms. Seymour states that she is in regular contact with consumers and customers of the Applicant. She further states that based on her direct and indirect communication with consumers of waterproofing and drainage membranes, she has come to understand that such consumers associate the color orange with Schluter. Declaration 3: CJ Madonna CJ Madonna is general counsel for Schluter Systems L.P. In his declaration, Mr. Madonna makes numerous statements regarding Schluter’s use of the color orange. Many of the statements in Mr. Madonna’s declaration are pertinent to the specific information requested by the Examining Attorney in the recent Office Action. Declarations 4-7: Various Distributors In the distributor declarations, the various distributors make statements concerning their interactions with customers and the distributor’s understanding of the customer’s perception of the color orange as applied to waterproofing and drainage membranes. Applicant is aware that distributor declarations alone provide limited value because the distributors are not the ultimate consumer of the relevant product. See In re Edward Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999). Nevertheless, Applicant submits that the declarations attached hereto are valuable when taken together with the significant amount of additional evidence in support of acquired distinctiveness being submitted herein. In addition, the declarations are valuable since the distributors come into contact with numerous end consumers. For example, one distributor sells the relevant product to about 2000 customers per month while another distributor sells the relevant product to about 900 customers per month. Moreover, many of Applicant’s distributors sell product other than that of the Applicant. B. Applicant’s Promotion of the Mark Promotion of the mark through advertising is relevant to show the public’s perception of the mark. In re EBSCO Indus., Inc., 41 U.S.P.Q.2d 1917 (TTAB 1997). Since adopting the color mark orange in 1990 (about 22 years ago), Applicant has spent substantial amounts of money and time promoting the mark and the goods associated therewith. One way in which the Applicant promotes its mark is through its website, www.schluter.com. Attached hereto as Exhibit B are copies of some of the relevant pages from Applicant’s website. Importantly, Applicant’s advertising is targeted specifically to its potential customers. The Examining Attorney will notice that the dominant color in Applicant’s website is orange. Applicant also targets and markets its products to potential customers by participating in tradeshows throughout the U.S. Further, Applicant places ads on the internet on third party websites. In addition Applicant places ads in tile, flooring and construction magazines and other publications such as trade journals. Printouts showing some of Applicant’s numerous printed advertisements are attached hereto as Exhibit C. Upon review of the attached advertisements, it will become apparent that the Applicant always advertises its relevant products using the color orange, and the products are always displayed in the color orange. Applicant has invested a substantial amount of money in advertising its orange products. For example, since 2006, Applicant has spent the following amount of money in advertising its orange waterproofing and drainage membranes within the U.S. 2006- $1,044,168.08 2007- $1,296,834.82 2008- $1,762,553.35 2009- $1,724,590.31 2010- $1,917,828.12 2011- $1,926,795.15 Total- $7,247,355.21.
Applicant’s efforts to advertise and promote its product have paid off. Sales of Applicant’s orange waterproofing and drainage membranes are significant and have increased over the past five plus years. Specifically, Applicant’s U.S. sales of the relevant orange product total $77,652,222.79 from Jan. 1, 2005 – Nov. 14, 2008. Applicant’s U.S. sales of the relevant orange product total $115,406,747.99 from Nov. 15, 2008 – Oct. 4, 2011. In view of the foregoing, Applicant submits that not only have its advertising efforts paid off in product sales, but also in gaining public recognition of the color orange used a trademark on Applicant’s waterproofing and drainage membranes. C. Extensive Publicity and Unsolicited Media Coverage Regarding Applicant’s Mark and Associated Product
Evidence of the nature and extent of publicity is relevant evidence from which secondary meaning or acquired distinctiveness may be inferred. Beef/Eater Restaurants, Inc. v. James Burrough, Ltd., 398 F.2d 637, 158 U.S.P.Q. 562 (5th Cir. 1968). The ultimate test in determining acquisition of distinctiveness under §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). Applicant submits that it has succeeded in the requisite education of the public. Applicant’s success is evidenced by the numerous unsolicited media coverage regarding Applicant’s mark and associated product. Specifically, Applicant’s competitors refer to Applicant’s product as “the orange alternative.” In the advertisement attached hereto as Exhibit D, one of Applicant’s major competitors, Blanke, boasts that the Blanke product has “Higher tensile strength than orange alternative.” In addition, numerous participants, including independent tile contractors, on the John Bridge Forum routinely refer to Applicant’s product as the “orange” stuff. In the first forum discussion attached hereto as Exhibit E, one participant answers another participant’s question by stating, “The orange stuff you are talking about is ditra mat.” DITRA is one of Applicant’s trademarks. The Examiner may also notice references to KERDI together with “orange” in the forum discussions. Applicant submits the KERDI is another one of its trademarks. Many other participants make reference to Applicant’s orange product in the printouts of the forum discussion. See Exhibit E. In view of the foregoing, Applicant submits that its competitors and relevant consumers have come to associate the color orange with Applicant’s products. Applicant has made extensive efforts to promote its product using the color orange. Additionally, as evidenced herein, Applicant’s efforts have been a success in educating consumers that the color orange is an indicator that Applicant is the source and origin of the underlying goods used in connection with the mark.
