Pueblo Chile Grower’s Association registers Certification Mark for PUEBLO CHILE and Design in Pueblo, Colorado

Pueblo Chile Grower’s Association (the “Grower’s Association”) filed for a certification mark to cover Pueblo Chile grown in Pueblo Colorado for fresh chiles. The mark is:


Pueblo Chile picture

Description: The mark consists of a painting of a farming field with trees and structures with sky and mountains in the background. The mark further consists of a rectangular border around the painting. The outlined words “PUEBLO CHILE” overlay a top portion of the picture. The words “GROWN WITH ROCKY MOUNTAIN WATER” and “COLORADO SUNSHINE” are beneath “PUEBLO CHILE”. A band overlays and appears at the bottom portion of the painting. The words “FROM PUEBLO, COLORADO” appear beneath “CERTIFIED” on the left side of the band. A bordered circle containing a bundle of chile peppers overlays the right side of the band. The words “PUEBLO CHILE GROWERS ASSOCIATION, PUEBLO, CO” overlay the bottom left portion of the border.

Certification Statement: The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods provided have been grown in Pueblo County, Colorado.

Design Codes assigned by the USPTO: 05.11.09 – Peppers, 06.01.04 – Mountains (landscapes); Scenery with mountains, 06.09.03 – Farms, 26.01.17 – Circles, two concentric; Two concentric circles; Concentric circles, two, 26.01.21 – Circles that are totally or partially shaded. 26.11.21 – Rectangles that are completely or partially shaded.

The application was approved and registered (Reg. No. 5816418) on May 14, 2019.

Of interest are additional marks containing the phrase “Pueblo Chile” from Pueblo, Colorado:

Mark Image  – the Grower Association’s certification mark registration for fresh chiles.

PUEBLO CHILE GROWERS ASSOCIATION – the Grower Association’s supplemental registration for Advertising and promotional services; Association services, namely, promoting awareness of chile grown in Pueblo County Colorado to the public; Association services, namely, promoting the interests of chile growers in Pueblo County Colorado; Association services, namely, promoting public awareness of chile grown in Pueblo County Colorado; Promoting the interests of chile growers in Pueblo County Colorado by means of an association; Trade association services, namely, promoting the interests of chile growers in Pueblo County Colorado.

PUEBLO CHILE BEER – The Walter Brewing Company in Pueblo Colorado supplemental registration for Beer; Beer, ale and lager; Beer, ale, lager, stout and porter; Beer, ale, lager, stout, porter, shandy; Craft beers; Flavored beers; Malt extracts for making beer.

pueblo – Mira Sol Chile Corp. in Pueblo Colorado registration covering chile products, namely, red chile sauce, green chile sauce and salsa made with chiles. The phrase “PUEBLO CHILE” is disclaimed, meaning Mira Sol does not claim rights to the phrase alone but only in connection with the mark. Mark consists of three chile peppers wearing sunglasses in front of a sun with sombreros in their hands and a banner over the top with the words “PUEBLO CHILE” on it.

pbchile pic

Side bar: The Grower’s Association at one point filed a Certification Mark for PUEBLO CHILE. This application was blocked by the Mira Sol trademark registration shown above.

It is this blogger’s contention that the Grower’s Association Certification Mark application was improperly compared to the trademark registration by Mira Sol for chile sauces. A Certification Mark application is used to inform purchasers about certain characteristics, qualifications or standards for a product, in this case, Pueblo Chile, whereas Mira Sol’s trademark designates the mark, Pueblo Chile and Design, as a single source for its chile sauces.

As noted in the trademark law, “[a] certification mark ‘is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark . . . .’ In re Fla. Citrus Comm’n, 160 USPQ 495, 499 (TTAB 1968). That is, the purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person.  certification mark does not indicate origin in a single commercial or proprietary source the way a trademark or service mark does.  Rather, the same certification mark is used on the goods or services of many different producers.” TMEP Section 1306.01(b) (emphasis added).

Thus, it is this blogger’s contention that both the Mira Sol trademark registration and the Grower’s Association certification mark could co-exist separately as each serve a different function under the trademark law and each seek to protect the PUEBLO CHILE in Pueblo, Colorado.

