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: 3/11/2019

 

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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).

 

SUMMARY OF ISSUES:

• Prior-Filed Application Advisory
• Non-Distinctive Product Packaging Refusal
• New Drawing and Mark Description Required
• Amended Color Claim Required
• Identification of Goods
• Entity Clarification Required
• Foreign Registration Required

 

PRIOR-FILED APPLICATION ADVISORY

 

The filing date of pending U.S. Application Serial No. 87258477 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

NON-DISTINCTIVE PRODUCT PACKAGING REFUSAL

 

Registration is refused because the applied-for mark consists of a nondistinctive configuration of packaging for the goods that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Mogen David Wine Corp., 372 F.2d 539, 540-42, 152 USPQ 593, 594-96 (C.C.P.A. 1967); In re J. Kinderman & Sons, Inc., 46 USPQ2d 1253, 1254-55 (TTAB 1998); TMEP §1202.02(b)(ii).

 

The following factors are considered when determining the inherent distinctiveness of configuration marks comprising product packaging:

 

(1)       Whether the applied-for mark is a “common” basic shape or design;

 

(2)       Whether the applied-for mark is unique or unusual in the field in which it is used;

 

(3)       Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; and

 

(4)       Whether the applied-for mark is incapable of creating a commercial impression distinct from the accompanying words

 

In re Pacer Tech., 338 F.3d 1348, 1350, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003) (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977)); TMEP §1202.02(b)(ii).  Any one of these factors, by itself, may be determinative as to whether the mark is inherently distinctive.  See In re Chippendales USA, Inc., 622 F.3d 1346, 1355, 96 USPQ2d 1681, 1687 (Fed. Cir. 2010); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2028 (TTAB 2010).

 

In this case, the applied-for mark is not inherently distinctive because it shows a faceted perfume bottle, which, as shown by the attached evidence, is similar to other perfume containers currently available to consumers.

·       http://www.chanel.com/us/fragrance/p/105510/n5-leau-eau-de-toilette-spray/

·       http://www.zgallerie.com/p-19409-priscilla-perfume-bottle.aspx

·       http://www.zgallerie.com/p-20849-perfume-bottle-set.aspx

 

In response to this refusal, applicant may assert a claim that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f).  To support this claim of acquired distinctiveness, applicant may submit evidence of “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  However, “[t]he evidence must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.”  In re Change Wind Corp., 123 USPQ2d at 1467 (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982)). 

 

To establish acquired distinctiveness, an applicant may rely only on use in commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999).

 

As an alternative to submitting evidence of acquired distinctiveness, applicant may amend the application to the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.02(b)(ii).

 

NEW DRAWING REQUIRED

 

Applicant depicted the following matter in the applied-for product packaging mark in the drawing using solid lines:  the base of the bottle’s pump, the interior liquid container, and the base of the bottle.  However, the drawing are not acceptable because this particular matter is incapable of functioning as a mark and is not considered part of the mark.  See TMEP §1202.02(c)(i)(B), (c)(iii)(B). 

 

This type of nondistinctive matter is 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 features are nondistinctive and incapable of functioning as a mark:   the base of the bottle’s pump, the interior liquid container, and the base of the bottle. These features are nondistinctive and do not function as a mark because such elements are so common in the industry for such packaging and consumers are accustomed to seeing such elements on similar packaging from a variety of providers. 

 

Accordingly, applicant must provide the following:  (1) a new drawing with the nondistinctive elements in broken or dotted lines, and (2) an amended description that references the matter in broken or dotted lines.  See 37 C.F.R. §2.52(b)(4); 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 description, if accurate: 

 

The mark consists of the three-dimensional configuration of a transparent bottle for the goods with the phrase "GALA" in white located on the front of said bottle. The bottle has a multi-faceted, rectangular oblong stopper with a flat top and bottom and rounded edges. The base of the stopper is silver. The container consists of a rounded top and a hexagonal bottom, with six carved out facets, each with a rounded arch top and a straight bottom. There is liquid appearing in the color pink featured inside the internal container of the bottle. The cap of the bottle, the internal container, and the base of the bottle are shown in dotted lines, are merely used to show the placement of the mark, and are not claimed as part of the mark.

 

See TMEP §1202.02(c)(ii).

 

AMENDED MARK DESCRIPTION AND COLOR CLAIM REQUIRED

 

Although applicant submitted a color drawing with a description referencing colors in the mark, applicant did not provide a list of all the colors claimed as a feature of the mark, known as a color claim.  Therefore, applicant must provide this required color claim.  37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq. 

 

The examining attorney suggests the following:

 

The colors pink, silver, and white are claimed as a feature of the mark.

 

IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable because portions are indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.06

 

In Class 003, for example, applicant must specify the exact “fragrance products” and “cosmetic products” claimed, such as “room fragrances” or “pills that induce bronzing of the skin.” Further, for proper classification, applicant must specify that the “toiletries” are non-medicated and also state the type of soaps provided.

 

SUGGESTED AMENDMENT

 

Applicant may substitute the following wording, if accurate:

 

Class 003 -      Perfumery; perfumes; toilet water; scented linen water; perfumed waters; Eau de Cologne; fragrance products for personal use, namely, {specify products, e.g., body spray used as a personal deodorant and as fragrance, fragrances, room fragrances, pet fragrances, fragranced facial moisturizer}; perfumed extracts for perfume; essential oils; personal deodorants; cosmetic products, namely, {specify products or use, e.g., in the form of aerosols for skincare, taken orally, namely, pills that induce bronzing of the skin, cosmetics}; cosmetic preparations for skin scare; oils for toiletry purposes; cleansing milk for toilet purposes; toiletries, namely, non-medicated toiletry preparations; talcum powder for toilet use; oils for cosmetic purposes for the bath; cosmetic preparations for baths; {specify type, e.g., bar, toilet, shaving, skin, beauty} soaps; shampoos; hair lotions

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

ENTITY CLARIFICATION REQUIRED

 

The application identifies applicant as a “Société par Actions Simplifiée à Associé Unique,” which is not acceptable as an entity designation in the United States because there is no clear U.S. equivalent legal entity and the entity designation does not appear in Appendix D of the Trademark Manual of Examining Procedure . See TMEP §803.03(i). Applicant must indicate the U.S. equivalent of its legal entity or provide a description of the nature of the foreign entity. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i).

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies an intent to perfect under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirements in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

 

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 $125 per 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 or e-mail without incurring this additional fee.

 

If the applicant has any questions or requires assistance in responding to this Office Action, please telephone or email the assigned examining attorney.

 

 

/Cori Stedman/

Examining Attorney

Law Office 123

(571) 270-5090

cori.stedman@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/11/2019 FOR U.S. APPLICATION SERIAL NO. 88212584

 

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 3/11/2019 (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.