To: | DAVIDsTEA INC. (peter.riebling@rieblinglaw.com) |
Subject: | U.S. Trademark Application Serial No. 88511545 - 320520-00013 |
Sent: | September 04, 2019 03:15:49 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88511545
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Correspondence Address: |
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Applicant: DAVIDsTEA INC.
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Reference/Docket No. 320520-00013
Correspondence Email Address: |
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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 04, 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).
SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:
· Refusal Under Sections 1, 2, and 45 – Color is Not Distinctive
· Requirement for Information
· Requirement for New Drawing and a More Accurate Mark Description
· Requirement for Acceptable Identification of Services
REFUSAL UNDER SECTIONS 1, 2, AND 45 – COLOR IS NOT DISTINCTIVE
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 turquoise used on the exterior sign of a retail store in connection with the provision of retail store 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 demonstrates that it is common for retail establishments to utilize various types of dress featuring various different colors on the outside of the store, including a color background with the name of the establishment in white, e.g., PIER 1 IMPORTS® (http://www.syracuse.com/storefront/2010/10/pier_1_imports_stores_in_syrac.html, attached), or TUESDAY MORNING® (http://www.hometextilestoday.com/brands-amp-marketing/tuesday-morning-initiatives-draw-younger-consumers/, attached), or PANERA BREAD® (http://www.yelp.com/biz_photos/panera-bread-syracuse-4?select=ZMpaDh0OtpjYCZoLlA0fyQ, attached). Thus, the proposed mark as used on the specimen, does not function as a service mark since purchasers are likely to perceive the turquoise color as a design element of the storefront, i.e., part of the trade dress, and 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 storefront on which it is used.
Therefore, here, where the mark consists solely of a color applied to the front of a store, 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.
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)(3); TMEP §§1212.06 et seq.
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
(1) An explanation as to whether the identified color serves any purpose as used in connection with 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 in connection with the services
(4) 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
(5) An explanation describing any other similar use of color by applicant
(6) An explanation as to whether competitors use the same color or other colors in connection with the same or similar services
(7) 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
Applicant must depict the mark in the drawing to include broken or dotted lines to show the position of the mark, i.e., to show the mark in context. 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).
Here, there are no solid lines around the actual mark itself. Thus, applicant must amend the drawing to include solid lines encompassing the rectangular shape.
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 turquoise (Pantone 326) as used on the storefront of the retail establishment in the rendering of the retail store services; the color is applied to a three dimensional rectangle above the windows and entrance of the building; the dotted lines show placement of the mark on the storefront and are not claimed as a feature of the mark
REQUIREMENT FOR ACCEPTABLE IDENTIFICATION OF SERVICES
The identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Specifically, the following wording is unacceptable:
Retail store services – Applicant must amend this wording to identify the goods or type of goods featured in the stores, e.g., “featuring teas and tea-related products.”
Applicant may adopt the following identification of services (noting that newly-added wording is in bold, and appropriate wording should be provided by applicant where a “blank space” (underline) is indicated):
Retail store services featuring ____________ {indicate goods or type of goods featured, e.g., “teas and tea-related products”}
In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words and phrases such as “services in connection with,” “including,” “and like services,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of each specific service identified by its common commercial or generic name. See TMEP §1402.03(a).
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.
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).
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