Blog by: Mary B. Aversano
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Grip Studios applied for the configuration mark described as a 3D “configuration of a hand” for “musical instrument accessories, namely stands, instrument hangers” in Class 15. Drawing and specimen, respectively, to support the application are as follows:

Trademark image



hand design 2

Design Code

The USPTO assigned the design code 02.11.07 Arms, Fingers, Hands, Human hands, fingers, arms. A search of this design code along with Class 15 for musical instruments reveals the following designs:

hand design code 3

Office Action

The Examining Attorney issued an office action with the following objections (i) functional – “when the evidence shows that the design provides identifiable utilitarian advantages to the user”; (ii) non-inherently distinctive configuration – “product design can never be inherently distinctive as a matter of law; consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source”; and (iii) modifications to the description of the mark.

Grip Studios explained that its mark is not functional, that is, the “goods are a guitar holder. The holder part of the product is not claimed as a feature of the mark. The design of a hand is designed around the functional portion of the product and has no functional purpose”; and the mark has acquired distinctiveness based on over 10 years of use in conjunction with “look for” advertising such as “marketing of the hand as a trademark to associate the hand design with the goods” and using the “tagline ‘hand made in Detroit’ with the term ‘hand’ highlighted …

Hand guitar card

to promote the association of Applicant’s hand design mark with Applicant as the source of these goods.”


Hand design 3


The original mark description, a 3D “configuration of a hand” was modified to a 3D “configuration of a left hand.”

The Examining Attorney accepted the response with the application approved for registration. A registration (U.S. Reg. No. 5694753) issued March 12, 2019.

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GurglePot applied for a fish-shaped pitcher described as a 3D “configuration of a fish-shaped container” in Class 21 for “Carafes; Ceramic sculptures, vases, vessels, bowls, plates and pots; Decanters; Flower vases and bowls; Holloware, namely, ceramic, porcelain, or earthenware water pitchers; Jugs; Pitchers; Vases; Watering pots.” Along with the application, GurglePot submitted the following as a drawing:

And the below as evidence of use:


Design Code Search

The USPTO assigned design codes: 03.19.24 – Stylized fish, whales, seals, sea lions, 03.19.25 Catfish, Other fish (this section includes basic fish), Piranhas, Salmon, Tuna, and 11.03.08 Pitchers, beverage.

A search of design code 03.19.24 and class 21 shows fish designs such as:

Mark ImageMark ImageMark Image Mark Image

Mark Image Mark ImageMark Image

03.19.25 and class 21 reveals other fish designs:

Mark ImageMark Image  Mark ImageMark Image

11.03.08 and class 21 reveals pitcher designs:

Mark Image  Mark Image Mark Image Mark Image


First Office Action – 2(d) objection in view of prior registration for fish-shaped pitcher

The Examining Attorney cited prior registration (U.S. Registration No. 3572583), shown top right of the design code search results and hereMark Image against GurglePot’s design Mark Image.

GurglePot replied by indicating that there is a consent agreement between the registrant, New Shreve, Crump & Low and GurglePot. Among other things, the parties agreed that there are “15 distinguishing material characteristics between the Gurgling Cod Pitcher [Registrant] and the GurglePot Pitcher.” Specifically, GurglePot in its reply to the USPTO stated:

  • There is a signed consent agreement between the applicant and the cited prior registrant, which complies with TMEP 1207.01(d)(viii) and the Federal Circuit cases cited therein.
  • The generalized, open-ended, imprecise scope of alleged similarity in the trade dress would grant the existing registrant exclusivity over all pitchers shaped like a vertical curved fish – an exclusivity which the registrant does not possess in the marketplace – thereby contravening the U.S. Supreme Court’s holding on product design trade dress in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000).
  • The applied-for mark is significantly different in appearance, commercial impression, and marketing channels from the cited registered.”

And indeed photographs of the products do show many differences:

Shreve Crump & Low Accents | Shreve Crump & Low Gurgling Cod Pitcher Read | Color: Green | Size: Os Medium GurglePot Gurgling Fish Water Pitcher Aqua


Second Office Action – drawing requirements

The Examining Attorney agreed to accept the consent agreement but issued another office action. This objection related to the drawing:

“In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following:

(1) Indicates that the mark is a three-dimensional configuration of the goods or their 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; and

(3) Specifies any elements which 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.”

