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: 6/21/2019

 

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 Results

 

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

 

In response to this Office action, applicant must address the following issues:

 

·       “Phantom Mark” Refusal;

·       Non-Distinctive Color Mark Refusal;

·       Drawing, Color Claim and Mark Description Requirements;

·       Information Requirement;

·       Identification of Services Requirement.

 

Refusal—“Phantom Mark”

 

Registration is refused because applicant seeks registration of more than one mark in its application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §1214.01.  Specifically, applicant’s mark consists of the color blue coupled with a dotted outline of bottle, both of which are placed on a sign depicted in dotted lines.  The dotted lines depicting the bottle appear to be a placeholder for a changeable design element.

 

An application must be limited to one mark.  37 C.F.R. §2.52; see 15 U.S.C. §1051(a)(1); In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999).  A “phantom” mark typically includes a blank or dashed line, dots, underlining, or a designation such as “XXXX,” which acts as a placeholder for a changeable element that depends on the use of the mark.  In re Int’l Flavors & Fragrances Inc., 183 F.3d at 1363 n.1, 51 USPQ2d at 1514 n.1; TMEP §1214.  A mark with a changeable or “phantom” element, as in the present case, is generally considered to be more than one mark.  In re Constr. Research & Tech. GmbH, 122 USPQ2d 1583, 1585-86 (TTAB 2017) (citing In re Primo Water Corp., 87 USPQ2d 1376, 1378 (TTAB 2008)); see In re Int’l Flavors & Fragrances Inc., 183 F.3d at 1366, 1368, 51 USPQ2d at 1516, 1518; TMEP §1214.01.

 

Marks that contain phantom elements do not provide sufficient notice to potential consumers and businesses of what the mark consists of when it is actually used in commerce.  See TMEP §1214.01.  Registering these marks could cause confusion about the source of products sold under the mark and prevent business owners from being able to rely on the federal trademark register when adopting their own marks for goods or services.  See id.

 

In particular with regard to color marks, an applicant may not seek to register the color of the wording or design apart from the words or designs themselves if the color does not create a separate commercial impression.  TMEP §1202.05(c).  In this instance, the color blue on the mark does not make a separate commercial impression apart from the design of the bottle. 

 

The commercial impression of a color may change depending on the object to which it is applied. In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001); In re Hayes, 62 USPQ2d 1443 (TTAB 2002). Granting an application for registration of color in the abstract, without considering the manner or context in which the color is used, would be contrary to law and public policy, because it would result in an unlimited number of marks being claimed in a single application. Cf. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1368, 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999) (mark with changeable or "phantom" element unregistrable because it would "encompass too many combinations and permutations to make a thorough and effective search possible" and, therefore, would not provide adequate notice to the public); In re Upper Deck Co., 59 USPQ2d 1688, 1691 (TTAB 2001) (hologram of varying shapes, sizes, content, and positions used on trading cards constitutes more than one "device," as contemplated by §45 of the Trademark Act). Only one mark can be registered in a single application. TMEP §1202.05(c). 

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. In addition, applicant may respond to the refusal by submitting an amended drawing and mark description that comply with the requirements set forth below.

 

Please note the following alternative ground for refusal.

 

Non-Distinctive Color Mark Refusal

 

Registration is alternatively refused because the applied-for color mark, consisting of the color blue used on a sign for services, is not inherently distinctive. Such marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985); cf. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000).

 

In this instance, the applicant seeks to register the color blue as applied to a sign.  If the color blue is applied to the sign without any associated design, it would be perceived as a simply a decorative feature of the sign, and not as an indicator of the source of the services.  The attached evidence shows that consumers are accustomed to seeing signs for coffee shops, cafes, and restaurants in a variety of decorative colors, including the color blue.

 

Therefore, because the mark consists solely of colors applied to a sign for the services, the mark is not inherently distinctive and registration is refused pursuant to Sections 1, 2 and 45 of the Trademark Act.

 

Advisory: Section 2(f) or Supplemental Register

 

Applicant may respond with arguments and evidence against this refusal.  In addition, if applicant believes that its mark has acquired distinctiveness, that is, that it has become a distinctive source-indicator for the goods, applicant may seek registration on the Principal Register under Trademark Act Section 2(f). See 15 U.S.C. §1052(f). The Office will decide each case on its own merits.

 

The burden of proving that a color mark has acquired distinctiveness is substantial. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (holding the color pink used on fibrous glass residential insulation to have acquired distinctiveness based on evidence of twenty-nine years’ use, extensive affidavit and documentary evidence, surveys, and extensive media advertising expenditures); In re Am. Home Prods. Corp., 226 USPQ 327 (TTAB 1985) (holding combination of colors pink, white and yellow used on an analgesic/muscle relaxant tablet to have acquired distinctiveness based on evidence of more than twenty years’ use, extensive advertising, and sales of over two billion tablets from 1960-1980); cf. In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998).

 

Such evidence may include the following: (1) advertising and promotional materials specifically promoting the identified color as a mark; (2) dollar figures for advertising devoted to promotion of the specified color as a mark; (3) dealer and consumer statements of recognition of the specified color as a mark; and (4) any other evidence that might establish recognition of the identified color as a mark for the goods. See 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.

 

If applicant cannot establish, by evidence, that the mark has acquired distinctiveness, applicant can amend the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816, 1202.05(a).

 

Advisory: Functional Color Marks Are Not Registrable

 

Please note that a color that is functional for specific services is not registrable on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, regardless of evidence of acquired distinctiveness. TMEP §1202.05(b); see Brunswick Corp. v. British Seagull Ltd., 35 F. 3d 1527, 1534, 32 USPQ2d 1120, 1125 (Fed. Cir. 1994).

