Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  February 11, 2020

 

 

This Office action is in response to applicant’s communication filed on December 20, 2019, in which applicant entered arguments against the “phantom mark” refusal and the non-distinctive color mark refusal and responded to the drawing, color claim, mark description, information, and  identification of services requirements.

 

Upon consideration of applicant’s response, the “phantom mark” refusal is withdrawn. The color claim, information, and identification of services requirements are satisfied.  The drawing requirement is withdrawn. See TMEP §713.02.

 

The non-distinctive color mark refusal is maintained and continued because the evidence of acquired distinctness is insufficient.  The requirement to clarify the drawing of the mark is also maintained.  See id.

 

Insufficient Section 2(f) Evidence; Non-Distinctive Color Mark Refusal Maintained

 

Applicant seeks to register the color blue (Pantone 2995 C) as mark as used on a design element for the signage for the services.  Registration was refused because the color mark is not inherently distinctive. 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, 166, 34 USPQ2d 1161, 1164 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1121-23, 227 USPQ 417, 420-21 (Fed. Cir. 1985); TMEP §1202.05(a).  Such marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness.  See In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 n.4 (TTAB 2017) (citing TMEP §1202.05(a)).

 

In response to the refusal, applicant has asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s evidence of record.  See 15 U.S.C. §1052(f).  However, this evidence is insufficient to show acquired distinctiveness of a color mark. Accordingly, the non-distinctive color mark refusal is maintained and continued.   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, 166, 34 USPQ2d 1161, 1164 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1121-23, 227 USPQ 417, 420-21 (Fed. Cir. 1985); TMEP §1202.05(a). 

 

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).  A mere statement of long use is not sufficient; an applicant must provide evidence demonstrating that the color mark has acquired source-indicating significance in the minds of consumers.  TMEP §1202.05(a); see TMEP §1212.06.

 

In the present case, applicant’s evidence consists of the following: a declaration from an authorized representative of applicant attesting to its adoption of the “Blue Bottle Blue Mark” and to applicant’s sales and marketing efforts; the Wikipedia page for applicant’s business; screenshots of applicant’s marketing displaying the blue bottle mark and various goods and website links in the color blue; and examples of applicant’s INSTAGRAM, FACEBOOK, and TWITTER pages. 

 

This evidence is insufficient to show acquired distinctiveness of the claimed color blue as mark apart from the shape of the bottle design.  While the color blue appears on various goods, such as mugs, and on elements of the web page, the evidence does not establish that the blue color alone has acquired distinctiveness as a source-indicator for the coffee goods listed in the application.  Rather, the vast majority of the evidence simply shows that the color blue combined with the bottle design would be perceived as the mark for the goods.  In fact, applicant’s declaration references only this combination of elements, and thus does not support the conclusion that the color blue alone is being used or promoted as mark apart from the shape of the bottle.

 

To support the claim of acquired distinctiveness, applicant may respond by submitting additional evidence.  See TMEP §1212.02(g).  Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

Applicant may also respond to the refusal by 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.

 

Mark Description Requirement Maintained

 

Applicant must submit an amended description of the mark because the current one does not make clear that the color blue is being used only on a design element of the packaging and not on its entirety.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02. 

 

The following description is suggested, if accurate:

 

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

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/April A. Hesik/

Examining Attorney

Law Office 124

(571) 272-4735

april.hesik@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 11, 2020 for

U.S. Trademark Application Serial No. 88366378

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/April A. Hesik/

Examining Attorney

Law Office 124

(571) 272-4735

april.hesik@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 11, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”