| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88042553 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION (current) | |
| MARK FILE NAME | http://uspto.report/TM/88042553/mark.png |
| LITERAL ELEMENT | GUERRERO |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) red, green, yellow and white is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of a circle design the outer perimeter of which consists of four bands - one yellow, one red, one yellow and one green; in the upper half of the interior circle is a depiction of a piece of wheat; the lower half of the circle is yellow; across the middle of the circle is a white banner outlined in green with a green stripe across the top and a green stripe across the bottom with the word GUERRERO in green stylized letters; across the bottom of the circle is a yellow banner outlined in green with a green stripe across the top and a green stripe across the bottom. |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT17\IMAGEOUT 17\880\425\88042553\xml6\ ROA0002.JPG |
| LITERAL ELEMENT | GUERRERO |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR MARK | YES |
| COLOR(S) CLAIMED (If applicable) |
The color(s) red, yellow, green, white, and brown is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of a stylized circle design the outer perimeter of which consists of four bands - one yellow, one red, one yellow and one green; in the upper half of the interior of the circle is a depiction of a stylized brown piece of wheat set against a yellow background; the lower half of the interior circle is yellow; across the middle of the circle is a white banner outlined in green with a green stripe across the top and a green stripe across the bottom and the word GUERRERO in green stylized letters; across the bottom of the circle is a yellow banner outlined in green with a green stripe across the top and a green stripe across the bottom. |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 624 x 599 |
| ARGUMENT(S) | |
|
This is in reply to the Office Action wherein the Trademark Examining Attorney objected to the drawing and specimen as well as to the mark description and color claim.
The mark of the current application was the subject of Registration No. 3792760 (copy attached), which has since been canceled pursuant to Section 8. The failure to file the use maintenance declaration and specimen of use was inadvertent. As will be seen, the drawing of that Registration is identical to the drawing of the subject application. Also, attached is the specimen of use filed with the application which resulted in Registration No. 3792760. The mark in this specimen of use is identical to the mark in the specimen of use filed with the subject application. When the earlier application was examined, the mark in the drawing was accepted as a “substantially exact representation of the mark” on the specimen.
There has been no change in the requirements for an acceptable drawing. Accordingly, the drawing should be accepted in the subject application.
Nevertheless, applicant has filed a new drawing, and submits that it is acceptable.
The Trademark Examining Attorney has objected that the mark on the specimen does not match that in the drawing. The Trademark Examining Attorney contends that the mark shown in the specimen is different from the mark shown in the drawing and that conforming the two would require material alteration to the mark shown in the drawing and is therefore not permitted under Trademark Rule 2.72(a)(2). The Trademark Examining Attorney contends the mark in the specimen has “a more realistically stylized series of black and brown grain against a brown background,” whereas the drawing displays the mark “as having a more cartoonish stylized depiction of grain against a yellow background.”
The differences detected by the Trademark Examining Attorney fall far short of those needed to constitute a material alteration.
The issue of material alteration also arises in the context of tacking and the same test is applied: does the new mark create the same commercial impression as the old. Minor stylistic changes in a word and design mark have been held not to change the commercial impression. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015). Jack Wolfskin considered material alteration in the context of a claim of abandonment, when the mark used differed from the mark as registered. As the Federal Circuit held: The fundamental inquiry is whether the alteration is such that “third parties would not expect that [the] presently used mark to be used under and protected by the registration.”
The Supreme Court, addressing the issue of whether the “same continuing commercial impression” is a question of law for the court, or fact for the jury, held that the test relies upon an ordinary consumer’s understanding of the impression that a mark conveys. Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 910, 11 (2015). “The commercial impression that a mark conveys must be viewed through the eyes of a consumer.” Hana Fin., Inc., citing DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F. 3d 1247, 1253 (Fed. Cir. 2012).
Comparing the mark shown in the drawing to the mark shown in the specimen, it is clear that to the ordinary consumer both create the same commercial impression. To maintain that the slight differences in the way the piece of wheat is depicted and the difference in color of the background to the piece of wheat would cause consumers of tortillas to think that the two marks indicate different source of goods is not credible. It’s unlikely the consumers would even notice the difference. The identity of the mark is created by the dominant word mark GUERRERO and by the stylized circle design comparing four differently colored bands. These elements are common to both the mark of the drawing and the mark of the specimen. The retention of these dominant elements show that the commercial impression of the two versions of the mark create the same commercial impression and the drawing can be amended to conform to the specimen without a “material alteration.”
As a general rule, the addition of any element that would require a further search will constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986). However, while the question of whether a new search would be required is a factor to be considered in deciding whether an amendment would materially alter a mark, it is not necessarily the determining factor. In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218-19 (TTAB 2000) ; In re Vienna Sausage Mfg. Co., 16 USPQ 2d 2044, 2047 (TTAB 1990).
While applicant is of the opinion that the trademark drawing submitted with its application should not be refused, applicant has submitted a new drawing. It is submitted that the new drawing is acceptable and does not materially alter the mark in the original drawing. The new drawing also depicts the mark as shown in the specimen of use filed with the application. The new drawing would not require a new search.
Applicant has amended the color claim and description of the mark.
Color claim: “The colors red, yellow, green, white, and brown are claimed as a feature of the mark.”
Description: “The mark consists of a stylized circle design the outer perimeter of which consists of four bands - one yellow, one red, one yellow and one green; in the upper half of the interior of the circle is a depiction of a stylized brown piece of wheat set against a yellow background; the lower half of the interior circle is yellow; across the middle of the circle is a white banner outlined in green with a green stripe across the top and a green stripe across the bottom and the word GUERRERO in green stylized letters; across the bottom of the circle is a yellow banner outlined in green with a green stripe across the top and a green stripe across the bottom.”