 

A color is functional if it yields a utilitarian or functional advantage, e.g., yellow or orange for safety signs make the signs more visible. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994) (holding the color black functional for outboard motors because it provides competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1446-48 (TTAB 2007) (holding the color dark purple functional for sand paper because color serves a myriad of functions in the coated abrasives industry, including maintaining a uniform appearance of the product and color coding for grit size or coarseness); In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) (holding the color pink functional for use on surgical wound dressings because the actual color of the goods closely resembles Caucasian human skin). A color mark can also be functional if it provides competitive advantages, such as being more economical with respect to the manufacture or use of the goods. See TMEP §§1202.02(a)(viii), 1202.05(b); cf. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1983).

 

Applicant is advised that, upon consideration of the information submitted in response to the information requirement below, registration may be refused on the ground that the applied-for color mark, as used on the specimen of record, is a functional design for the identified goods. Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5); see TMEP §1202.02(a)-(a)(ii), (d).

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Drawing, Color Claim, and Mark Description Requirements

 

For marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that applicant claims as its mark.  See 37 C.F.R. §2.52(b)(2); TMEP §§807.10, 1202.02(c)(iv); In re Minn. Mining & Mfg. Co., 335 F.2d 836, 839, 142 USPQ 366, 368-69 (C.C.P.A. 1964).  If the mark cannot be adequately depicted in a single rendition, applicant must file a petition to the Director requesting that the requirement to provide a single rendition of the mark be waived.  TMEP §807.10.

 

If the drawing of the mark includes additional matter not claimed as part of the mark (e.g., matter that shows the position or placement of the mark), applicant must depict such matter using broken or dotted lines.  37 C.F.R. §2.52(b)(4); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1488 (TTAB 2017) (quoting In re Heatcon, Inc., 116 USPQ2d 1366, 1379 (TTAB 2015)); TMEP §§807.08, 1202.02(c)(i); see In re Water Gremlin Co., 605 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980).

 

In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following:

 

(1)       Indicates the mark is a three-dimensional configuration of trade dress for the services.

 

(2)       Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.

 

(3)       Specifies any elements that are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark. 

 

See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii). 

 

Drawing of Mark

 

In this instance, the applicant must submit an amended drawing of the mark depicting the outline of the bottle in solid lines because, as discussed above, the color blue does not create a separate impression apart from the shape of the bottle and because the depiction of the bottle in dotted lines results in an application for more than one mark. 

 

Please note that the USPTO cannot accept the proposed changes because they would materially alter the mark in the drawing filed with the original application or as previously amended.  37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14.  In the present case, amending the mark to depict the color blue in a shape other than the bottle would be a material alteration of the mark.

 

Color Claim and Mark Description

 

The applicant must clarify the colors claimed as a feature of the mark.  The color claim states that “blue” is claimed as a feature of the mark, but the mark description references “blue (Pantone 2995 C).”  The colors referenced in the color claim and mark description must be the same.  37 C.F.R. §2.52(b)(4); TMEP §§807.07 et seq.

 

In addition, the mark description must be amended to clarify that the bottle design is claimed as a feature of the mark and clarify the configuration of the mark.The following color claim and mark description are suggested, if accurate:

 

The color blue (Pantone 2995 C) is claimed as a feature of the mark.

 

The mark consists of a bottle design in the color blue (Pantone 2995 C) as used on signage for the services. The dotted lines representing the sign are not claimed as part of the mark and serves only to show the position or placement of the mark.

 

Information Requirement

 

To permit proper examination of the applied-for color mark, applicant must provide the following information and documentation:

 

(1)       An explanation as to whether the identified color(s) serve(s) any purpose as used on the sign for the services

 

(2)       Any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the applied-for color mark

 

(3)       An explanation as to whether any statutes, regulations, ordinances, codes or industry standards require, regulate and/or standardize the use of the identified color(s) on the sign for the services

 

(4)       An explanation as to the use of the identified color(s) in applicant’s industry and any other similar use of color in applicant’s industry

 

(5)       An explanation describing any other similar use of color by applicant

 

(6)       Color photographs and color advertisements showing competitive goods in applicant’s industry

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

Identification of Services

 

The wording “coffee supply services” in the identification of services for International Class 43 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass retail or wholesale activities in which goods pertaining to coffee and coffee-making are sold, which would be in International Class 35; or a food service in with coffee beverages are brought to offices, in International Class 43.  Applicant must clarify the nature of the activities and classify them appropriately.

 

If applicant’s coffee supply services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring coffee and coffee-making equipment and supplies,” “retail distributorships in the field of coffee and coffee-making equipment and supplies,” and “retail outlets featuring coffee and coffee-making equipment and supplies.”  See TMEP §§1301.01(a)(ii), 1402.11. 

 

Applicant may substitute the following wording, if accurate:

 

International Class 35: Coffee supply services, namely, {specify services in class 35, e.g., retail store services, online retail store services} featuring {specify items sold, e.g., coffee, coffee-making supplies}

 

International Class 43: Cafe, coffee shop, coffee bar, coffee house, and snack-bar services; coffee supply services for offices in the nature of provision of beverages; restaurant services.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Multiple-Class Application Requirements

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es).  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is acceptable for class 43; and applicant needs a specimen for class 35.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Response Guidelines

 

For this application to proceed further, 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.

 

In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c). 

 

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.  

 

 

 

/April A. Hesik/

Examining Attorney

Law Office 124

(571) 272-4735

april.hesik@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 6/21/2019 FOR U.S. APPLICATION SERIAL NO. 88366378

 

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 6/21/2019 (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.