To: | L'Oreal (rls@paulhastings.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85929908 - SI - 29172.00061 |
Sent: | 5/20/2014 1:34:30 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85929908
MARK: SI
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: L'Oreal
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 5/20/2014
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on March 11, 2014.
In a previous Office action dated September 11, 2013, applicant was required to satisfy the following requirement(s): disclaim descriptive wording in the mark, clarify the mark description, and provide an English translation.
Based on applicant’s response, the applicant has satisfied the mark description and English translation requirements.
After careful consideration of applicant’s response, the examining attorney has determined that the disclaimer of the SHAPE OF THE BOTTLE is made FINAL for the reasons specified below. The examining attorney has withdrawn the requirement for a disclaimer of the CAP. Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.64(a); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Applicant must disclaim the following elements of the applied-for product packaging mark because they comprise nondistinctive matter that does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others: SHAPE OF THE BOTTLE. See 15 U.S.C. §§1051-1052, 1056(a), 1127; TMEP §1202.02(b)(ii), (c)(i)(B), (c)(iii)(B).
Determining whether product packaging trade dress is inherently distinctive involves the following factors:
(1) Whether the applied-for mark is a “common” basic shape or design
(2) Whether the applied-for mark is unique or unusual in the field in which it is used
(3) Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods
(4) Whether the applied-for mark is incapable of creating a commercial impression distinct from any accompanying words
In re Pacer Tech., 338 F.3d 1348, 1350, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003) (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977)); TMEP §1202.02(b)(ii). Any one of these factors, by itself, may be determinative. See In re Chippendales USA, Inc., 622 F.3d 1346, 1355, 96 USPQ2d 1681, 1687 (Fed. Cir. 2010).
Applicant argues that the shape of the bottle is inherently distinctive, unique, and not common and therefore does not need to be disclaimed. However, the examining attorney respectfully disagrees. In addition to evidence attached in the previous Office Action, the following attached Internet evidence shows that this rectangular bottle shape is commonly used by others in applicant’ field, namely, the fragrance and personal goods industry:
Because consumers have been accustomed to seeing this bottle shape used by others in the marketplace, the consumer will not perceive it as a trademark that identifies the source of only one individual’s goods.
An applicant may not claim exclusive rights to an unregistrable component of a mark, such as this nondistinctive matter, and therefore must provide a disclaimer of it. See 15 U.S.C. §1056(a); TMEP §§1202.02(c)(iii), (c)(iii)(B), 1213.03(a), (b). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
Applicant must provide the disclaimer regardless of whether the remaining portions of the mark are determined to be registrable. See TMEP §1202.02(c)(iii)(B). If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Slokevage, 441 F.3d 957, 959, 962-63, 78 USPQ2d 1395, 1397, 1400 (Fed. Cir. 2006); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use SHAPE OF THE BOTTLE apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
This disclaimer requirement is modified and made FINAL.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
RESPONSE GUIDELINES
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
ASSISTANCE
/David H. Aleskow/
David H. Aleskow
Trademark Examining Attorney
Law Office 105
571-272-7895
David.Aleskow@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.