To: | Disney Enterprises, Inc. (docketing@kelly-ip.com) |
Subject: | U.S. Trademark Application Serial No. 97285747 - WALT DISNEY ANIMATION STUDIOS - 6182.11463 |
Sent: | May 02, 2022 02:18:37 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 97285747
Mark: WALT DISNEY ANIMATION STUDIOS
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Correspondence Address: 1300 19TH STREET, N.W., SUITE 300
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Applicant: Disney Enterprises, Inc.
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Reference/Docket No. 6182.11463
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: May 02, 2022
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(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
· Requirement – Amend Mark Description
· Requirement – Disclaimer of Descriptive Wording
REQUIREMENT – AMEND MARK DESCRIPTION
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing. See TMEP §807.07(a)(i). However, any other amendments to the drawing will not be accepted if they materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following description is suggested, if accurate: The mark consists of a motion mark of an animator's drawings visually flipping one after another and transitioning into an animated square clip of a mouse character tapping his foot and whistling while holding a ship's wheel with a mountain landscape in the background, followed by the appearance of the wording “WALT DISNEY ANIMATION STUDIOS” underneath the square clip.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate:
Color claim: “The colors yellow, brown, red, black, white, gray, and dark gray are claimed as a feature of the mark.”
Description: “The mark consists of a motion mark of a yellow background of an animator's drawings of a red outline of mouse character visually flipping one after another and transitioning a gray and dark gray background with an animated square clip of a black and white mouse character tapping his foot and whistling while holding a gray ship's wheel outlined in black with a gray and dark gray mountain landscape in the background, followed by the appearance of the brown wording “WALT DISNEY” above the red wording “ANIMATION STUDIOS” underneath the square clip.”
See TMEP §807.07(b).
REQUIREMENT – DISCLAIMER OF DESCRIPTIVE WORDING
Applicant must disclaim the wording “ANIMATION STUDIOS” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from ahdictionary.com shows the wording ANIMATION means “[t]he art or process of making movies with drawings, computer graphics, or photographs of static objects, including all techniques other than the continuous filming of live-action images” and the wording STUDIOS is the plural form of the word “studio” which means “[a] room, building, or group of buildings where movies, television shows, or radio programs are produced.” Thus, the wording merely describes applicant’s services because it describes a characteristic of applicant’s services, namely, the type of motion pictures and the type of place the services are provided.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ANIMATION STUDIOS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ASSISTANCE
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.
Christina Calloway
/Christina Calloway/
Trademark Examining Attorney
Law Office 122
United States Patent and Trademark Office
Christina.Calloway@uspto.gov
571-272-7342
RESPONSE GUIDANCE