Applicant replied with an updated description of the mark, “The mark consists of a three-dimensional configuration of a fish-shaped container. All of the elements in the drawing are claimed as part of the mark. The heavier solid lines are contour lines, which define a form or an edge of an element of the design; the lighter solid lines are used to show depth and distance in a two-dimensional drawing of the three-dimensional object. The drawing does not include any broken or dotted lines” and an updated drawing:



Third Office Action – insufficient evidence of acquired distinctiveness

The Application was approved for publication but withdrawn because of “insufficient evidence of acquired distinctiveness pointing to the configuration design as a source of goods.” Specifically, the Examining Attorney stated: “The evidence, while plentiful, does not  point to the fish shape of the goods; rather, it touts the ‘gurgling’ effect of the ceramic pitcher.  The goods are primarily branded under the GURGLE POT name, and not the actual configuration.” The Examining Attorney is referring to “look for” advertising that helps bolster an applicant’s claim that its configuration design is a source indicator (e.g., look for the fish-shaped pitcher).

GurglePot provided further evidence of use with several comments from third parties mentioning the fish configuration:

“whimsical and fun fish shaped gurgle pot”

“Add some whimsy to your dinner table with a Gurgle Pot. The fish shaped pitcher …”

“The gurgle pot is a brightly coloured fish-shaped pot …”



Based on greater than 5 years of use and the additional evidence of use referring to the fish shape, the application was again approved for publication with a registration (U.S. Reg. 5754251) issuing on May 21, 2019.


Interesting notes about this application

1) It is unusual to overcome a likelihood of confusion citation with a consent agreement. That is, it is not a given that a consent agreement will be accepted. There are specific criteria that must be met and the USPTO can and does reject these agreements.

2) To support acquired distinctiveness, the Examining Attorney requested “look for” advertising to support GurglePot’s configuration application. See TMEP §1212.06(b) Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding absence of ‘look for‘ advertisements damaging to attempt to demonstrate acquired distinctiveness of proposed configuration mark).


Blog by: Mary B. Aversano
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Good News! USPTO Issues Examination Guide 1-19 to Update Handling of Cannabis and Cannabis-Related Goods and Services in View of the 2018 Farm Bill

I.  Introduction

As noted in the April 23, 2019 blog, US trademark applications that “identified goods or services involv[ing] the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (“CSA”) … would be a basis for issuing an inquiry or refusal.” TMEP §907.  Cannabis products have been considered to contain a controlled substance.

The 2018 Farm Bill (“Farm Bill”) removes “hemp” from the CSA’s definition of marijuana, which means that cannabis plants and derivatives such as CBD that contain < 0.3% THC on a dry-weight basis are no longer considered to be controlled substances under the CSA (“hemp derived CBD/THC goods”). The USPTO issued an examination guide on May 2, 2019 to clarify the procedure for examining marks identifying hemp derived CBD/THC goods and services.

II.  Examination of marks for goods containing cannabis

The Farm Bill potentially removes the CSA as a grounds for refusal of registration, but only if the goods are derived from “hemp.”

December 20, 2018 and Onward:

  • Cannabis and CBD derived from marijuana still violate federal law, and such applications will still be refused registration regardless of the filing date.
  • For applications covering hemp derived CBD/THC goods, the identification of goods must specify that the goods contain < 0.3% THC.

Pre-December 20, 2018: Applicants will have the option of amending the application as follows:

  • Request to amend the filing date of the application to December 20, 2018. The request must specifically state that the change is authorized and there is a valid filing basis.
  • Applications originally based on use of the mark are required to be amended to intent-to-use.
  • Goods must be amended to specify that the CBD or cannabis products contain < 0.3% THC.

Caveat: Even if the goods in the application are legal under the CSA, not all are lawful following the Farm Bill. The Farm Bill explicitly preserves the FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the Federal Food Drug and Cosmetic Act (“FDCA”). Products such as CBD and hemp derived products undergoing clinical investigations without approval by the FDA violates the FDCA. Therefore, registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD, even if derived from hemp, will still be refused as unlawful under the FDCA.

III.  Examination of marks for services involving cannabis production

If the services involve cannabis that is “hemp” containing < 0.3% THC (“hemp derived services”), the applications will be examined for compliance with the Farm Bill. Applicants refused registration under the CSA will have the same options outlined in Section II., above.

For applications that recite hemp derived services involving the cultivation or production of cannabis, the examining attorney will also issue inquiries about the applicant’s authorization to produce hemp.

  • The Farm Bill requires hemp to be produced under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the US Department of Agriculture (“USDA”) for the commercial production of hemp. Until a new plan and regulations are approved by the USDA, the Farm Bill directs that states, tribes, and institutions of higher education may continue operating under authority of the 2014 Farm Bill until 12 months after the USDA establishes the new plan and regulations.

