| To: | E. & J. Gallo Winery (tm.group@ejgallo.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88284883 - OJO DEL SOL - USNAOJ-008-e |
| Sent: | 4/10/2019 11:28:38 AM |
| Sent As: | ECOM116@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88284883
MARK: OJO DEL SOL
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: E. & J. Gallo Winery
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 4/10/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
NO LIKELIHOOD OF CONFUSION
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).
AMENDED COLOR CLAIM AND MARK DESCRIPTION
Applicant has provided the following color claim and mark description:
The color(s) blue, yellow, green, dark pink, pale yellow, orange is/are claimed as a feature of the mark.
The mark consists of a three dimensional image of a bottle, upon which there are two labels placed. There is a rectangular label covering most of the front of the bottle, with the words OJO DEL SOL in capital letters, and in blue, stacked in the middle and with the word DEL containing blue hyphens on either side of it. The bottom and top of the label contain short cuts at the edges, and the sides of the label are straight. At the top of the label there is a yellow and green winking smiling sun, and the top half of the sun sits on a 5 pointed dark pink semi-circle. The entire label is outlined in the same dark pink, and the inside of the label is a pale yellow. There are fanciful images on the label, including a half a slice of dark pink fruit, a few curlicues, and two stylized images of orange flowers at the bottom of the label. There is also a pale yellow label that wraps around the neck of the bottle, containing a stylized image of a blue flower in the front and a circular image of a slice of dark pink fruit surrounded by blue vertical lines in the back. The dotted lines around the bottle and the cap indicate placement of the mark on the bottle and are not part of the mark.
That claim is unacceptable, however, because it does not clearly and adequately describe all the features of the mark or all the colors that appear in the mark and where they appear.
The examiner therefore recommends the following mark description, which applicant may adopt, if accurate:
The color(s) light pink, blue, light blue, yellow, greenish-brown, dark pink, orange, pale yellow, light orange, white, and brown is/are claimed as a feature of the mark.
The mark consists of a three dimensional configuration of a clear glass bottle, filled with light pink liquid, upon which there are two labels placed. There is a rectangular label covering most of the front of the bottle, with the words “OJO DEL SOL” in blue capital letters stacked in the middle and with the blue wording “DEL” containing light blue hyphens on either side of it. The wording “OJO” and “SOL” have light blue shadowing. The very top and very bottom of the label contain short cuts in the paper of the label, and the sides of the label are straight. At the top of the label there is a winking, smiling yellow sun with greenish-brown rays that have light blue designs trimmed in blue filling the inside of the rays. The sun has blue facial features and two greenish-brown curlicues on its cheeks. The top half of the sun sits on a five-pointed, dark pink semi-circle with orange colored designs between each of the sun’s rays. The entire label contains a dark pink outline with abstract orange colored fruit slice designs and other orange colored miscellaneous designs, including two orange stylized flower designs at the bottom, and the inside of the label, including where the wording is, is pale yellow. The inside of the label also contains miscellaneous greenish-brown designs, a slice of fruit that has dark pink and orange marbled flesh, white pulp around the flesh, an orange colored peel and a light blue trim. There is a light blue dash design on either side of the fruit slice. There is also a second, smaller label in the same pale yellow color that wraps around the neck of the bottle, containing a stylized image of a blue and light blue marbled flower in the front. Around the back of the bottle is a circular image of a slice of fruit with the same dark pink and orange marbled flesh as the other fruit slice, white pulp around the flesh, and a circle trimmed in light orange. A series of straight blue lines surround the circular fruit slice, and miscellaneous greenish-brown dots and greenish-brown curlicues appear around the rest of the smaller label. There is a brown wooden cap at the top of the bottle. The dotted lines around the bottle and the cap indicate placement of the mark on the bottle and are not part of the mark.
To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark, OJO DEL SOL. 37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.
The following English translation is suggested:
The English translation of “OJO DEL SOL” in the mark is “EYE OF THE SUN”.
TMEP §809.03. See attached translation evidence.
LOSS OF TEAS PLUS STATUS
*a translation of all non-English wording in the mark was not provided
The additional fee is required even if applicant later corrects these application requirements.
Please note the following additional information.
NONDISTINCTIVE CONFIGURATION OF PACKAGING ADVISORY
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(s) and/or requirement(s) 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.
/Marcie R. Frum Milone/
Trademark Examining Attorney
Law Office 116
571-272-9726
Marcie.Milone@uspto.gov
(email for informal communications only)
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.
