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:  August 29, 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, 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE RECORDS

 

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). 

 

·       Refusal Under Sections 1, 2, 3 and 45

·       Requirement for Information

·       Requirement for New Drawing and a More Accurate Mark Description

 

REFUSAL UNDER SECTIONS 1, 2, 3 AND 45 – NONDISTINCTIVE TRADE DRESS

 

Registration is refused because the applied-for mark consists of nondistinctive trade dress that would not be perceived as a service mark but only as decoration or ornamentation.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2029-30 (TTAB 2010); In re File, 48 USPQ2d 1363, 1365-67 (TTAB 1998); TMEP §§1202.03, 1301.02(a).

 

More specifically, color marks are never inherently distinctive and can only be registered on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness.  See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995); In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 & n.4 (TTAB 2017) (citing Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000)); TMEP §1202.05(a).  When used with services, trade dress typically consists of three-dimensional matter or visual elements that form or otherwise affect the “packaging” of the services, i.e., the image or appearance of the location where, or the means by which, the services are performed.  See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1, 23 USPQ2d 1081, 1082 n.1 (1992) (affirming judgment of lower court and accepting its description of trade dress for restaurant services as the “total image” of the restaurant, including the shape and general appearance of the exterior of the restaurant, identifying sign, interior kitchen floor plan, decor, menu, equipment used to serve food, and servers’ uniforms); In re Chippendales USA, Inc., 622 F.3d 1346, 1351, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (stating that an abbreviated tuxedo costume consisting of wrist cuffs and a bowtie collar without a shirt constituted trade dress because it was part of the “packaging” for exotic dancing services); In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) (finding blue-themed motif of retail store’s interior constituted trade dress for retail store services where the motif was used in association with the store name, carpeting, neon lighting, display panels for publications, shelving, and employee uniforms), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997).

 

A mark is inherently distinctive if its intrinsic nature serves to identify a particular source.  See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000).  In determining whether or not trade dress is inherently distinctive, the ultimate focus is on whether the trade dress is of such a design that a consumer will immediately rely on it to differentiate the services from those of competing manufacturers or service providers.  See In re Chippendales USA, Inc., 622 F.3d at 1352, 96 USPQ2d at 1684-95.

 

The following factors are considered when determining the inherent distinctiveness of configuration marks for services:

 

(1)       Whether the applied-for mark is a “common” basic shape or design;

 

(2)       Whether the applied-for mark is unique or unusual in the field in which it is used;

 

(3)       Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods or services viewed by the public as a dress or ornamentation for the goods or services; and

 

(4)       Whether the applied-for mark is capable of creating a commercial impression distinct from the accompanying words.

 

See In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d at 2027 (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977)); TMEP §1202.02(b)(ii).  Any one of these factors, by itself, may be determinative as to whether the mark is inherently distinctive.  See In re Chippendales USA, Inc., 622 F.3d at 1355, 96 USPQ2d at 1687; In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d at 2028.

 

In this instance, applicant seeks registration of the color teal used on automatic teller machines in connection with the provision of credit union services; as such, the applied-for mark fails to function as a service mark because it consists solely of a single color used in the course of rendering such services.  Attached material downloaded from the internet demonstrates that it is customary in the credit union and banking industry to utilize various types of trade dress featuring a variety of colors in connection with the same or similar services – including teal – as used on ATMs. For example, applicant is referred to  California Coast Credit Union (http://www.calcoastcu.org/SDSU_campus.htm, attached), or Redwood Credit Union (http://www.redwoodcu.org/personal/online-atm-services/atms, attached).  Therefore, the proposed mark, as use don the specimen, does not function as a service mark since purchasers are likely to perceive the color teal as a design element of the automatic teller machines – not as a source-identifying feature of the services.  In other words, the applied-for mark is not capable of creating a separate commercial impression distinct from the machines on which it is used.

 

Therefore, here, where the mark consists solely of a color applied to teal, the mark is not inherently distinctive and registration is refused under Sections 1, 2, and 45 of the Trademark Act. 

 

ADVISORY – APPLICANT’S OPTIONS WITH REGARD TO THE ABOVE REFUSAL

 

Applicant is advised that it may respond to the above-refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:  (1) amending the application to seek registration under Trademark Act Section 2(f), or (2) amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §§1052(f), 1091.

 

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.  See In re Kalmbach Publ’g Co., 14 USPQ2d 1490, 1491-92 (TTAB 1989); TMEP §1202.05(a); see TMEP §1212.06.  Actual evidence is required of consumers’ recognition of the proposed color mark as a source identifier; such evidence must relate to the promotion and recognition of the specific color embodied in the applied-for mark.  See, e.g., In re Koninklijke Philips Elecs. N.V., 112 USPQ2d 1177, 1180 (TTAB 2014) (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, 214 USPQ 1, 4 n.11 (1982)); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1838 (TTAB 2013).

 

For example, applicant may submit evidence of “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.  However, “[t]he evidence must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the [goods or services] in general.”  In re Change Wind Corp., 123 USPQ2d at 1467 (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982)). 

 

To establish acquired distinctiveness, an applicant may rely only on use in commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999).

 

Again, as an alternative to submitting evidence of acquired distinctiveness, applicant may amend the application to the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.02(b)(ii).

 

REQUIREMENT FOR INFORMATION

 

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 serves any purpose as used in connection with the services

 

(2)       An explanation as to whether the identified color is a natural by-product of the manufacturing process for the automatic teller machines

 

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

 

(4)       An explanation as to whether any statutes, regulations, ordinances, codes or industry standards require, regulate and/or standardize the use of the identified color in connection with the services

 

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

 

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

 

(7)       An explanation as to whether competitors use the same color or other colors in connection with the same services

 

(8)       Color photographs and color advertisements showing competitive services 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. 

 

REQUIREMENT FOR A NEW DRAWING AND A MORE ACCURATE MARK DESCRIPTION

 

The drawing of the mark must include a depiction of the object on which the color is used in order to show the placement of the mark and how it is used in connection with the services.  The drawing of the mark must also be a substantially exact representation of the mark as actually used in connection with those services.  37 C.F.R. §2.51.

 

Here, the drawing appears to be a photograph with extraneous elements which are neither part of the mark nor show the actual placement of the mark.  Applicant must submit a drawing which consists of a representation of an ATM depicting the mark to include broken or dotted lines to show the position of the mark on the machines.  37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(c)(i).  Applicant must show the mark itself using solid lines.  See 37 C.F.R. §§2.52(c), 2.54(e); TMEP §§807.05(c), 807.06(a).

 

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

 

(1)       Indicates that the mark is a color used in connection with the rendering of 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). 

 

For example, the following mark description is suggested:

 

The mark consists of the color teal similar to Pantone 320C as used on automatic teller machines in the performance of credit union services; the color is applied to the outer edge or border of the machine; the dotted lines outlining the ATM and any features of and mechanisms on the machine show placement of the mark and are not part of the mark

 

RESPONSE GUIDELINES

 

For this application to proceed, 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.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).

 

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.  

 

 

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

 

 

/Susan K. Lawrence/

Trademark Examining Attorney

Law Office 116, USPTO

(571) 272-9186

sue.lawrence@uspto.gov

(informal communication only)

 

 

 

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 August 29, 2019 for

U.S. Trademark Application Serial No. 88413448

 

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. 

 

 

/Susan K. Lawrence/

Trademark Examining Attorney

Law Office 116, USPTO

(571) 272-9186

sue.lawrence@uspto.gov

(informal communication only)

 

 

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 August 29, 2019, 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.”