IV.  Conclusion

The good news is that the USPTO has a mechanism for handling hemp derived CBD/THC goods and services pre and post December 20, 2018. This will allow certain applicants to salvage applications that meet the requirements of the Farm Bill, in particular, goods and services involving CBD or cannabis products containing < 0.3% THC.

On the flip side, the FDA still retains authority to regulate products containing cannabis or cannabis-derived compounds undergoing clinical investigation. Consequently, registration of marks for foods, beverages, dietary supplements and pet treats containing CBD, even if derived from hemp, will still be refused registration.

Blog by: Mary B. Aversano
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Barneys opens an upscale head-shop in Beverly Hills

“The new high-end head-shop concept that opened inside Barneys New York’s Beverly Hills flagship … [is] a high-profile harbinger of where cannabis related retail – and most likely the luxury department store space – is headed in the era of legal marijuana.” Los Angeles Times article, April 7, 2019 Cannabis on the high end, P4, by Adam Tschorn (“Cannabis on the high end, P4”).

high end photo

Photograph from https://lacannabisnews.com/why-barneys-high-end-head-shop-may-be-the-future-of-cannabis-related-retail/.

The shop “is elegantly appointed and stocked with a range of upscale smoking accessories such as hand-crafted stash jars from Siemon & Salazar; imported French rolling papers by Devambez (a gift set, complete with matchbooks, a rolling tray and a vermeil joint-packing tamper, will set you back a cool $8,850); functional jewelry (necklaces from Good Art Hlywd that double as vape-pen lanyards and a lip-shaped Carole Shashona ring that converts into a stylish joint holder); hemp-derived CBD beauty and wellness products; and an assortment of vintage Hermès and Gucci ashtrays.” Cannabis on the high end, P4.

Organically luxurious purple, green and blue fluorite gemstone pipes by Jan Leslie sold out  within days of their debut at The High End, in the Beverly Hills outpost of Barneys New York. "Fluorite has a long healing tradition," Leslie says. "Many healers use it to help access intuition and cultivate wisdom."

Jan Leslie Pipe (https://www.forbes.com/sites/kyleroderick/2019/03/31/gem-trend-gemstone-pipes-by-jan-leslie-debut-in-the-high-end-at-barneys-beverly-hills/#4058cb5b5456).

French rolling papers by Devambez (https://devambez.com/).

There is also “an on-site representative from Beboe, the Los Angeles-based luxury-level cannabis brand and partner on the project.” The representative “will explain the company’s products to the canna-curious and help him or her place an order for home delivery.” Cannabis on the high end, P4.

The article further notes that “[n]on-medical cannabis use has been legal … [in California] since the November 2016 passage of Proposition 64 (it remains illegal under federal law), and a January forecast by New Frontier Data projects that total statewide cannabis sales – estimated at $2.5 billion in 2018 – will nearly double (to $4.9 billion) by 2025.” This will have a “retail and cultural ripple effect” similar to “[w]hen MedMen made … [cannabis dispensaries] a brightly lit, inviting sea of blond wood more like Starbucks than the dicey dope dens of old …” This “signifies that cannabis doesn’t have to hide under the rug anymore …” Cannabis on the high end, P4.

Trademark Registration In the United States


In the United States use and trademark registration of cannabis products and services is complicated. Cannabis remains illegal at the federal level, and, consequently, a federal trademark registration is not available. Separately, 33 states allow cannabis for medicinal purposes with 10 states (Alaska, California, Colorado, Maine, Massachusetts, Michigan, Nevada, Oregon, Vermont, Washington, and Washington DC) also allowing cannabis for recreational use (see https://medicalmarijuana.procon.org/view.resource.php?resourceID=000881). California now allows for state trademark registrations with caveats (noted below).

US Federal Registration

The USPTO does not grant federal trademark registrations for marks that violate federal law but does allow registration for ancillary lawful goods/services such as vaping pipes, clothing, and providing online information about cannabis.

USPTO Background: The federal government and, consequently the USPTO states: “if the record indicates that the mark itself or the goods or services violate federal law, an inquiry or refusal must be made.” TMEP §907 states in pertinent part that “evidence indicating that the identified goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (“CSA”), 21 U.S.C. §§801-971, would be a basis for issuing an inquiry or refusal. CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia. … [R]egardless of state law, marijuana, marijuana extracts, and the psychoactive component THC remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions. … These prohibitions apply with equal force to the distribution and dispensing of medical marijuana.”

