To: | The North Face Apparel Corp. (trademarks@sandsip.com) |
Subject: | U.S. Trademark Application Serial No. 97088631 - THE NORTH FACE THE NORTH FACE - 590.408.11 |
Sent: | March 08, 2022 02:25:56 PM |
Sent As: | ecom120@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 97088631
Mark: THE NORTH FACE THE NORTH FACE
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Correspondence Address: |
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Applicant: The North Face Apparel Corp.
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Reference/Docket No. 590.408.11
Correspondence Email Address: |
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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: March 08, 2022
Applicant has applied for the three-dimensional configuration mark “THE NORTH FACE THE NORTH FACE” for use in connection with the following:
International Class 25 clothing and outerwear, namely, jackets and pullovers
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SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
DRAWING
Applicant must depict all functional elements in the drawing in 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). Here, the shoulder, neck, and collar outline of the garment are nondistinctive, incapable shapes of that product design that are functional and/or incidentally functional in nature, where they are essential to the use or purpose of the article, and not shown in broken or dotted lines. However, functional elements must be depicted in broken or dotted lines on the drawing to show the position or placement of the claimed portion of the mark. See In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983). As a result, an amended drawing is required showing the functional elements in broken or dotted lines and, if appropriate, a corresponding amended mark description is required indicating the functional elements depicted in broken or dotted lines are not claimed as part of the mark. See TMEP §§ 1202.02(a), 1202.02(c)(i)(A), 1202.02(c)(iii)(A).
In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark, if appropriate, that does the following:
(1) Indicates the mark is a three-dimensional configuration of the goods or packaging or of a specific design feature of the goods or packaging.
(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).
MULTIPLE RENDENTIONS OF MARK
If the mark cannot be adequately depicted in a single rendition, applicant must file a petition to the Director requesting that the requirement to provide a single rendition of the mark be waived. TMEP §§807.10, 1202.02(c)(iv).
RESPONSE OPTIONS
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.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Shari Gadson/
Shari Gadson
Trademark Examining Attorney
Law Office 120
United States Patent and Trademark Office
571-272-9319
shari.gad
RESPONSE GUIDANCE