UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 1/15/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, applicant should note the following issues with this application:

 

(1)   Inquiry as to whether the applied-for mark is a repeating pattern used on a variety of goods;

 

(2)   If the applied-for mark does consist of a repeating pattern, then registration is refused on the ground that applicant is seeking registration of more than one more; and

 

(3)   The description of the mark must be amended to clarify the nature of the mark.

 

Applicant must respond timely and completely to these three issues. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

INQUIRY AS TO THE NATURE OF THE APPLIED-FOR MARK

 

To permit proper examination of the application, applicant must submit additional information about the goods. See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).

 

Specifically, it is unclear from the drawing and the mark description whether or not the applicant’s mark is a “repeating pattern” mark. A repeating-pattern mark is any mark composed of a single repeated element or a repeated combination of designs, numbers, letters, or other characters, forming a pattern that is displayed on the surface of goods or their product packaging. The pattern may appear over the entire surface of the relevant item or on just a portion of it. In a repeating-pattern mark, the repetition of the mark’s elements is a feature of the mark, which must be appropriately specified in the application. 

 

As such, the applicant must state for the record whether or not the checkerboard design is intended to be a repeating pattern mark. 

 

Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d at 1457-58.

 

ADVISORY: Because of the ornamental and typically nondistinctive nature of repeating patterns, consumers often do not perceive these patterns as source indicators, in which case they may not be registered on the Principal Register without proof of acquired distinctiveness. See TMEP §§1202.19 et seq. Therefore, applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of the goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-52, 1127; see In re David Crystal, Inc., 296 F.2d 771, 773, 132 USPQ 1, 2 (C.C.P.A. 1961); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454-55 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.

 

SECTIONS 1 & 45 REFUSAL – SWATCH DRAWING – MORE THAN ONE MARK

 

If the mark is a repeating pattern mark, then registration is refused because applicant seeks registration of more than one mark in its application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §§1202.19(g)-(g)(ii); 1214.01. An application must be limited to only one mark. 37 C.F.R. §2.52; TMEP §§807.01, 1214.01; see 15 U.S.C. §1051(a)(1), (b)(1); In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999); TMEP §§1202.19(g)-(g)(ii).

 

In the present case, the mark drawing consists of a “swatch” showing the applied-for repeating-pattern mark within a rectangle, rather than depicting the pattern’s particular placement on an item.  Generally, swatch-type drawings do not adequately depict the nature of the mark for which registration is sought because the impression created by a repeating pattern may change depending on the nature of the pattern, the type of item the pattern appears on, the particular placement of the pattern on that item, and the size and scale of the elements in the pattern as applied. Accordingly, these swatch-type drawings could encompass multiple versions of the mark, each of which may convey a different commercial impression. See TMEP §1202.19(a)(iii).    

 

A swatch-type drawing is acceptable only when an applicant has submitted sufficient evidence to establish that the mark is applied to various items but that these various uses of the repeating pattern nonetheless create the same commercial impression. In the absence of this evidentiary showing, swatch-type drawings of repeating patterns are deemed to encompass more than one mark. See TMEP §§1202.19(a)(iii), 1202.19(g)-(g)(ii); cf. In re Upper Deck Co., 59 USPQ2d 1688, 1689-91 (TTAB 2001) (holding unregistrable a mark comprising a hologram on a trading card when the hologram may have a myriad of shapes, sizes, contents and the like); In re Elvis Presley Enters., 50 USPQ2d 1632, 1633-34 (TTAB 1999) (holding unregistrable a mark comprising all likenesses and images of one particular person in all possible manners of presentation without limitation as to age, manner of dress, or pose).

 

Here, applicant has indicated in the description of the mark that the mark “consists of a checkerboard pattern.” Applicant is seeking registration of the pattern in connection with various bags and clothing items. These goods may be offered in various shapes and sizes, meaning the pattern that appears on applicant’s “footwear,” for example, is likely to differ from the pattern that appears on applicant’s “handbags.” Thus, each use of the pattern on a different good would represent a different version of the mark that may convey a different commercial impression than another use. Consequently, applicant has submitted a swatch-type mark drawing that encompasses more than one mark, but applicant has not provided evidence that the mark, as applied to the various identified goods, would create the same commercial impression. Therefore, registration is refused under Trademark Act Sections 1 and 45.

