| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86573220 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86573220/large |
| LITERAL ELEMENT | WOW! |
| 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 is in response to the outstanding office action. Attorney for the applicant discussed the office action with the examining attorney August 10, 2015 and sent a follow up e-mail with requested information (also provided below). Examining attorney did not respond.
The application is refused as failing to function as trademarks because the term is allegedly commonly used in the marketplace. The Trademark Office has consistently been allowing “wow” marks in a variety of goods and service fields. For all of these fields, the fact that low prices is a feature could be possible, yet the Office allowed the marks. Please see the non-exhaustive list of live registrations for the term “wow,” including those with an exclamation point, below. Please note that many of these registrations are recently-issued.
Reg. No. Mark Goods/Services 4287795 WOW retail artwork 4171050 WOW breath freshener 4138399 WOW! pre-paid calling cards 4376977 WOW! entertainment services 4266538 WOW energy services 4771970 WOW exercise equipment 4630863 WOW water sports equipment 4627243 WOW water sports equipment 4625015 WOW cruise ship and travel services 4722088 WOW! advertising and promotional services 4540249 WOW gloves 4349592 WOW educational services
There are a number of additional “wow” marks not listed here and even more that include the term “wow” with another term. Notably, for many of those marks, it is the second term the Office found not distinctive and required disclaimer (i.e. WOW PLUMBING, WOW SEATING, WOW COTTON, WOW BARBEQUE).
Regarding the issue of whether the specimen matches the standard character drawing, "the mark shown in the drawing does not necessarily have to appear in the same font style, size or color as the mark shown in the specimen of use." TMEP 807.03(e). In this case, the swirly "O" in the middle of the mark does not change the meaning or overall commercial impression of the mark. The examining attorney has not shown consumers would read the swirled "O" as anything other an an "O," or that it would change the impression consumers would have of the mark.
Applicant request consistent treatment of these applications by the Office and publication of the application. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Susan B. Meyer/ |
| SIGNATORY'S NAME | Susan B. Meyer |
| SIGNATORY'S POSITION | Attorney of record, California bar member |
| SIGNATORY'S PHONE NUMBER | 619-230-7456 |
| DATE SIGNED | 11/24/2015 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Nov 24 11:11:40 EST 2015 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0151124111140510277-86573 220-54032588588599e4103f2 4d3bd85ef1d02fd6be9a4315c 151f114e8aff2431d-N/A-N/A -20151124110606898975 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This is in response to the outstanding office action. Attorney for the applicant discussed the office action with the examining attorney August 10, 2015 and sent a follow up e-mail with requested information (also provided below). Examining attorney did not respond.
The application is refused as failing to function as trademarks because the term is allegedly commonly used in the marketplace. The Trademark Office has consistently been allowing “wow” marks in a variety of goods and service fields. For all of these fields, the fact that low prices is a feature could be possible, yet the Office allowed the marks. Please see the non-exhaustive list of live registrations for the term “wow,” including those with an exclamation point, below. Please note that many of these registrations are recently-issued.
Reg. No. Mark Goods/Services
4287795 WOW retail artwork
4171050 WOW breath freshener
4138399 WOW! pre-paid calling cards
4376977 WOW! entertainment services
4266538 WOW energy services
4771970 WOW exercise equipment
4630863 WOW water sports equipment
4627243 WOW water sports equipment
4625015 WOW cruise ship and travel services
4722088 WOW! advertising and promotional services
4540249 WOW gloves
4349592 WOW educational services
There are a number of additional “wow” marks not listed here and even more that include the term “wow” with another term. Notably, for many of those marks, it is the second term the Office found not distinctive and required disclaimer (i.e. WOW PLUMBING, WOW SEATING, WOW COTTON, WOW BARBEQUE).
Regarding the issue of whether the specimen matches the standard character drawing, "the mark shown in the drawing does not necessarily have to appear in the same font style, size or color as the mark shown in the specimen of use." TMEP 807.03(e). In this case, the swirly "O" in the middle of the mark does not change the meaning or overall commercial impression of the mark. The examining attorney has not shown consumers would read the swirled "O" as anything other an an "O," or that it would change the impression consumers would have of the mark.
Applicant request consistent treatment of these applications by the Office and publication of the application.