To: | Sensient Colors LLC (PTO-WIS@huschblackwell.com) |
Subject: | U.S. Trademark Application Serial No. 88344392 - MICROFINE - STC-40762 |
Sent: | July 06, 2020 04:04:55 PM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88344392
Mark: MICROFINE
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Correspondence Address: Brianna M. Schonenberg, George S. Pavlik 555 E. WELLS STREET, SUITE 1900
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Applicant: Sensient Colors LLC
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Reference/Docket No. STC-40762
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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 06, 2020
The examining attorney acknowledges the response to the office action. In response to the Section 2(e)(1) refusal applicant amended pursuant to Section 2(f). This amendment is denied and the refusal is maintained. The amendment creates a new issue in the application. Thus, this action is “non-final.”
Applicant may respond by providing additional evidence of acquired distinctiveness. See TMEP §1212.02(g). When determining whether the evidence shows the mark has acquired distinctiveness, the trademark examining attorney will consider the following six factors: (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage. See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse factors”). “[N]o single factor is determinative.” In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424. This evidence must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of applicant’s product or service rather than identifying the product or service itself. In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.
In this case, the record contains no evidence of association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source), no evidence of the amount of advertising including advertising expenditure and no evidence of the amount of sales and number of customers. Thus, it is unclear from the record that the proposed mark has acquired distinctiveness. Note that the pages from applicant’s annual report are largely illegible.
As well as submitting additional evidence, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal. TMEP §816.04.
How to respond. Click to file a response to this nonfinal Office action.
/Daniel F. Capshaw/
Daniel F. Capshaw
Examining Attorney
Law Office 110
571-272-9356
daniel.capshaw@uspto.gov
RESPONSE GUIDANCE