CONCLUSION
In view of the foregoing, Applicant submits that the color orange has acquired secondary meaning and recognition as a trademark when used on Applicant’s waterproofing and drainage membranes, and is therefore registrable on the Principal Register under §2(f). Respectfully, Applicant requests that its mark be registered. If any impediment to passing this mark onto publication remains after entry of this evidence and consideration of these remarks, the Examining Attorney is invited to initiate a telephone interview with the undersigned. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7010237226-140844042_._exa.pdf |
| CONVERTED PDF FILE(S) (19 pages) |
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| ORIGINAL PDF FILE | evi_7010237226-140844042_._exb.pdf |
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| ORIGINAL PDF FILE | evi_7010237226-140844042_._exc2.pdf |
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| ORIGINAL PDF FILE | evi_7010237226-140844042_._exd.pdf |
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| ORIGINAL PDF FILE | evi_7010237226-140844042_._exe.pdf |
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| ORIGINAL PDF FILE | evi_7010237226-140844042_._exf.pdf |
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| DESCRIPTION OF EVIDENCE FILE | Ex A- Several Declarations Ex B- Color Printouts of Applicant's website Ex C- Color Printouts of Applicant's advertising Ex D- one of Applicant's major competitors Ex E- Forum discussion Ex F- Color photographs and color advertisements showing competitive goods in Applicant's industry |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jasonrjones/ |
| SIGNATORY'S NAME | Jason R. Jones |
| SIGNATORY'S POSITION | Attorney of Record, Utah Bar Member |
| DATE SIGNED | 10/12/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Oct 12 14:27:33 EDT 2011 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0111012142733501953-85253 308-48062db6fe0264a6fc58b 90ce379d48b5f2-N/A-N/A-20 111012140844042141 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
REMARKS
In the recent Office Action the Examining Attorney acknowledged Applicant’s amendment to assert acquired distinctiveness based on five years of use in commerce. However, the Examining Attorney indicated that Applicant’s allegation of five years of use is insufficient to show acquired distinctiveness because the applied-for mark is a color mark. Applicant appreciates the concerns raised by the Examining Attorney. Respectfully, Applicant believes that the concerns raised by the Examining Attorney are resolvable in view of the applicable facts and additional evidence, which establishes that the present color mark has acquired distinctiveness and is perceived as a trademark by consumers.
REQUESTED INFORMATION
In the recent Office Action, the Examining Attorney requested certain information pertaining to the mark and underlying goods in order to permit proper examination of the applied-for color mark. Applicant’s responses to the Examining Attorney’s individual requests are provided below.
(1) The color orange does not serve any purpose in the tile industry, other than as Applicant’s trademark, as used on Applicant’s goods. The color orange is not generally recognized as an indicator for use or purpose of waterproofing material, and the color orange does not serve any purpose for visual inspection or any other type of inspection.
(2) The color orange is not a natural by-product of the manufacturing process of the Applicant’s goods. The color orange is added to the Applicant’s goods during the manufacturing process. More specifically, the color is added in the form of a masterbach during the extrusion process. The color is only added for purposes of giving the product an orange color. Adding the color orange to Applicant’s product does not result in either an expedited or more economical manufacturing process.
(3) Applicant advertises extensively its orange-colored waterproofing and drainage membranes. More specifically, Applicant advertises on its website and by placing ads on the internet on third party websites. In addition Applicant places ads in tile, flooring and construction magazines and other publications such as trade journals. Further, Applicant regularly advertises at industry tradeshows throughout the U.S. Color printouts of Applicant’s website are attached as Exhibit B, and color printouts of some of Applicant’s print advertising are attached as Exhibit C.
Since 2006, Applicant has invested a substantial amount of money in advertising its orange waterproofing and drainage membranes within the U.S. Applicant’s marketing expenses for the relevant orange products since 2006 are listed below:
2006- $1,044,168.08
2007- $1,296,834.82
2008- $1,762,553.35
2009- $1,724,590.31
2010- $1,917,828.12
2011- $1,926,795.15
Total- $7,247,355.21.
