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: 8/24/2011

 

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.

 

SEARCH

 

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).

 

SECTIONS 1, 2 AND 45 REFUSAL – ORNAMENTAL – Classes 14, 20, 21, 25 & 28

Registration is refused because the applied-for mark, as used on the specimen of record, is merely a decorative or ornamental feature of the goods; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (holding floral pattern design of morning glories and leaves for tableware nondistinctive and merely a decorative pattern with no trademark significance); TMEP §§904.07(b), 1202.03 et seq.; cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

 

When evaluating a mark that appears to be ornamental, “the size, location, dominance and significance of the alleged mark as applied to the goods” are all relevant factors in determining whether it is inherently distinctive.  E.g., In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984); TMEP §1202.03(a).

 

Although there is no prescribed method or place for affixation of a mark to goods, the location of a mark on the goods “is part of the environment in which the [mark] is perceived by the public and . . . may influence how the [mark] is perceived.”  In re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984); see In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982).  Thus, where consumers have been conditioned to recognize trademarks in a certain location, as on the breast area of a shirt, ornamental matter placed in a different location is less likely to be perceived as an indicator of source.  See TMEP §1202.03(a), (b).

 

The applied-for mark, as shown on the specimen, is merely ornamental because of the presentation on the specimens.  In Class 14, the mark the applicant has submitted a pair of earrings where the mark appears as the earring surface.  In Classes 20, 21 and 28, the mark appears as embellishment on the side of the goods and in Class 25, the mark embellishes the front surface of a cap/hat.   As presented, the marks ornamentally decorate the surface area of the goods and fail to function as trademarks.  As such, registration is refused.

 

Applicant may respond to the stated ornamental refusal by satisfying one of the following, as appropriate:

 

            (1)  Claiming acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods in commerce.  Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote, as a trademark, the mark for which registration is sought; 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 applied-for mark as a trademark for the goods.  See 37 C.F.R. §2.41(a); TMEP §§1202.03(d), 1212.06 et seq.;

 

            (2)  Submitting evidence that the applied-for mark is an indicator of secondary source or sponsorship for the identified goods.  Univ. Book Store v. Univ. of Wis. Bd. of Regents,33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182, 182 (TTAB 1973).  That is, applicant may submit evidence showing that the applied-for mark would be recognized as a trademark through applicant’s use of the mark with goods and/or services other than those being refused as ornamental.  In re The Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  Applicant must establish that, as a result of this use in connection with other goods and/or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c).

 

            (3)  Amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816; or

 

            (4)  Submitting a substitute specimen that shows non-ornamental trademark use, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

If applicant cannot satisfy one of the above, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same specimen is submitted with an allegation of use, the same refusal will issue.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

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.

 

MARK DIFFERS ON DRAWING & SPECIMEN OF USE – Class  9

 

The mark on the specimen disagrees with the mark on the drawing.  In this case, the specimen displays the mark with the proposed mark embedded within additional wording and designs.  The mark includes the additional wording “1963 2008 45 YEARS OF EXCELLENCE” and on a half oval with two stars within a larger half oval.  However, the drawing does not include the “1963 2008 45 YEARS OF EXCELLENCE” wording and the half oval and star designs.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  The mark on the drawing must be a substantially exact representation of the mark on the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1). 

 

The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed.  37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq.  However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing.  Specifically, the additional wording and designs improperly add searchable design components that change the appearance of the mark and overall commercial impression.

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing use in commerce of the mark on the drawing.  See TMEP §807.12(a).; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §904.05.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

CLAIM OF OWNERSHIP OF REGISTRATIONS

 

If applicant is the owner of U.S. Registration Nos. 1009603, 1025909, and 1025910, then applicant must submit a claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 1009603, 1025909, and 1025910.

 

IDENTIFICATION OF GOODS & SERVICES –Classes 9, 16, 20, 21, 25, & 28

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(c).

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

Applicant may adopt the following identification, if accurate:  

Class 9

The identification of goods is indefinite and must be clarified because it is unclear what is intended by this language.  See TMEP §1402.01. 

Applicant may substitute the following wording, if accurate: 

“video games and video media, namely, [LIST utilizing common commercial names therefor, e.g., video game cartridges; video game discs; video game cassettes; video game software; video game tape cassettes; interactive video game programs; computer programs for video games; etc],” in Class 9.

