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:  December 31, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the drawing and specimen issue, disclaimer, description, identification issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search

 

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.

 

Mark Differs on Drawing and Specimen

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 8, which is required in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a). 

 

In this case, the specimen displays the mark within a black bulb shaped carrier with white numbering and lettering in the bars.  However, the drawing displays the mark within a green bulb shaped carrier with black and white numbering and lettering.  The mark on the specimen does not match the mark in the drawing because the colors do not match.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing.  See 37 C.F.R. §2.72(a)-(b).  The following amended description is suggested, if accurate:  “The mark consists of the black wording COLOR KEY with a series of vertically spaced, parallel rectangular bars with rounded ends and each of the bars having a different color; the color of the bars being light-blue with 1" thereon, green with 7/8" thereon, lavender with 3/4" thereon, yellow with 5/8" in black marked thereon, orange with 1/2" thereon, blue with 3/8"  thereon, purple with 1/4" thereon, red with 1/8" thereon, and black with LEFT & RIGHT EAR marked thereon all in a green bulb shaped carrier.  The background is depicted in white and is not claimed as a feature of the mark.”  Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.

 

(2)        Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

Other Considerations

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal to register, the following issues must also be addressed.

 

Disclaimer of “COLOR KEY, 1", 7/8", 3/4", 5/8", 1/2", 3/8", 1/4", 1/8" and LEFT & RIGHT EAR” Required

 

Applicant must disclaim “COLOR KEY, 1", 7/8", 3/4", 5/8", 1/2", 3/8", 1/4", 1/8" and LEFT & RIGHT EAR” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

A “KEY” is defined as a systematic explanation of abbreviations, symbols, etc., used in a dictionary, map, etc (See attached).[1]  A “Color” is defined as the quality of an object or substance with respect to light reflected by the object, usually determined visually by measurement of hue, saturation, and brightness of the reflected light; saturation or chroma; hue (See attached).[2]    This merely descriptive of the identified goods that feature color coded guide combs of different measurements and purposes.  An applicant may not claim exclusive rights to terms that others may need to use to describe their in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). 

 

Applicant must disclaim the measurements and “LEFT & RIGHT EAR” wording because it is commonly used in applicant’s particular trade or industry to impart information about the goods, namely, the guide comb sizes and function of the combs and would not be perceived as distinguishing the goods and identifying their source; thus this wording does not function as a mark.  See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).

 

A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “COLOR KEY, 1", 7/8", 3/4", 5/8", 1/2", 3/8", 1/4", 1/8" and LEFT & RIGHT EAR” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

Amended Description Required

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  The submitted description omits the bulb shaped green carrier, the color black for a portion of the wording and color white which appears in the mark.

 

The following description is suggested, if accurate (that matches the current drawing):  The mark consists of the black wording COLOR KEY with a series of vertically spaced, parallel rectangular bars with rounded ends and each of the bars having a different color; the color of the bars being light-blue with 1" marked thereon in black, green with 7/8" thereon, lavender with 3/4" thereon, yellow with 5/8" in black marked thereon, orange with 1/2" marked in black thereon, blue with 3/8"  thereon, purple with 1/4" thereon, red with 1/8" thereon, and black with LEFT & RIGHT EAR marked thereon all in a green bulb shaped carrier.  The background is depicted in white and is not claimed as a feature of the mark.

 

If the applicant elects to submit a new drawing that matches the specimen, the following description is suggested, if accurate:  The mark consists of the black wording COLOR KEY with a series of vertically spaced, parallel rectangular bars with rounded ends and each of the bars having a different color; the color of the bars being light-blue with 1" thereon, green with 7/8" thereon, lavender with 3/4" thereon, yellow with 5/8" in black marked thereon, orange with 1/2" thereon, blue with 3/8"  thereon, purple with 1/4" thereon, red with 1/8" thereon, and black with LEFT & RIGHT EAR marked thereon all in a green bulb shaped carrier.  The background is depicted in white and is not claimed as a feature of the mark.”

           

 

The Identification of Goods is Indefinite

 

The identification of goods is indefinite and must be clarified because it is unclear from the current wording exactly what goods are used in conjunction with the mark.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.   In particular, the hair cutting devices must be clarified, e.g. “electric hair clipper.” 

 

Applicant may adopt the following identification, if accurate (suggested wording appears italicized print): 

 

Electric hand implements for grooming, namely, electric hair cutting devices in the nature of an electric clipper having a motor and a movable blade in Class 8.  TMEP Section 1402.01.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

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

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Jason F. Turner/

Jason F. Turner

Examining Attorney

Law Office 108

(571) 272-9353

jason.turner@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.