| 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 | 88258149 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION (current) | |
| MARK FILE NAME | http://uspto.report/TM/88258149/mark.png |
| LITERAL ELEMENT | FSA SERVING THE LAW ENFORCEMENT COMMUNITY |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) red, blue, white and gray is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of A star with the top of the star in red, followed by a white brush stroke and then followed by the remainder of the star in blue. The star is followed by the letters "FSA". FSA is in blue except for the red paint brush swipe like image used for the horizontal element of the "A". Underneath the logo are the words "SERVING THE LAW ENFORCEMENT COMMUNITY" in gray. |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT17\IMAGEOUT 17\882\581\88258149\xml5\ ROA0002.JPG |
| LITERAL ELEMENT | FSA |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR MARK | YES |
| COLOR(S) CLAIMED (If applicable) |
The color(s) red, 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 of an incomplete star with the top of the star in red, followed by a white brush stroke and then followed by the remainder of the star in blue. The star is followed by the letters "FSA". FSA is in blue except for the red paint brush swipe-like image used for the horizontal element of the "A". |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 655 x 250 |
| ARGUMENT(S) | |
|
The Examining Attorney has objected to the specimen filed with the application on the ground that it does not show the entire mark as depicted in the drawing. In response, Applicant submits herewith an amended drawing to reflect the manner in which Applicant actually uses the mark, namely, to delete the highly descriptive wording “SERVING THE LAW ENFORCEMENT COMMUNITY.” Because the requested amendment does not materially alter the character of the mark sought to be registered, it is respectfully submitted that it should be permitted.
Rule 2.72(a) of the Trademark Rules of Practice specifically allows for amendments to drawings in applications provided that the proposed amendment does not materially alter the character of the mark originally sought to be registered. In determining whether a proposed amendment constitutes a material alteration of a mark, the focus is on whether the old and new forms of the mark create “essentially the same” commercial impression. In re Hacot-Colombier, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997); In re Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1989); Visa Int’l Service Ass’n v. Life Code Systems, 220 USPQ 740, 743 (TTAB 1983). In the Visa Int’l case, the Trademark Trial and Appeal Board set forth the following standard for determining whether an amendment is a material alteration of a mark:
The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.
Visa Int’l, 220 USPQ at 743-44. These guidelines are reiterated in Section 807.14 of the Trademark Manual of Examining Procedure. The Examining Attorney is allowed broad discretion in determining whether a mark would be materially altered by amendment and each case must be decided on its own merits.
Applicant is requesting amendment of the special form mark to delete the wording “SERVING THE LAW ENFORCEMENT COMMUNITY” which appears in very small lettering below the much more prominent stylized letters FSA and partial star design. The new form of the mark creates essentially the same commercial impression as the original mark. There has been no change in the dominant feature of the mark, i.e., the letters FSA and the incomplete star design. The wording being deleted is extremely small and consists of highly descriptive, informational matter that is not independently registrable or necessary to the significance or appearance of the mark. See In re Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974); TMEP 807.14(a). The removal of this matter would not require republication of the mark and thus is not material.
Applicant has also amended the description of the mark as required by the Examining Attorney, and to conform to the amended drawing. In view of the amendment to the mark, Applicant has not entered the required disclaimer of “SERVING THE LAW ENFORCEMENT COMMUNITY.”
In view of the foregoing, Applicant respectfully submits that the Examining Attorney should accept the amended drawing and approve the application for publication of the mark. If further questions remain, however, the Examining Attorney is invited to contact the undersigned by phone at 202-408-4040. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Christie Baty Hudgins/ |
| SIGNATORY'S NAME | Christie Baty Hudgins |
| SIGNATORY'S POSITION | Attorney of Record, DC Bar Member |
| SIGNATORY'S PHONE NUMBER | 202-408-4000 |
| DATE SIGNED | 05/06/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon May 06 10:14:30 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.X.X-2019 0506101430958629-88258149 -620abea76734fd12b752a195 c163f721b406fa8c18b135f1f 66ed5e31c1b8a-N/A-N/A-201 90506072458455846 |
| 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) |
The Examining Attorney has objected to the specimen filed with the application on the ground that it does not show the entire mark as depicted in the drawing. In response, Applicant submits herewith an amended drawing to reflect the manner in which Applicant actually uses the mark, namely, to delete the highly descriptive wording “SERVING THE LAW ENFORCEMENT COMMUNITY.” Because the requested amendment does not materially alter the character of the mark sought to be registered, it is respectfully submitted that it should be permitted.
Rule 2.72(a) of the Trademark Rules of Practice specifically allows for amendments to drawings in applications provided that the proposed amendment does not materially alter the character of the mark originally sought to be registered. In determining whether a proposed amendment constitutes a material alteration of a mark, the focus is on whether the old and new forms of the mark create “essentially the same” commercial impression. In re Hacot-Colombier, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997); In re Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1989); Visa Int’l Service Ass’n v. Life Code Systems, 220 USPQ 740, 743 (TTAB 1983). In the Visa Int’l case, the Trademark Trial and Appeal Board set forth the following standard for determining whether an amendment is a material alteration of a mark:
The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.
Visa Int’l, 220 USPQ at 743-44. These guidelines are reiterated in Section 807.14 of the Trademark Manual of Examining Procedure. The Examining Attorney is allowed broad discretion in determining whether a mark would be materially altered by amendment and each case must be decided on its own merits.
Applicant is requesting amendment of the special form mark to delete the wording “SERVING THE LAW ENFORCEMENT COMMUNITY” which appears in very small lettering below the much more prominent stylized letters FSA and partial star design. The new form of the mark creates essentially the same commercial impression as the original mark. There has been no change in the dominant feature of the mark, i.e., the letters FSA and the incomplete star design. The wording being deleted is extremely small and consists of highly descriptive, informational matter that is not independently registrable or necessary to the significance or appearance of the mark. See In re Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974); TMEP 807.14(a). The removal of this matter would not require republication of the mark and thus is not material.
Applicant has also amended the description of the mark as required by the Examining Attorney, and to conform to the amended drawing. In view of the amendment to the mark, Applicant has not entered the required disclaimer of “SERVING THE LAW ENFORCEMENT COMMUNITY.”
In view of the foregoing, Applicant respectfully submits that the Examining Attorney should accept the amended drawing and approve the application for publication of the mark. If further questions remain, however, the Examining Attorney is invited to contact the undersigned by phone at 202-408-4040.
