UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 8/26/2008

 

The examining attorney has reviewed the applicant’s Statement of Use, filed 8-15-08, and determined the following.

 

ORNAMENTAL REFUSAL: REPETITIVE DESIGN OR PATTERN NONDISTINCTIVE

 

Registration is refused because the applied-for mark, consisting of a repeated design or pattern used on some or all of the surfaces of a product or product packaging, is not inherently distinctive.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §904.07(b).  Similar to color marks, which consist of one or more colors used on some or all of the surfaces of a product or product packaging, such use of a pattern or repeated design does not “immediately . . . signal a brand or a product ‘source.’”  Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163, 34 USPQ2d 1161, 1162 (1995).

 

Accordingly, such marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness.  Cf. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000); Qualitex, 514 U.S. at 163, 34 USPQ2d at 1163; In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985).

 

Applicant’s skull mark is repeated over the surface of applicant’s lounge pants more than twenty times on the front of the lounge pants alone. The mark is everywhere, on the waistband, the fly front, up and down the legs, and presumably in the back, as well, although that is not shown. It looks like a print. One of the things that is considered in an ornamentation refusal is the trade usage for the goods, or, in other words, where is the relevant public accustomed to finding the trademark on a pair of “lounge pants.” The answers: on a label sewn into the waistline, on a hang tag, represented neatly and discreetly once on the front of the pant, on the outside.  However, the skull mark is repetitive all over the pant and is not functioning as a trademark for lounge pants.

 

ORNAMENTAL – EVIDENCE

 

Applicant may respond to the stated ornamental refusal by satisfying one of the following, as appropriate:

 

(1)        Claiming acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods in commerce.  Trademark Act Section 2(f), 15 U.S.C. §1052(f).  Evidence may consist of examples of advertising and promotional materials that specifically promote, as a trademark, the mark for which registration is sought; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark; and any other evidence that establishes recognition of the applied-for mark as a trademark for the goods.  See 37 C.F.R. §2.41(a); TMEP §§1202.03(d), 1212.06 et seq.;

 

(2)        Submitting evidence that the applied-for mark is an indicator of secondary source or sponsorship for the identified goods.  Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1405 (TTAB 1994); In re Olin Corp., 181 USPQ 182, 182 (TTAB 1982).  That is, applicant may submit evidence showing that the applied-for mark would be recognized as a trademark through applicant’s use of the mark with goods and/or services other than those identified in the application.  In re The Original Red Plate Co., 223 USPQ 836, 837 (TTAB 1984).  Applicant must establish that, as a result of this use in connection with other goods and/or services, the public would recognize applicant as the secondary source of, or sponsor for, the identified goods.  See TMEP §1202.03(c).;

 

(3)        Amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.; or

 

(4)        Submitting a substitute specimen that shows non-ornamental trademark use, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “The substitute specimen was in use in commerce prior to the expiration of time allowed to applicant for filing a statement of use.”  37 C.F.R. §2.59(b)(2); TMEP §904.05.  If submitting a substitute specimen requires amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.

 

INFORMAL COMMUNICATIONS

 

The most expeditious way to solve disclaimer or goods or services description issues is by informal E-mail or voicemail. The following personal contact information is for applicant’s convenience, for trial runs, discussions or solutions involving examiner’s amendments.

 

Jill C. Alt

jill.alt@uspto.gov

(571) 272-9444 (Tel.)

(571) 273-9444 (Fax)

 

Formal communications must utilize the TEAS system of electronic response or the United States Postal Service.

 

 

 

 

 

 

/Jill C. Alt/

Law Office 114, Tel. (571) 272-9444

Fax. (571) 273-9444

jill.alt@uspto.gov

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.