Favorable reconsideration of this application and acceptance of same for publication is requested. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7218067103-20190219141314572652_._091001_package_3792760.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\880\425\88042553\xml6\ROA0003.JPG |
| ORIGINAL PDF FILE | evi_7218067103-20190219141314572652_._100525_reg_3792760.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\880\425\88042553\xml6\ROA0004.JPG |
| DESCRIPTION OF EVIDENCE FILE | copy of registration No. 3792760 and specimen filed with application for that mark as referred to in argument |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /johnmcone/ |
| SIGNATORY'S NAME | John M. Cone |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 972-826-4436 |
| DATE SIGNED | 02/19/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 19 14:19:56 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0190219141956286873-88042 553-620829b88a672a36767be b09aba2136ef654fa4bdfa91c 16baf48ff2f5f6e39ca-N/A-N /A-20190219141314572652 |
| 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 09/20/2020) |
This is in reply to the Office Action wherein the Trademark Examining Attorney objected to the drawing and specimen as well as to the mark description and color claim.
The mark of the current application was the subject of Registration No. 3792760 (copy attached), which has since been canceled pursuant to Section 8. The failure to file the use maintenance declaration and specimen of use was inadvertent. As will be seen, the drawing of that Registration is identical to the drawing of the subject application. Also, attached is the specimen of use filed with the application which resulted in Registration No. 3792760. The mark in this specimen of use is identical to the mark in the specimen of use filed with the subject application. When the earlier application was examined, the mark in the drawing was accepted as a “substantially exact representation of the mark” on the specimen.
There has been no change in the requirements for an acceptable drawing. Accordingly, the drawing should be accepted in the subject application.
Nevertheless, applicant has filed a new drawing, and submits that it is acceptable.
The Trademark Examining Attorney has objected that the mark on the specimen does not match that in the drawing. The Trademark Examining Attorney contends that the mark shown in the specimen is different from the mark shown in the drawing and that conforming the two would require material alteration to the mark shown in the drawing and is therefore not permitted under Trademark Rule 2.72(a)(2). The Trademark Examining Attorney contends the mark in the specimen has “a more realistically stylized series of black and brown grain against a brown background,” whereas the drawing displays the mark “as having a more cartoonish stylized depiction of grain against a yellow background.”
The differences detected by the Trademark Examining Attorney fall far short of those needed to constitute a material alteration.
The issue of material alteration also arises in the context of tacking and the same test is applied: does the new mark create the same commercial impression as the old. Minor stylistic changes in a word and design mark have been held not to change the commercial impression. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015). Jack Wolfskin considered material alteration in the context of a claim of abandonment, when the mark used differed from the mark as registered. As the Federal Circuit held: The fundamental inquiry is whether the alteration is such that “third parties would not expect that [the] presently used mark to be used under and protected by the registration.”
The Supreme Court, addressing the issue of whether the “same continuing commercial impression” is a question of law for the court, or fact for the jury, held that the test relies upon an ordinary consumer’s understanding of the impression that a mark conveys. Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 910, 11 (2015). “The commercial impression that a mark conveys must be viewed through the eyes of a consumer.” Hana Fin., Inc., citing DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F. 3d 1247, 1253 (Fed. Cir. 2012).
Comparing the mark shown in the drawing to the mark shown in the specimen, it is clear that to the ordinary consumer both create the same commercial impression. To maintain that the slight differences in the way the piece of wheat is depicted and the difference in color of the background to the piece of wheat would cause consumers of tortillas to think that the two marks indicate different source of goods is not credible. It’s unlikely the consumers would even notice the difference. The identity of the mark is created by the dominant word mark GUERRERO and by the stylized circle design comparing four differently colored bands. These elements are common to both the mark of the drawing and the mark of the specimen. The retention of these dominant elements show that the commercial impression of the two versions of the mark create the same commercial impression and the drawing can be amended to conform to the specimen without a “material alteration.”
As a general rule, the addition of any element that would require a further search will constitute a material alteration. In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986). However, while the question of whether a new search would be required is a factor to be considered in deciding whether an amendment would materially alter a mark, it is not necessarily the determining factor. In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218-19 (TTAB 2000) ; In re Vienna Sausage Mfg. Co., 16 USPQ 2d 2044, 2047 (TTAB 1990).
While applicant is of the opinion that the trademark drawing submitted with its application should not be refused, applicant has submitted a new drawing. It is submitted that the new drawing is acceptable and does not materially alter the mark in the original drawing. The new drawing also depicts the mark as shown in the specimen of use filed with the application. The new drawing would not require a new search.
Applicant has amended the color claim and description of the mark.
Color claim: “The colors red, yellow, green, white, and brown are claimed as a feature of the mark.”
Description: “The mark consists of a stylized circle design the outer perimeter of which consists of four bands - one yellow, one red, one yellow and one green; in the upper half of the interior of the circle is a depiction of a stylized brown piece of wheat set against a yellow background; the lower half of the interior circle is yellow; across the middle of the circle is a white banner outlined in green with a green stripe across the top and a green stripe across the bottom and the word GUERRERO in green stylized letters; across the bottom of the circle is a yellow banner outlined in green with a green stripe across the top and a green stripe across the bottom.”
Favorable reconsideration of this application and acceptance of same for publication is requested.
