| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86357872 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86357872/large |
| LITERAL ELEMENT | ELORA |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
This responds to the official action dated September 19, 2015. “Registration is refused because the specimen in International Class 19 consists of advertising material and thus does not show the applied-for mark in use in commerce for the identified goods.” Applicant respectfully disagrees and submits, for the following reasons, that the previously submitted specimen of use is acceptable. The goods are non-metal doors and they are custom made to order after a customer decides what the finished door will look like. In most cases, the “point of sale” is the place where the customer meets, face to face, with one of applicant’s representatives or one of applicant’s authorized distributors. During such meetings, the customer typically reviews the applicant’s brochures and catalogs and decisions are made about the specifications of the doors that will be custom made and installed in the customer’s home. On page 3 of the specimen, customers are encouraged to “Explore your many options with custom decorative glass, 30 paint colors and 12 stains, and selection of hardware and handlesets. You can truly design an entry door system to complement your home and your personality.” For example, a customer would design a door by selecting various door options which appear on pages 7 through 11 of the specimen. This is where customers encounter the trademark and this is how they come to associate it with the goods. (Previously, the applicant has submitted similar materials as specimens of use for its marks for windows and doors. With this response, the applicant is submitting TESS records for five of its registrations and the five specimens of use that were submitted in connection therewith. The applicant acknowledges that the PTO’s acceptance of such specimens of use in other cases is in no way binding in this case. However, it is worth noting that applicant’s catalogs have been deemed by the Patent and Trademark Office to be acceptable point of sale specimens of use in the past.) Section 45 of the Trademark Act states, in pertinent part, that a mark is deemed to be in use in commerce (1) on goods when – (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with goods or their sale… In In re Valenite Inc., 84 USPQ2d 1346, 1348 (TTAB 2007), the TTAB considered the acceptability of web site pages as specimens of use. The specimens were deemed to be mere advertising. Applicant contended that the web site pages were displays associated with its goods which were tools, cutting inserts, and component parts. These were highly specialized industrial products. The Board found that “customers would need to consider technical information about the products prior to placing an order, and may very well need technical assistance when purchasing these products. These are not products that can be ordered from a web page by clicking on an image of the product to add it to a shopping cart for checkout.” The case turned on the question of whether or not a Customer Service number on the web site page constituted sufficient information about ordering the products. Applicant put into the record a declaration by its Director of Marketing explaining that customers ordered the applicant’s products through the Customer Service number where they also received technical information to help guide them in their purchases. Your applicant’s goods are custom made to order. Customers learn about options available in the Elora door line by reviewing catalogs and brochures, such as the specimen previously submitted, with distributors or representatives. This is how customers come to associate the applicant’s goods with the trademark. In the applicant’s catalogs and brochures, one finds ample pictures of the goods and the mark is prominently displayed. Thus, the catalogs and brochures are essential to the act of purchasing applicant’s doors. The catalogs and brochures are displays associated with the goods that are used at the point of sale when customers are asked by distributors and representatives to select from the myriad options available to them in the Elora door line. For the reasons discussed above, the specimen is a display associated with the goods at the point of purchase and is, therefore, an acceptable specimen of use when the nature of applicant’s goods, and the manner in which they are “ordered”, are considered. Acceptance of the specimen of use is requested. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_388810250-20151022103953429700_.__and_Specimens_for_5_of_Applicant_s_registrations__00036459_.pdf |
| CONVERTED PDF FILE(S) (15 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0005.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0006.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0007.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0008.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0009.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0010.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0011.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0012.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0013.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0014.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0015.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\863\578\86357872\xml16\ROA0016.JPG | |
| DESCRIPTION OF EVIDENCE FILE | TESS Records and specimens of use for other marks owned by applicant |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /David C. Purdue/ |
| SIGNATORY'S NAME | David C. Purdue |
| SIGNATORY'S POSITION | Attorney of record, Ohio bar member |
| SIGNATORY'S PHONE NUMBER | 419-531-0599 |
| DATE SIGNED | 10/22/2015 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Oct 22 10:42:46 EDT 2015 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 151022104246985143-863578 72-540c26e846ae64f996e597 9b8ab8efeb4a0305a16dfaba7 82289cbd07d67aa262c-N/A-N /A-20151022103953429700 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This responds to the official action dated September 19, 2015. “Registration is refused because the specimen in International Class 19 consists of advertising material and thus does not show the applied-for mark in use in commerce for the identified goods.” Applicant respectfully disagrees and submits, for the following reasons, that the previously submitted specimen of use is acceptable.
The goods are non-metal doors and they are custom made to order after a customer decides what the finished door will look like. In most cases, the “point of sale” is the place where the customer meets, face to face, with one of applicant’s representatives or one of applicant’s authorized distributors. During such meetings, the customer typically reviews the applicant’s brochures and catalogs and decisions are made about the specifications of the doors that will be custom made and installed in the customer’s home. On page 3 of the specimen, customers are encouraged to “Explore your many options with custom decorative glass, 30 paint colors and 12 stains, and selection of hardware and handlesets. You can truly design an entry door system to complement your home and your personality.”
For example, a customer would design a door by selecting various door options which appear on pages 7 through 11 of the specimen. This is where customers encounter the trademark and this is how they come to associate it with the goods.
(Previously, the applicant has submitted similar materials as specimens of use for its marks for windows and doors. With this response, the applicant is submitting TESS records for five of its registrations and the five specimens of use that were submitted in connection therewith. The applicant acknowledges that the PTO’s acceptance of such specimens of use in other cases is in no way binding in this case. However, it is worth noting that applicant’s catalogs have been deemed by the Patent and Trademark Office to be acceptable point of sale specimens of use in the past.)
Section 45 of the Trademark Act states, in pertinent part, that a mark is deemed to be in use in commerce
(1) on goods when –
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with goods or their sale…
In In re Valenite Inc., 84 USPQ2d 1346, 1348 (TTAB 2007), the TTAB considered the acceptability of web site pages as specimens of use. The specimens were deemed to be mere advertising. Applicant contended that the web site pages were displays associated with its goods which were tools, cutting inserts, and component parts. These were highly specialized industrial products.
The Board found that “customers would need to consider technical information about the products prior to placing an order, and may very well need technical assistance when purchasing these products. These are not products that can be ordered from a web page by clicking on an image of the product to add it to a shopping cart for checkout.” The case turned on the question of whether or not a Customer Service number on the web site page constituted sufficient information about ordering the products. Applicant put into the record a declaration by its Director of Marketing explaining that customers ordered the applicant’s products through the Customer Service number where they also received technical information to help guide them in their purchases.
Your applicant’s goods are custom made to order. Customers learn about options available in the Elora door line by reviewing catalogs and brochures, such as the specimen previously submitted, with distributors or representatives. This is how customers come to associate the applicant’s goods with the trademark. In the applicant’s catalogs and brochures, one finds ample pictures of the goods and the mark is prominently displayed. Thus, the catalogs and brochures are essential to the act of purchasing applicant’s doors. The catalogs and brochures are displays associated with the goods that are used at the point of sale when customers are asked by distributors and representatives to select from the myriad options available to them in the Elora door line.
For the reasons discussed above, the specimen is a display associated with the goods at the point of purchase and is, therefore, an acceptable specimen of use when the nature of applicant’s goods, and the manner in which they are “ordered”, are considered. Acceptance of the specimen of use is requested.
