To: | Donna Knows LLC (ralph@kranesmith.com) |
Subject: | U.S. Trademark Application Serial No. 88223936 - CRAY - N/A |
Sent: | July 31, 2019 06:57:52 AM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88223936
Mark: CRAY
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Correspondence Address:
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Applicant: Donna Knows LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 31, 2019
The statement of use has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTIONS 1, 2 AND 45 REFUSAL – MERELY ORNAMENTAL
Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); TMEP §§904.07(b), 1202.03 et seq.
The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).
With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. See TMEP §1202.03(a). Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. See In re Pro-Line Corp., 28 USPQ2d at 1142; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i)-(ii).
In this case, the submitted specimen shows the applied-for mark, “CRAY”, located directly on the upper-center area of the front of the shir, where ornamental elements often appear. See TMEP §1202.03(a), (b). Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. Lastly, the applied-for mark appears to be wording that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.
Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce prior to the expiration of the deadline for filing a statement of use and that shows proper trademark use for the identified goods in International Class 25. Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
Applicant may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
How to respond. Click to file a response to this nonfinal Office action
/Karen Sulita Dindayal/
Examining Attorney
Law Office 117
571-272-8208
karen.dindayal@uspto.gov
RESPONSE GUIDANCE