 

Applicant may respond by satisfying one of the following response options, as appropriate:

 

(1)   Amend the mark drawing to depict the repeating-pattern mark as it appears on a particular item encompassed by the identification of goods, and amend the mark description accordingly. The drawing must show the precise placement of the pattern on the particular item, which may be on only a portion of the item or over the entire surface of the item. The shape of the item must appear in broken lines to indicate that it is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08. The mark description must indicate that the mark consists of a pattern, specify how the pattern will appear on the relevant item, and describe any portions of the mark that are shown in broken lines and thus are not claimed as a feature of the mark. See TMEP §§807.08, 808.02. If necessary, amend the identification to delete goods that are inconsistent with the item appearing in the amended mark drawing.  See TMEP §1202.19(f). If the repeating pattern will be applied to multiple goods, a drawing showing the pattern’s placement on one of the goods is appropriate if all of the identified goods are similar in form and function, and the mark will appear in a similar manner on all of the goods.  

 

(2)   Submit evidence that (a) the applied-for mark is used, or will be used, in various ways or on a variety of items, but (b) it will nonetheless be perceived as a source indicator and create the same commercial impression across all uses. The evidence of variable use referred to in (a) above need not show every use of the repeated pattern on the relevant items, but it should establish that the use of the mark in connection with the identified goods is so varied that a single depiction of the mark on a particular item would not accurately reflect the nature of the mark. This may include declarations, marketing materials, and other similar matter. The evidence as to the commercial impression referred to in (b) above must be substantial and must establish that the pattern will be perceived as a source indicator and create the same commercial impression in the minds of consumers.  Relevant evidence may include consumer declarations; advertisements or other materials showing various instances of the pattern being used together in one place (e.g., a single advertisement that shows the pattern being used in various ways on various goods, but nonetheless projecting the same commercial impression); sales figures relevant to the various items featuring the pattern; and any other evidence of the applicant’s efforts to promote the various uses of the repeating pattern as a single source indicator for the relevant goods or services, including “look-for”-type evidence. See TMEP §1202.19(a)(iii).

 

FOR MORE INFORMATION REGARDING REPEATING-PATTERN MARKS: For further information concerning this refusal, including examples of repeating-pattern marks and drawings thereof, please consult TMEP §§1202.19-.19(k).

 

DESCRIPTION OF MARK AMENDMENT REQUIRED

 

Applicant must submit an amended description of the mark because the current one uses vague language that does not accurately describe the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Specifically, the mark description notes that the mark consists of a “checkerboard pattern arranged in a rectangular form”; however, it is not clear whether the rectangular arrangement shown in the drawing displays the entirety of the mark or if the drawing is merely one part of a larger repeating pattern. Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02.   

 

The following description is suggested if the drawing consists of a repeating pattern:

 

The mark consists of a repeating checkerboard pattern arranged in a rectangular form.

 

However, if the drawing shows the entirety of the mark, and the mark does not consist of a repeating pattern, then the following mark description is suggested:

 

The mark consists of non-repeating checkerboard pattern consisting of three rows arranged in a rectangular form, with the top and bottom rows consisting of four shaded and three non-shaded squares, and the middle row consisting of three shaded and four non-shaded squares.

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must:

 

(1)   Clarify the nature of the mark sought to be registered;

 

(2)   Respond to the repeating pattern refusal (if the mark consists of a repeating pattern); and

 

(3)   Amend the mark description to clarify the nature of the mark.

 

Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

TO RESPOND TO THIS LETTER: Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response using the “Response to Examining Attorney Office Action” form. 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. All informal communications relevant to this application will be placed in the official application record.

 

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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.23(c); TMEP §820.04. However, in certain situations, TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.

 

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.

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/15/2019 FOR U.S. APPLICATION SERIAL NO. 88206513

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 1/15/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.