In addition, sales of Applicant’s orange waterproofing and drainage membranes are substantial and have increased over the past five plus years. Specifically, Applicant’s U.S. sales of the relevant orange product total $77,652,222.79 from Jan. 1, 2005 – Nov. 14, 2008. Applicant’s U.S. sales of the relevant orange product total $115,406,747.99 from Nov. 15, 2008 – Oct. 4, 2011.
(4) Applicant has been doing business in the tile industry since 1975, and is not aware of any statutes, regulations, ordinances, codes or industry standards that require, regulate and/or standardize the use of the color orange on the goods.
(5) Applicant is not aware of any relevance of the color orange in the tile industry. Except as indicated in the paragraph below, Applicant is not aware of any third parties, including Applicant’s competitors, who use the color orange on products similar to or competing with those of the Applicant. In the event that any third party or competitor of the Applicant adopts the color orange on related goods, Applicant will consider such use an infringement of its trademark rights and the goodwill Applicant has acquired in the color orange as used on Applicant’s goods.
With respect to “Dal-Seal”, the product is produced by the Nobel Company as a private label for DAL Tile, a tile and ceramic company, which also distributes tile-setting materials along with its tiles, including Schluter products. Nobel Company produces a waterproofing membrane, Nobel Seal, which is blue in color. Applicant only recently became aware that the Dal Seal product is a shade of orange. Upon information and belief, Applicant submits that the orange colored Dal Seal product entered the relevant market only after Applicant had penetrated the market with its orange waterproofing and drainage membrane products. Accordingly, Applicant considers such use of the color orange by the Nobel Company an infringement of Applicant’s trademark rights in the color orange.
(6) Applicant does not manufacture or sell its waterproofing or drainage membranes in any color other than orange.
(7) Except as discussed above, Applicant is not aware of any competitors that produce similar goods in the color orange.
(8) Color photographs and color advertisements showing competitive goods in Applicant’s industry are attached hereto as Exhibit F. Applicant’s competitors include Blanke (blue-colored product), NAC (gray-colored product), Spiderweb (tan/brown-colored product) and Laticrete (charcoal-colored product).
(9) Applicant is the owner of certain patents pertaining to the goods listed in the present application. However, none of these patents have any relevance with respect to the color orange.
EVIDENCE OF ACQUIRED DISTINCTIVENESS
A. Customer Declarations
Affidavits, declarations, and letters by members of the public as to their perception of the mark are relevant in establishing secondary meaning. In re Bose Corp., 216 U.S.P.Q. 1001, 1005 (TTAB 1983), aff’d, 227 U.S.P.Q. 1 (Fed. Cir. 1985) (“[T]he statement of a retailer that he has been in contact with many purchasers of loudspeaker systems and that a substantial number of these purchasers would recognize the depicted design as originating with Bose Corporation is certainly competent evidence of secondary meaning.”).
Similarly, in the present case, Applicant is providing herewith as Exhibit A several declarations. The declarations are discussed briefly and individually below.
Declaration 1: John Bridge
John Bridge is an independent, professional tile installer. He has also authored a book entitled Tile Your World, which is an instructional book in the field of tile setting and installation. John Bridge is also president of John Bridge & Associates LLC, which operates the John Bridge Tile Forums, the leading source and most visited tile information website on the Internet. In his declaration, John Bridge asserts, among other things, that he recognizes the color orange as a trademark for Schulter’s products. He further states that through his contact with participants on his forum, he understands that when a consumer refers to the “orange” product, the consumer is referring to Schluter’s products.
Declaration 2: Carol Seymour
Carol Seymour is the Customer Support Supervisor for Applicant, Schluter Systems L.P. In her declaration, Ms. Seymour states that she is in regular contact with consumers and customers of the Applicant. She further states that based on her direct and indirect communication with consumers of waterproofing and drainage membranes, she has come to understand that such consumers associate the color orange with Schluter.
Declaration 3: CJ Madonna
CJ Madonna is general counsel for Schluter Systems L.P. In his declaration, Mr. Madonna makes numerous statements regarding Schluter’s use of the color orange. Many of the statements in Mr. Madonna’s declaration are pertinent to the specific information requested by the Examining Attorney in the recent Office Action.
Declarations 4-7: Various Distributors
In the distributor declarations, the various distributors make statements concerning their interactions with customers and the distributor’s understanding of the customer’s perception of the color orange as applied to waterproofing and drainage membranes. Applicant is aware that distributor declarations alone provide limited value because the distributors are not the ultimate consumer of the relevant product. See In re Edward Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999). Nevertheless, Applicant submits that the declarations attached hereto are valuable when taken together with the significant amount of additional evidence in support of acquired distinctiveness being submitted herein. In addition, the declarations are valuable since the distributors come into contact with numerous end consumers. For example, one distributor sells the relevant product to about 2000 customers per month while another distributor sells the relevant product to about 900 customers per month. Moreover, many of Applicant’s distributors sell product other than that of the Applicant.
