| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87468232 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (current) | |
| MARK FILE NAME | http://uspto.report/TM/87468232/mark.png |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) blue, and white is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of trade dress of the product packaging which forms into a box featuring, along the length and width of the box, a blue wave on a white background with a single blue line along the wave contour resembling both the surf of a wave as well as snow-capped mountains. The horizontal and vertical lines on the top, bottom, sides, and flaps are intended to show the positioning of the mark and are not part of the mark. |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT17\IMAGEOUT 17\874\682\87468232\xml7\ ROA0002.JPG |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR MARK | YES |
| COLOR(S) CLAIMED (If applicable) |
The color(s) blue and white is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of trade dress of the product packaging which forms into a box featuring, along the length and width of the box, a blue wave on a white background with a single blue line along the wave contour resembling both the surf of a wave as well as snow-capped mountains. The horizontal and vertical lines on the top, bottom, sides, and flaps are intended to show the positioning of the mark and are not part of the mark. |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 755 x 310 |
| ARGUMENT(S) | |
| Serial Number: 87468232 Applicant: Arctic Fisheries Ltd. Examining Attorney: Deirdre G. Robertson, L.O. 111 THE MARK HAS ACQUIRED DISTINCTIVENESS AS DEMONSTRATED BY APPLICANT'S SUBSTANTIALLY EXCLUSIVE AND CONTINUOUS USE AS WELL APPLICANT'S SUBSTANTIAL REVENUES GENERATED IN CONNECTION WITH THE USE OF THE MARK IN COMMERCE. In an office action dated June 8, 2017, the examining attorney issued an initial refusal asserting the applied-for trade dress is ornamental, and therefore unregistrable pursuant to Lanham Act Sections 1, 2, and 45, 15 U.S.C. Sections 1051-1052, 1127. However, as demonstrated herein, Applicant's mark has acquired distinctiveness through its long term use of the mark in commerce in connection with the goods, and Applicant's significant sales in connection with the goods. I. APPLICANT HAS CONTINUOUSLY AND EXCLUSIVELY USED THE MARK IN COMMERCE FOR 19 YEARS. Proof of substantially exclusive and continuous use of a mark for five years prior to the date on which a claim of distinctiveness is made is prima facie evidence that the mark has acquired distinctiveness. See Lanham Act Section 2(f), 15 U.S.C. Section 1052(f). Applicant has used the mark in commerce in connection with frozen seafood and processed seafood for human consumption since as early December 1, 1998. Applicant's use has been substantially continuous and exclusive for 19 years, and such use is prima facie evidence of the mark's acquired distinctiveness. II. APPLICANT HAS GENERATED OVER $485 MILLION IN SALES THROUGH THE USE OF THE MARK IN COMMERCE. Further evidence of acquired distinctiveness may include advertising expenditures or sales success. See In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332, 1336 (Fed.Cir. 2015). Applicant's use of the mark garnered significant sales success totaling in excess of $485 million. Such sales success is demonstrative of the mark's acquired distinctiveness. CONCLUSION For the foregoing reasons, while the mark may be perceived as merely ornamental, Applicant's substantially continuous and exclusive use of the mark, combined with the substantial revenues generated in connection with the mark, demonstrate the mark has acquired distinctiveness. As such, the mark is properly registrable on the principal register, and should proceed to publication in the Official Gazette. | |
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_471718252-20170613113102464354_._ArcticFisheries_TradeDress_ROA.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\874\682\87468232\xml7\ROA0003.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\874\682\87468232\xml7\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_471718252-20170613113102464354_._2_f_DistinctivenessDeclaration.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\874\682\87468232\xml7\ROA0005.JPG |
| DESCRIPTION OF EVIDENCE FILE | Applicant's declaration of continuous and exclusive use for 5 years preceding the claim of distinctiveness. |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /adam kotok/ |
| SIGNATORY'S NAME | Adam Kotok |
| SIGNATORY'S POSITION | Attorney of record, New York bar member |
| SIGNATORY'S PHONE NUMBER | 914.274.8282 |
| DATE SIGNED | 06/13/2017 |
| RESPONSE SIGNATURE | /adam kotok/ |
| SIGNATORY'S NAME | Adam Kotok |
| SIGNATORY'S POSITION | Attorney of record, New York bar member |
| SIGNATORY'S PHONE NUMBER | 914.274.8282 |
| DATE SIGNED | 06/13/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jun 13 11:54:56 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 170613115456307036-874682 32-59049a767f2119aa9ba134 0f6fbbad01abd9dbb2ffd9e84 30af2b148f2bb4a75ae7-N/A- N/A-20170613113102464354 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