This hard stance could be changing. Last September 2018, the DEA removed some CBD/THC products from Schedule I (see https://mjbizdaily.com/dea-moves-cbd-medicines-off-schedule-1-a-limited-expansion-of-cannabis-access/) (“drugs including CBD with THC content below 0.1% are now considered Schedule 5 drugs … The action came three months after the FDA approved its first nonsynthetic, cannabis-derived medicine, a CBD preparation for rare types of epilepsy. …”)).

And in December 2018, the President signed the Agriculture Improvement Act of 2018 (“Farm Bill”) that, among other things, removes hemp (containing less than 0.3% THC) from the purview of the CSA. It is unclear at this point whether trademark applications will be accepted for CBD preparations as the FDA is still maintaining control over cannabis products (“we treat products containing cannabis or cannabis-derived compounds as we do any other FDA-regulated products … This is true regardless of the source of the substance, including whether the substance is derived from a plant that is classified as hemp under the Agriculture Improvement Act.” See See https://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm).

Registrations for Ancillary Lawful Goods/Services: There are registrations on the Federal Register involving the sale of cannabis that bypass the requirements such as advertising for the product or providing ancillary products such as:

Reg. No. 5298522 CANNABIS FOR SALE for “advertising and directory services, namely, promoting the services of others by providing a web page featuring links to the websites of others; Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of marijuana”;

Reg. No. 5489681Trademark image for “shirts; shirts and short-sleeved shirts; graphic T-shirts; hooded sweat shirts; long-sleeved shirts; short-sleeve shirts; sports shirts; T-shirts”;

Reg. No. 5212898 Trademark image for “software, namely, downloadable software in the nature of a mobile application for use in community engagement, social networking, education and sharing of information in the field of plant cultivation, specifically cannabis and cannabis cultivation; software, namely, downloadable software for personal computers for use in community engagement, social networking, education and sharing of information in the field of plant cultivation, specifically cannabis and cannabis cultivation”;

Reg. No. 5720567 Trademark image for “e-books featuring the topic of cannabis recorded on computer media” and “Printed books in the field of cannabis.”

Reg. No. 5459745 STATE FLOWER for “[b]usiness consulting services in the fields of holistic medicine and cannabis; providing a website featuring consumer information in the field of holistic medicine and medicinal cannabis.”

State Trademark Registrations

As of January 2018, the State of California is accepting trademark applications for cannabis goods and services with certain caveats (i) classification of goods and services are those adopted by the USPTO (as noted above, the USPTO does not accept applications for cannabis products but does accept applications for ancillary products); (ii) applicant is required to state whether it previously sought to register the mark with the USPTO and, if registration was refused, to disclose the reasons why it was refused at the federal level.”


The Cannabis industry is growing, particularly in those states where it is legal for medicinal and recreational purposes (e.g., $2.5 billion in 2018 in California alone) and as shown by an uptick in the luxury retail space (e.g., Barney’s recent opening of a high-end head-shop in Beverly Hills).

However, as long as Cannabis is not legal at the federal level, registration of trademarks on both the federal and state level will be problematic for the product itself but, as shown above, ancillary goods and services can be protected. For example, under the current circumstances, Barney’s could possibly obtain a registration for THE HIGH END covering retail store services including the offering of upscale smoking accessories, French rolling papers and jewelry. Registration would not be available for cannabis products. These circumstances could be changing with the recent decision by the DEA and the passing of the Farm Bill but it is unclear, at this point, how it will play out. To be continued!

Blog by: Mary B. Aversano
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Proud Pour applied for a mark on December 15, 2017 that consists of a 3D “product packaging, which is an oyster shell that is hung from the neck of a wine bottle. The oyster shell has a hole made in it and is hung from the neck of the bottle by twine, string, a rubber band, or other similar item. The hole made in the oyster shell, the item or method used to hang the shell, and the wine bottle are not part of the mark. The broken lines depicting the hole, the item used to hang the shell, and the wine bottle are intended to show the position of the mark and are not part of the mark.”