B. Applicant’s Promotion of the Mark
Promotion of the mark through advertising is relevant to show the public’s perception of the mark. In re EBSCO Indus., Inc., 41 U.S.P.Q.2d 1917 (TTAB 1997). Since adopting the color mark orange in 1990 (about 22 years ago), Applicant has spent substantial amounts of money and time promoting the mark and the goods associated therewith. One way in which the Applicant promotes its mark is through its website, www.schluter.com. Attached hereto as Exhibit B are copies of some of the relevant pages from Applicant’s website. Importantly, Applicant’s advertising is targeted specifically to its potential customers. The Examining Attorney will notice that the dominant color in Applicant’s website is orange.
Applicant also targets and markets its products to potential customers by participating in tradeshows throughout the U.S. Further, Applicant places ads on the internet on third party websites. In addition Applicant places ads in tile, flooring and construction magazines and other publications such as trade journals. Printouts showing some of Applicant’s numerous printed advertisements are attached hereto as Exhibit C. Upon review of the attached advertisements, it will become apparent that the Applicant always advertises its relevant products using the color orange, and the products are always displayed in the color orange.
Applicant has invested a substantial amount of money in advertising its orange products. For example, since 2006, Applicant has spent the following amount of money in advertising its orange waterproofing and drainage membranes within the U.S.
2006- $1,044,168.08
2007- $1,296,834.82
2008- $1,762,553.35
2009- $1,724,590.31
2010- $1,917,828.12
2011- $1,926,795.15
Total- $7,247,355.21.
Applicant’s efforts to advertise and promote its product have paid off. Sales of Applicant’s orange waterproofing and drainage membranes are significant and have increased over the past five plus years. Specifically, Applicant’s U.S. sales of the relevant orange product total $77,652,222.79 from Jan. 1, 2005 – Nov. 14, 2008. Applicant’s U.S. sales of the relevant orange product total $115,406,747.99 from Nov. 15, 2008 – Oct. 4, 2011.
In view of the foregoing, Applicant submits that not only have its advertising efforts paid off in product sales, but also in gaining public recognition of the color orange used a trademark on Applicant’s waterproofing and drainage membranes.
C. Extensive Publicity and Unsolicited Media Coverage Regarding
Applicant’s Mark and Associated Product
Evidence of the nature and extent of publicity is relevant evidence from which secondary meaning or acquired distinctiveness may be inferred. Beef/Eater Restaurants, Inc. v. James Burrough, Ltd., 398 F.2d 637, 158 U.S.P.Q. 562 (5th Cir. 1968). The ultimate test in determining acquisition of distinctiveness under §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). Applicant submits that it has succeeded in the requisite education of the public. Applicant’s success is evidenced by the numerous unsolicited media coverage regarding Applicant’s mark and associated product.
Specifically, Applicant’s competitors refer to Applicant’s product as “the orange alternative.” In the advertisement attached hereto as Exhibit D, one of Applicant’s major competitors, Blanke, boasts that the Blanke product has “Higher tensile strength than orange alternative.”
In addition, numerous participants, including independent tile contractors, on the John Bridge Forum routinely refer to Applicant’s product as the “orange” stuff. In the first forum discussion attached hereto as Exhibit E, one participant answers another participant’s question by stating, “The orange stuff you are talking about is ditra mat.” DITRA is one of Applicant’s trademarks. The Examiner may also notice references to KERDI together with “orange” in the forum discussions. Applicant submits the KERDI is another one of its trademarks. Many other participants make reference to Applicant’s orange product in the printouts of the forum discussion. See Exhibit E.
In view of the foregoing, Applicant submits that its competitors and relevant consumers have come to associate the color orange with Applicant’s products. Applicant has made extensive efforts to promote its product using the color orange. Additionally, as evidenced herein, Applicant’s efforts have been a success in educating consumers that the color orange is an indicator that Applicant is the source and origin of the underlying goods used in connection with the mark.
CONCLUSION
In view of the foregoing, Applicant submits that the color orange has acquired secondary meaning and recognition as a trademark when used on Applicant’s waterproofing and drainage membranes, and is therefore registrable on the Principal Register under §2(f). Respectfully, Applicant requests that its mark be registered. If any impediment to passing this mark onto publication remains after entry of this evidence and consideration of these remarks, the Examining Attorney is invited to initiate a telephone interview with the undersigned.
