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: 4/6/2012

 

 

 

 

This letter is in response to the communication received on March 9, 2012, in which applicant submitted a claim of acquired distinctiveness based on ownership of prior registrations of the same mark, amended the identification of goods and claim ownership of prior registrations.

 

The amended identification and claim of ownership of prior registrations is accepted and these requirements are satisfied.

 

The claim of acquired distinctiveness is not accepted, as explained below.  The refusal under Section 2(e)(4) is continued and maintained.

 

Claim of Acquired Distinctiveness – Unacceptable

 

Applicant has asserted a claim of acquired distinctiveness based on ownership of a prior registration nos. 4042815, 4067997, 3432510, and 3490082 for the mark DISNEY used on the following goods and services:

• Photograph albums; appointment books; autograph books; baby books; paper party bags; binders; bookends; books featuring stories, games and activities for children; gift cards; cartoon prints; pen and pencil cases; children's activity books; modeling clay; coloring books; comic books; paper party hats; paper napkins; stationery; posters; staplers; writing paper; envelopes; postcards; trading cards;
• ACTION FIGURES AND ACCESSORIES; ACTION SKILL GAMES; PLUSH TOYS; BALLOONS; BATH TOYS; CHRISTMAS TREE ORNAMENTS; BOARD GAMES; TOY BUILDING BLOCKS; PLAYING CARDS; DOLLS AND DOLL CLOTHING; DOLL PLAYSETS; CRIB TOYS; MANIPULATIVE GAMES; JIGSAW PUZZLES; KITES; MUSIC BOX TOYS; PARTY FAVORS IN THE NATURE OF SMALL TOYS; INFLATABLE POOL TOYS; DISC-TYPE TOSS TOYS; TOY VEHICLES; MODEL TOY CARS; HAND-HELD UNIT FOR PLAYING ELECTRONIC GAMES; MUSICAL TOYS; MODELED PLASTIC TOY FIGURINES; TOY BANKS; PUPPETS; YO-YOS; TOY SCOOTERS; TALKING TOYS; BUBBLE MAKING WANDS AND SOLUTION SETS; MODEL TOY TRUCKS;
• Production and distribution of motion picture films; production and distribution of television and radio programs; production of sound and video recordings for others; production and provision of entertainment, namely, news, and information in the field of entertainment via communication and computer networks; providing entertainment services via a global communication network in the nature of online games and websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; amusement park and theme park services; production of live stage shows; presentation of live show performances; theater productions; and entertainer services in the nature of live appearances by a professional entertainer;
• Non-medicated toiletries, cosmetics, dentifrices; and
• Jewelry, watches, clocks, jewelry boxes not made of precious metals.

 

As explained below, the claim of ownership of the prior registrations does not support applicant’s claim of acquired distinctiveness because the registrations are for goods and services unrelated to Hair accessories, namely, barrettes; shoe laces.

 

The goods named in the application, Hair accessories, namely, barrettes; shoe laces, are not sufficiently similar to the goods or services named in the prior registrations to show proof of acquired distinctiveness in respect to the instant application.   In this case, the relatedness hair accessories or shoe laces on the one hand, and jewelry, toiletries, entertainment services or paper goods on the other is not readily apparent. In order to show the mark has acquired distinctiveness under Section 2(f) applicant must provide evidence and an explanation demonstrating the purported relatedness between the goods in the application and the goods or services in the prior registrations indicated in the claim of acquired distinctiveness.  See Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1478 (TTAB 1988) (“Applicant’s almost total reliance on the distinctiveness which its gold ring device has achieved vis-à-vis rifle scopes and handgun scopes is simply not sufficient by itself to establish that the same gold ring device has become distinctive vis-à-vis binoculars and spotting scopes.”).

 

Therefore, the prior registration does not support applicant’s claim of acquired distinctiveness and the claim is not accepted. 

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

/Heather Biddulph/

Heather Biddulph

Trademark Examining Attorney

Law Office 104

Phone:  571-272-8190

Email:  heather.biddulph@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 4/6/2012 FOR

SERIAL NO. 85338047

 

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 4/6/2012 (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.