Oyster inset

The drawing and mark in context of the wine bottle as follows:

                                    Oyster mark


The USPTO added the following design codes to the application:

03.19.18 – Conch shells;Nautilus;Sand dollars;Scallops;Shells, including sand dollars, nautilus, conch shells and scallops 

Sample drawings for design code 03.19.18

19.09.03 – Bottles, jars or flasks with straight, vertical sides;Flasks with straight or vertical sides;Jars with straight or vertical sides [Not claimed as part of the mark]

A search of 03.19.18 in connection with wine reveals the following:

Mark Image          Mark Image  Mark Image


There is also a design code that covers Oysters: 03.19.12 – Clams; Mollusks; Oysters

Sample drawings for design code 03.19.12

A search of 03.19.12 in connection with wine reveals the following:

Mark Image             Mark Image              Mark Image


No office action issued and a registration (U.S. Reg. No. 5519295) issued on July 17, 2018.

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MINISTERE DE L’ARTISANAT ET DE L’ECONOMIE SOCIALE ET SOLIDAIRE applied for a Certification mark (shown above) for pottery. This mark denotes pottery made from and in the DEMNATE region of Morocco.

Many countries characterize this type of mark as a “Geographical Indication,” i.e.   “indications which identify a good as originating in the territory of … or a region or locality in the territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.”  An Example is ROQUEFORT (U.S. Reg. No. 571,798) used to indicate cheese manufactured from sheep’s milk and cured in the caves of the Community of Roquefort (France) in accordance with their long established methods and processes.

In the United States, geographical indications are viewed as a subset of trademarks and usually designated as certification and collective marks. When applying through a Madrid Protocol application, the designation is  “Collective, Certificate or Guarantee Mark.”

For this application, the USPTO assigned several design codes:

26.01.17 – Circles, two concentric;Concentric circles, two; Two concentric circles 
26.01.21 – Circles that are totally or partially shaded. 
28.01.01 – Arabic characters 

But did not assign a design code for the center design – a vase design such as found in 19.07.19. Examples are:

Mark Image  Mark ImageMark Image Mark Image Mark ImageMark Image Mark Image Mark ImageMark Image


The Examining Attorney issued an office action seeking clarification about the designation, that is, whether the mark “is intended to certify that the goods and/or services provided have [specify].” And must state, that it “will not not engage in the production or marketing of the … services to which the mark is applied, except to advertise or promote recognition of the certification program or … the … services that meet the certification standards of the applicant.” Remaining issues involved technical issues: claiming color, disclaimer of “Poterie Demnate,” and indicating the significance of the word, Fakhar.

Applicant provided a response with the following excerpts:

Mark Description: “The mark consists of an outer brown-orange circular carrier containing the words POTERIE DEMNATE and Arabic letters in brown-orange on a white background, an inner brown-orange circle with a cut out image of a hand holding pottery both of which appear in white. The pottery contains Arabic wording appearing in brown-orange. FAKHAR appearing in the mark means or signifies or [it] is a term of art for pottery in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application.”

Certification statement:” … intended to be used by persons authorized by the certifier, is intended to certify that the goods … conform to the quality and manufacturing standards set by the certifier.”

Statement About Not Engaging In Production/Marketing of Goods/Services Being Certified: “The applicant will not engage in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods and/or services that meet the certification standards of the applicant. Certification Standards are attached hereto and made of record.”

The Examining Attorney amended the certification statement to read: “The certification mark, as intended to be used by persons authorized by the certifier, is intended to certify that the goods are from and are made in the Demnate region of Morocco and conform to the quality and manufacturing standards set by the certifier.”

Amendments were accepted and a Certification registration (Reg. No. 5,393,264) issued February 6, 2018.

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Building design

The Perot Museum originally applied for the mark described as “a three-dimensional configuration of a building” in connection with “[e]ducational services, namely, conducting programs in the fields of nature and science; Museum services; Party and wedding reception planning and coordination services; Special event planning, coordination and consultation services for social entertainment purposes.”

After the filing, the USPTO issued a design code –  07.03.25 Other buildings, including schools, hospitals and libraries. Examples are:

Sample drawings for design code 07.03.25

Also found with this design code and “educational services”;

Mark Image  Mark Image  Mark Image  Mark Image  Mark ImageMark Image  Mark ImageMark Image

The Examining Attorney issued an office action citing two issues required to be resolved: (i) a new drawing; and (ii) new mark description. In response, the Perot Museum provided the following:

Updated drawing – e.g., disclaiming the stairs and showing the stairs and under structure in dotted lines:

And a more detailed description:

The mark consists of a three-dimensional configuration of a building. The top portion of the building features a cube-like design with a partial triangle cut out of one corner. In front of the triangle is a rectangular bar design featuring squares and rectangles. Below the cube design features an abstract shape. The right side is rectangular, with one corner of the rectangle extending out onto a pointed tip. The left side is triangular, with the bottom section featuring a zig-zag-like design. The outer portion of the building is covered with quadrilaterals, squares, rectangles and triangles. The areas depicted in dotted lines are not a feature of the mark and are intended to show the placement of the mark.

