To: | E. & J. Gallo Winery (tm.group@ejgallo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86634875 - OJO DEL SOL TEQUILA - USNAOJ-002-e |
Sent: | 6/19/2015 6:32:47 AM |
Sent As: | ECOM118@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86634875
MARK: OJO DEL SOL TEQUILA
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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: E. & J. Gallo Winery
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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: 6/19/2015
The referenced application 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.
Search Results
Prior-Pending Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Substitute Drawing Required
Applicant disclaimed the following matter in the applied-for product packaging mark: “the bottle cap”and depicted this matter on the drawing in solid lines.
Applicant’s disclaimer and drawing are not acceptable because applicant has disclaimed and depicted in solid lines nondistinctive elements that are incapable of functioning as a mark. See TMEP §1202.02(c)(i)(B), (c)(iii)(B). Applicant must withdraw the disclaimer because these elements are not part of the mark and disclaimers apply only to matter that is a part of the mark. See TMEP §1202.02(c)(i)(B), (c)(iii)(B); cf. Traffix Devices v. Mktg. Displays, 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983). Further, nondistinctive elements of a product packaging mark that are incapable of functioning as a mark are generally unregistrable and required to be shown in broken or dotted lines on the drawing. See 15 U.S.C. §§1051-1052, 1127; 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); TMEP §1202.02(c)(i)(B).
Specifically, the following feature is nondistinctive and incapable of functioning as a mark: “the bottle cap.” This feature is nondistinctive and does not function as a mark because the cap is the same or substantially similar to the designs of competitors’ packaging and consumers are accustomed to seeing similar packaging from a variety of providers.
Therefore, applicant must (1) withdraw the disclaimer, (2) provide a new drawing of the mark showing the nondistinctive elements in broken or dotted lines, and (3) provide an amended mark description that references the matter in broken or dotted lines. See TMEP §1202.02(c)(i)(B), (c)(ii), (c)(iii)(B). Applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable. TMEP §1202.02(c)(i)(B).
Applicant may submit the following mark description, if accurate:
The mark consists of athree-dimensional configuration of a clear bottle for the goods, namely, a bottle with a wide top tapering off to a smaller base, a short rounded neck covered by a neck label, and a curved casket shaped middle portion of the bottle bearing a label, and a tan bottle cap. Imprinted on the bottle in its bottom quarter is a design of an agave leaf. The neck label is turquoise blue, and is bordered by a silver and turquoise geometric design. In the middle of the neck label is a circle in which appears a design of a silver agave leaf. A silver geometric design is sprinkled throughout the neck label. The label covering the middle of the bottle contains a fanciful geometric design of the sun, with multiple layers of turquoise and silver, surrounded by a white circle containing 3 lines of light turquoise dotted lines. The white circle surrounding the geometric sun design fades into a rectangular white label directly underneath the circle, which contains the word OJO in stylized big black capital letters, and the smaller words DEL SOL in black directly underneath, and the smaller word TEQUILA in black directly underneath DEL SOL. Underneath these words are two bars of a black and white geometric design, and underneath the bars with black lines to the right and left is the design of a black agave leaf. The broken lines depicting the bottle cap indicate placement of the mark on the goods and are not part of the mark.
See TMEP §1202.02(c)(ii).
Color Claim
Based on the foregoing requirements for a complete color claim, applicant must provide a color claim that references all of the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
The following color claim is suggested: “The colors turquoise blue, silver, tan, white and black are claimed as a feature of the mark.”
Response
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Ronald McMorrow/
Examining Attorney
Law Office 118
571-272-9306
ronald.mcmorrow@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.