To: | A&E Television Networks, LLC (trademarks.us@dentons.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85979209 - FMJ - 21602608-FMJ |
Sent: | 5/2/2013 9:37:26 AM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85979209
MARK: FMJ
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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: A&E Television Networks, LLC
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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: 5/2/2013
The statement of use 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.
SUMMARY OF ISSUES that applicant must address:
SECTIONS 1, 2 AND 45 REFUSAL – MERELY ORNAMENTAL
Registration is refused because the applied-for mark as used on the specimen of record (1) is merely a decorative or ornamental feature of applicant’s clothing; and (2) does not function as a trademark to identify and distinguish applicant’s clothing from that of others and to indicate the source of applicant’s clothing. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see 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 §§904.07(b), 1202.03 et seq.
With respect to clothing, consumers recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. See TMEP §1202.03(a). However, consumers typically do not perceive larger designs or slogans as trademarks, especially when such matter is displayed across the front of a t-shirt. See In re Pro-Line Corp., 28 USPQ2d at 1142 (holding “BLACKER THE COLLEGE SWEETER THE KNOWLEDGE,” centered in large letters across most of the upper half of a shirt, to be a primarily ornamental slogan that is not likely to be perceived as a source indicator); In re Dimitri’s Inc., 9 USPQ2d at 1667-68 (holding “SUMO,” used in connection with stylized depictions of sumo wrestlers and displayed in large lettering across the top-center portion of t-shirts and caps, to be an ornamental feature of the goods that does not function as a trademark); TMEP §1202.03(a), (b), (f)(i), (f)(ii).
In this case, the submitted specimen shows the applied-for mark, “FMJ” and design, appearing directly on the upper-center area of the front of the shirt, where ornamental elements typically appear. See TMEP §1202.03(a), (b). Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. Lastly, the applied-for mark appears to be a design element with little or no particular trademark significance.
Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows proper trademark use for the identified goods in International Class 25.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may be capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b), if the current filing basis is based on use in commerce under Section 1(a). This will later necessitate additional fee(s) and filing requirements.
For an overview of all the options referenced above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/ornamentalclothing.jsp.
The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.
If applicant amends the application to seek registration on the Supplemental Register, the effective filing date of the application will be the date on which applicant meets the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.
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 §§304.01-.02, 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.
/Dawn Han/
Examining Attorney
Law Office 107
(571) 272-9432
dawn.han@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.