Class 16

The wording “books and magazines” in the identification of goods is indefinite and must be clarified because the field or subject matter therefor has not been set forth.  See TMEP §1402.01. 

Applicant may substitute the following wording, if accurate: 

“books and magazines in the field of [SPECIFY subject matter],” in Class 16.

The wording “cards” in the identification of goods is indefinite and must be clarified because the type of cards has not been set forth.  See TMEP §1402.01. 

Applicant may substitute the following wording, if accurate: 

“cards, namely, [INDICATE specific type of card, e.g., greeting cards; note cards; business cards],” in Class 16.

 

“cards, namely, [INDICATE specific type of card, e.g., keno cards; bingo cards; playing cards; etc.],” in Class 28.

Class 20

The wording “helmets” in the identification of goods is indefinite and must be clarified because the types of helmets have not been specified and the goods are not properly classified.  See TMEP §1402.01. 

Applicant may substitute the following wording, if accurate: 

“helmets, namely, [LIST utilizing common commercial names therefor, e.g., sports helmets; football helmets, etc],” in Class 9.

The wording “pins” in the identification of goods is indefinite and must be clarified because it is not properly classified or worded.  See TMEP §1402.01. 

Applicant may substitute the following wording, if accurate: 

“pins being jewelry,” in Class 14.

“ornamental pins,” in Class 14.

 “ornamental novelty pins,” in Class 26.

With respect to those goods identified as “magnets,” the goods are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 9.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

With respect to those goods identified as “pens, pencils,” the goods are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 16.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

Class 21

The wording “glassware” in the identification of goods is indefinite and must be clarified because it is not properly worded.  See TMEP §1402.01. 

Applicant may substitute the following wording, if accurate: 

“beverage glassware,” in Class 21.

Class 25

The wording “including” in the identification of goods is indefinite and must be clarified because it is indefinite and should be replaced by “namely.”  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

“clothing, namely, shorts, socks, ties, caps and shirts, namely, t-shirts, polo shirts, dress shirts, sweatshirts and jerseys,” in Class 25.

Class 28

The wording “toys” in the identification of goods is indefinite and must be clarified because the nature of the goods is not set forth.  See TMEP §1402.01. 

Applicant may substitute the following wording, if accurate: 

 “toys, namely, [LIST utilizing common commercial names therefor, e.g., toy figures; toy cars; toy construction blocks; toy hoop sets; toy houses; toy model cars; toy vehicles; toy weapons, etc.],” in Class 28.

The wording “games” in the identification of goods is indefinite and must be clarified because the nature of the games is not set forth.  See TMEP §1402.01. 

Applicant may substitute the following wording, if accurate: 

“games, namely, [LIST utilizing common commercial names therefor, e.g., equipment sold as a unit for playing board games; arcade games; parlor games; pinball games; role playing games; tabletop games; target games; etc.],” in Class 28.

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

IDENTIFICATION OF SERVICES –Class 41

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(c).

 

The wording “in the form of professional football games, exhibitions and television shows” in the identification of services is indefinite and must be clarified because the exact nature of the service.  See TMEP §§1402.01, 1402.03.  Applicant may substitute the following wording, if accurate:

 

Class 41

Educational and entertainment services in the form of a memorial exhibition and museum relating to professional football and its history; entertainment in the nature of professional football games; entertainment in the nature of football exhibitions; entertainment services, namely, the provision of continuing television shows featuring {indicate type, e.g. news, comedy, commentary, sports, etc.}

 

Identifications of services can be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed. 

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the descriptive wording “PRO FOOTBALL” and “CANTON, OHIO” apart from the mark as shown.  The wording “PRO FOOTBALL” is merely describes the subject of the goods and services in Classes 9, 16, 28 and 41.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  Moreover, the wording “CANTON, OHIO” describes the city in state where the goods originate and the services are rendered.

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10. 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “PRO FOOTBALL” and “CANTON, OHIO” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03. 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

CLOSING

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/IngridCEulin/

Ingrid C. Eulin

Law Office 111

(571) 272-9380

Ingrid.Eulin@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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 trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 8/24/2011 FOR

SERIAL NO. 85317114

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

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

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 8/24/2011 (or sooner if specified in the office action).

 

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, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

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