Both updates were accepted and a registration (U.S. Reg. No. 5426520) issued on March 20, 2018 for the 3D Building Configuration.

Blog by: Mary B. Aversano
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Mary Aversano Leads INTA Table Topic on “Gesture Marks”

TSA62 – Gesture Trademarks: Non-Traditional Mark Protection in the United States

Saturday, May 20, from 1:15 pm – 3:15 pm

Moderator: Mary B. Aversano, Aversano IP Law, United States

Introduction – In the United States, a non-traditional trademark (NTM) is a mark other than the conventional word or 2D logo mark, and can be shown in many formats such as 3D, color, sound, motion and including gestures. A “gesture” as defined by the Merriam-Webster dictionary is “movement usually of the body or limbs that expresses or emphasizes an idea, sentiment, or attitude [e.g., he] raised his hand overhead in a gesture of triumph …”

To view the entire outline click 2017 INTA Table Topic Gesture Marks Outline.

A few observations:

  1. USPTO codes “gesture” marks with two different design codes, (i) 02.11.14 “[h]ands and fingers forming the following: handshake, finger pointing, fingers walking, OK sign, and thumbs up or thumbs down;



and (ii) 2.11.07, “hands, fingers and arms.”


  1. USPTO Design Search Code Manual currently does not make a distinction between   2D or 3D designs.
  2. There are 18,000 + mark assigned a gesture design code
  3. Prosecution of gesture marks is consistent with prosecution of other marks. See App No. 86/553,544. The application was refused registration in view of prior             registrations for similar gesture marks.

hand WWE


Blog by: Mary B. Aversano
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E: Trademarks@aversanoiplaw.com | T: (310) 904-9380





FD of EWaI applied for a 3D “rule booklet consisting of the color red that is consistent across the front and back covers … with the words “MY LITTLE RED RULES BOOK” on the front cover. The solid lines show the positioning of the mark on the goods and those features claimed by … [FD of EWaI] as its mark” to be used in connection with, “[b]ooklets in the field of select legal rules and statutes primarily for use by criminal defense lawyers practicing in the United States federal district courts (and by some federal judges).” The colors red and white are claimed as a feature of the mark. Below is a specimen, a photograph of the 2014 booklet:

Red book cover

Below is the drawing depicting the mark as applied for by FD of EWaI:

The USPTO assigned the design code 20.05.0 that covers “open books” as follows:

20.05.05 – Bibles (open)
20.05.05 – Books that are open
20.05.05 – Cook books (open)
20.05.05 – Encyclopedias (open)

A search of 20.05.05 reveals marks containing an “open book” design:

Mark Image  Mark Image   Mark Image    Mark Image

A search of 20.05.05 and “legal” pulls up the following:

Mark Image  Mark ImageMark Image

And with “red” color:

Mark Image    Mark Image      Mark Image

The Examining Attorney issued an office action with two objections:

1. Single Title of Work: application shows a single title of work which is not registrable in the United States. That is, “[t]he title of a single work, even an arbitrary title, is considered descriptive of the contents of the work itself ‘and is not associated in the public mind with the publisher, printer or bookseller;’ whereas ‘[t]he name for a series, at least while it is still being published, has a trademark function in indicating that each [work] of the series comes from the same source as the others’”; and

2. Drawing:  FD of EWaI “must depict the mark in the drawing to include broken or dotted lines to show the position of the mark on the goods.”

In response FD of EWaI provided a new mark description (“… [3D] configuration of a booklet with a red front cover and red back cover and the words “MY LITTLE RED RULES BOOK” in white on the red front cover. The broken lines depicting the outline, spine and pages of the booklet indicate placement of the mark on the goods and are not part of the mark”) and a new drawing:

FD of EWaI also addressed the “single title of work” objection by submitting evidence that the book is a series of books, at least, from 2007 to 2016:

After acceptance of the above and a disclaimer of “red rules book,” the application was approved and a registration (U.S. Reg. No. 5198040) issued May 9, 2017.

Blog by: Mary B. Aversano
Logo legalAversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380