United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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:  September 09, 2019

 

 

PRIORITY ACTION

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issue shown below.  On September 5, 2019, the examining attorney and William Utermohlen discussed the issue below.  The applicant must timely respond to this issue.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

Summary of Issue Applicant Must Address

• Failure to Function as a Mark: Common Background Design is Not Inherently Distinctive

 

Failure to Function as a Mark: Common Background Design is Not Inherently Distinctive

Registration is refused because the applied-for mark comprises a background design that functions as part of a composite mark that incorporates additional descriptive wording; the design does not function separately as a mark.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998); In re Anton/Bauer, Inc., 7 USPQ2d 1380, 1381 (TTAB 1988); TMEP §§904.07(b), 1202.11. 

 

A background design that is not sufficiently distinctive or unique so as to create a commercial impression separate and apart from the word or design mark in conjunction with which it is used can be registered on the Principal Register only upon a showing of acquired distinctiveness.  See In re Benetton Grp. S.p.A., 48 USPQ2d at 1215-16; In re Anton/Bauer, Inc., 7 USPQ2d at 1381; In re Wendy’s Int’l, Inc., 227 USPQ 884, 885 (TTAB 1985); TMEP §1202.11.

 

In this case, the background design in the mark is composed of a square with rounded corners that appears in orange and black.  However, most common geometric shapes, such as circles, ovals, triangles, diamonds, or stars, when used as a background for word or letter marks, are not considered inherently distinctive.  See In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1216 (TTAB 1998).  As the Trademark Trial and Appeal Board explained,

 

The rationale . . . is that designs of this character have been so commonly employed as background devices for word marks that composite marks of this type create but a single commercial impression with the result that purchasers would normally utilize the word portions of the marks to identify and distinguish the goods sold thereunder . . . .

 

In re Wendy’s Int’l, Inc., 227 USPQ 884, 885 (TTAB 1985) (quoting Permatex Co. v. Cal. Tube Prods., Inc., 175 USPQ 764, 766 (TTAB 1972)).

 

In this case, the square background shape in the applicant’s mark is a common, ordinary shape that is not distinctive.  The attached copies of registrations show that the rounded square is used as background in many types of trademarks, including those with more than one color.  In addition, the rounded square is the form used for many computer application icons.  For example, the attached article from 9TO5 Google explains that “this ‘uniformed’ square with rounded corners is ‘visually more appealing and easier to digest.’”

 

The applicant may respond to this refusal by satisfying one of the following:

 

(1)       Claiming acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods in commerce.  15 U.S.C. §1052(f).  Evidence may consist of affidavits or declarations of long-term use in commerce; specific dollar sales under the mark; advertising expenditures; samples of typical advertising; and letters, affidavits, or declarations in which consumers and/or dealers assert recognition of the mark as an indicator of source.  See 37 C.F.R. §2.41(a)(3); TMEP §§1212.06 et seq.; or

 

(2)       Amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

Disclaimer

The following disclaimer has been added to the application: No claim is made to the exclusive right to use the term “FACE 2 FACE” apart from the mark as shown.

 

See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).

 

Color Claim

The color claim has been amended as follows: The colors orange, black, and white are claimed as a feature of the mark.

 

See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i).

 

Description of the Mark

The description of the mark has been amended as follows: The mark consists of a square with the top half being orange and the bottom half being black. The word "FACE" in white is in the top half followed by the number “2” in white, which is halfway between the orange and black square and followed by the word "FACE" in white in the bottom half of the square.

 

See 37 C.F.R. §2.37; TMEP §§808 et seq.

 

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

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 118

(571) 272-9140

leigh.case@uspto.gov (preferred)

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 September 09, 2019 for

U.S. Trademark Application Serial No. 88468553

 

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. 

 

 

/Leigh Caroline Case/

Examining Attorney

Law Office 118

(571) 272-9140

leigh.case@uspto.gov (preferred)

 

 

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 September 09, 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.”