PROUD POUR REGISTERS 3D OYSTER SHELL MEDALLION FOR WINE

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.

Blog by: Mary B. Aversano
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MINISTERE DE L’ARTISANAT ET DE L’ECONOMIE SOCIALE ET SOLIDAIRE REGISTERS CERTIFICATION MARK FOR POTERIE DEMNATE – POTTERY FROM AND MADE IN DEMNATE REGION OF MOROCCO

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.

Blog by: Mary B. Aversano
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PEROT MUSEUM OF NATURE AND SCIENCE REGISTERS 3D BUILDING CONFIGURATION

 

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;

021114

 

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

hfa

  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

 

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FEDERAL DEFENDERS OF EASTERN WASHINGTON AND IDAHO (FD of EWaI) REGISTER COLOR RED AND TITLE FOR “MY LITTLE RED RULES BOOK”

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.

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CLAIRE FLOWERS REGISTERS “PINK” HEEL SHOE DESIGN

Claire Flowers applied for a shoe design that “consists of a pink heel cap on women’s high heel footwear that contrasts with the color of the heel and sole of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark.”

The drawing of the mark is below left and a sample of the footwear to the right.

Drawing pink heelBLK shoes Pink heels red shoe7

 

After submission of the application, the USPTO assigned the following 09.07.06 – Other women’s shoes. A search under this design code revealed:

gold sole shoe pink shoe2   heel shoe4  pink shoe5pink shoe3   pink shoe4  red sole shoebw sole shoe    green shoe5

 

And 09.07.08 – Heels, shoe; Supports, arch; Arch supports:

red shoe5   green shoe6  pearl shoe6 red shoe6

 

The Examining Attorney also searched under 29.03.01 Single [red or pink] color used on a portion of the goods or on a portion of items used in rendering the services which revealed:

red mark1     red mark2  red mark3   red mark4red mark5

 

After the search, the application was approved for publication. No office action issued! Registered in 7 months from application (U.S. Reg. No. 5171367).

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HM ELECTRONICS REGISTERS 3D HEADSET DESIGN

HM Electronics applied for a 3D Headset Design described as, “a portion of a headset. The broken lines depicting elements of the headset indicate placement of the mark on the goods, but are not part of the mark as shown” and submitted the drawing and specimen below:

 

     

 

The USPTO assigned the design code – 16.01.07 – which covers headphones, headsets, microphones. A search under this design code reveals:

 

Mark Image  Mark Image  Mark Image

 

Mark Image  Mark Image  Mark Image

 

Mark Image Mark Image Mark Image

Trademark image     Mark Image    Mark Image  Mark Image

 

The Examining Attorney issued an office action with several objections: (i) non-distinctive product design and (ii) functionality; as well as drawing and description clarification. HM Electronics responded and the non-distinctive product design was withdrawn but the other issues remained and a second office action issued. The remaining issues were resolved and the application was approved for publication.

The mark description was modified to read: “[t]he elements of the mark are the button overlay, including the overlay shape, button openings and button opening layout, the casing shape, including the generally circular case and the curved upper part and the boom connector, including the rounded disk and cylindrical protrusion. The broken lines depicting the over-the-head band, the ear cushion, the buttons, and the boom microphone indicate placement of the mark on the goods and are not part of the mark.” Along with a revised drawing:

Original                                                              Revised

     

However, the application was withdrawn from publication on the grounds that the acquired distinctiveness claim was less than 5 years. This seems to be a new trend with the USPTO. In the past, the 5 year prima facie rule could be bypassed with additional evidence. That is, an applicant could show acquired distinctiveness in <5 years with an abundance of evidence. But recently, applications with < 5 years, are being returned to the Examining Attorney for further analysis.

In this case two more office actions issued with the Examining Attorney stating, “[i]n the present case, applicant’s evidence consists of the following nearly 5 years use, declarations, sales and advertising figures, advertising materials and consumer recognition reports.  This evidence is insufficient to show acquired distinctiveness of the proposed mark because of the limited amount of years in use (less than five years). Additionally, the marketing and advertising does not specifically point to or reference the ‘distinctive’ flower design, nor does it feature  ‘look for’ marketing evidence that touts the flower design.  Additionally, the consumer recognition evidence only consists of 1 affidavit from an actual customer (McDonald’s Manager), which is not sufficient to show consumer recognition to establish acquired distinctiveness.”

HM Electronics continued to provide additional declarations and information as requested from the Examining Attorney. In its last submission, several of the advertisements for the 3D Headset Design contained the requisite “look for” advertising at the bottom of the page, i.e.,  “EOS | HD = Look for the unique earpiece design”. In many applications and in this case, evidence of the “look for” advertisement can be the “key” tipping point for demonstrating that the “mark” does function as a source identifier.

After submission of the additional information, the application was approved for a second time and a registration (U.S. Reg. No. 5144104) issued February 21, 2017.

Blog by: Mary B. Aversano
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