Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  October 29, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

However, applicant should note the following issues with this application:

 

(1)   Registration is refused on the ground that the applied-for mark is being used in a merely ornamental manner and not a trademark manner;

 

(2)   A new drawing of the mark with all unregistrable elements dotted out is required; and

 

(3)   The description of the mark must be amended to accurately reflect the mark sought to be registered.

 

Applicant must respond timely and completely to these three issues. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SECTIONS 1, 2 & 45 – ORNAMENTAL USE IS NOT TRADEMARK USE

 

Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s footwear and, thus, does not function as a trademark to indicate the source of applicant’s footwear and to identify and distinguish applicant’s footwear from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013); In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); TMEP §§904.07(b), 1202.03 et seq.

 

The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).

 

In this case, the submitted specimen shows a checkerboard pattern covering a side panel of a sneaker. Sneakers with decorative side panels are common in the footwear industry, as the attached internet evidence demonstrates. Moreover, as the attached registrations owned by applicant demonstrate, use of checkerboard patterns on footwear is not inherently distinctive because all of applicant’s prior registrations were registered only upon a showing of acquired distinctiveness under Trademark Act Section 2(f). See In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994); see Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others. As such, registration must be refused under Trademark Act Sections 1, 2, and 45 on the ground that the applied-for mark is not inherently distinctive.

 

Applicant may overcome this refusal by satisfying one of the following options:

 

(1)  Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.

 

(2)  Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.

 

Please note that years of use alone is not sufficient to demonstrate acquired distinctiveness when the mark is being used in a merely ornamental manner. Concrete evidence that the proposed mark is perceived as a mark for the relevant goods is required to establish distinctiveness. TMEP §1202.03(d); see In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

 

(3)  Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.    

 

For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.

 

Please note that amending to an intent-to-use basis under Trademark Act Section 1(b) will not overcome this refusal because the ornamental nature of the goods is clearly apparent from the drawing and description of the mark. TMEP §1202.03(e).

 

NEW DRAWING REQUIRED

 

Applicant must submit a new drawing of the mark to include broken or dotted lines to show the position of the mark on the goods. 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, the side panel of the sneaker upon which the mark is displayed is shown in a solid line, which indicates that applicant is claiming the configuration of the sneaker side panel as part of the mark. However, as the previously cited evidence of other sneakers demonstrated, the side panel itself is nondistinctive and incapable of functioning as a mark because this element is the same or substantially similar to the designs of competitors’ products. As such, applicant must submit a new drawing that clearly shows the outline of the upper in broken or dotted lines.

 

While applicant must make this change to the drawing, applicant may not make any other changes or amendments that would materially alter the applied-for mark on the drawing. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. For more information about changes to the mark in the drawing after the application filing date, see the Drawing webpage.

 

DESCRIPTION OF MARK AMENDMENT REQUIRED

 

Applicant must submit an amended description of the mark that agrees with the mark on the drawing. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The current description is inconsistent with the mark on the drawing and thus is inaccurate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Specifically, applicant claims that the mark “consists of the silhouette of a high top sneaker with checkerboard pattern on the side panels”; however, a “silhouette of a high top sneaker” is not the mark for which registration is sought. The mark consists solely of the checkerboard pattern, and therefore the mark description must make this clear. Descriptions must be accurate and identify only those literal and design elements appearing in the mark. See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

The following description is suggested, if accurate: 

 

The mark consists of a checkerboard pattern applied to the side panel of a high top sneaker. The matter shown in broken or dotted lines is not claimed as part of the mark and serves only to indicate placement of the mark on the goods.

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must:

 

(1)   Respond to the Sections 1, 2, and 45 refusal;

 

(2)   Submit a new drawing of the mark with the panel shown in a dotted outline; and

 

(3)   Amend the description of the mark.

 

Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

RESPONSE GUIDANCE

 

Missing the response deadline to this letter will cause the application to abandon. A 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.  

 

Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.

 

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.

 

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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.23(c); TMEP §820.04. However, in certain situations, 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.

 

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 October 29, 2019 for

U.S. Trademark Application Serial No. 88590279

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 October 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.”