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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`SERIAL NO:
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`77/310197
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`IllIll||||lllllllllllllllllllllIllIll
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`CORRESPONDENT ADDRESS:
`GRANT R- CLAYTON
`CLAYTON: HOWARTH & CANNON: P-C
`P.O. BOX 1909
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`RESPOND TO THIS ACTION:
`http:l/www.uspto:gov/teas/eTEASpageD.htm
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`SANDY’ UT 84091
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`GENERAL TRADEMARK INFORMATION:
`
`http://www.uspto.gov/main/trademarks.htm
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`APPLICANT :
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`Cafe Rio, Incorporated
`
`CORRESPONDENT’S
`REFERENCE/DOCKET NO:
`T9870.C
`CORRESPONDENT E-MAIL ADDRESS:
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`OFFICE ACTION
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`TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
`OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
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`ISSUE/IVIAILING DATE:
`
`This letter responds to the applicant’s correspondence filed on April 7, 2009. The new drawing is
`acceptable and has been made of record.
`
`The applicant has not submitted new specimens that match the drawing. The applicant’s color
`description is not acceptable because the applicant does not give the colors of the mark as displayed in
`the drawing with enough specificity.
`
`The applicant has raised a new issue in the response. The examining attorney withdraws the final
`refusal based on Sections 1, 2, and 45 as the mark fails to function. The examining attorney maintains
`and continues the refusal to register because the mark fails to function under Sections 1, 2, and 45.
`
`Section 2;!) Claim Fails
`In the prior office action the examining attorney explained that the burden of demonstrating acquired
`distinctiveness in connection with a color mark was extraordinarily high. The applicant claimed
`acquired distinctiveness based on substantially exclusive and continuous use in the five years prior to the
`statement. Five years use is not enough to establish that the proposed mark has acquired
`distinctiveness.
`
`The Court of Appeals for the Federal Circuit has ruled on the seminal case regarding the registerability
`of color in connection with goods or services.
`In In Re Owen Corning Fiberglas Insulation, 777 F. 2d
`1116, the U.S. Court of Appeals for the Federal Circuit held that the color pink had become distinctive
`of the appellant’s insulation by virtue of exclusive and continuous use and that it had acquired secondary
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`meaning in the marketplace.
`The appellant had substantial evidence that the color pink had acquired secondary meaning in the
`marketplace in connection with insulation. Among the evidence submitted by the appellant was
`advertising expenditures for the years 1972 through 1981, which contained an expenditure of
`11,400,000 dollars in 1981 alone. Id at 1129. The appellant submitted its network television advertising
`schedule for the period between August 17, 1980 and March 30, 1981. The appellant had purchased
`close to 200 blocks of advertising time during broadcasts of major sporting events such as the Super
`Bowl, the Rose Bowl, the U.S. Tennis Open and the World Series. The appellant had also purchased
`time on shows such as 60 Minutes and M.A.S.H. Id
`The appellant also submitted evidence that the advertising specifically linked the color pink with the
`insulation. The appellant submitted storyboards of commercials featuring the Pink Panther to promote
`the use of “pink” Owens Corning Fiberglas Insulation. The commercials also emphasized that
`homeowners could cut their energy costs by adding another layer of “pink” in their attics. They also
`used the slogan “Put your house in the Pink.” Id at 1131.
`The applicant also submitted evidence of radio advertising linking the color pink to the appellant’s
`insulation. The radio advertising told consumers to “think pink.” The appellant also advertised in
`popular magazines that emphasized the pink color of the insulation. Id at 1134.
`The Court stated that “By their nature color marks carry a difficult burden in demonstrating
`distinctiveness and trademark character.” Id at 113 7. The Court concluded that the appellant had more
`than met its burden of showing that the color “pink” had acquired distinctiveness in connection with
`insulation.
`The applicant has not met its burden of showing that the color mark has acquired distinctiveness in this
`case. The applicant has not submitted evidence of advertising expenditures for the years it has been in
`business. It has not submitted evidence that consumers recognize the color patterns on the tables and
`chairs of the applicant’s restaurant as belonging exclusively to the applicant’s restaurants. The applicant
`has not submitted evidence that the applicant uses its distinctive color scheme in advertising its
`restaurant services. The applicant has merely submitted evidence that the applicant uses different
`' combinations of brightly colored swirled patterns on the tables and chairs in its restaurant. The
`applicant has merely shown the décor of its restaurants. The applicant has not met its burden of
`demonstrating that the proposed mark has acquired distinctiveness.
`Furthermore, the applicant should be aware of the following precedent regarding the interior decor of a
`restaurant. The applicant in In Re Tad ’s Wholesale, 132 USPQ 648 (1962), attempted to register a
`wallpaper design in the applicant’s restaurants. The applicant’s specimens showed the panels of
`wallpaper in the applicant’s restaurants. Id.
`
`The Trademark Trial and Appeal Board first defined a service mark as “a mark used in the sale or
`advertising of services to identify the services of one person and distinguish them from the services of
`others.” The Board stated that the applicant was attempting to register wallpaper design used in its
`restaurants and “as such, it is not being used by the applicant to identify its services and distinguish them
`from the services of others.” Id.
`The applicant is attempting to register paint colors on the tables and chairs of its restaurants. Consumers
`would not View the applicant’s proposed mark as anything but the decor of the restaurant. The applicant
`has not established that manner in which the restaurant is decorated serves to identify services of the
`applicant and to distinguish its services from others.
`For the above reasons, the claim of acquired distinctiveness under Section 2(f) fails. The refusal under
`Sections 1, 2, and 45 that the proposed mark fails to function as a service mark is maintained and
`continued.
`-
`The applicant should also respond to the following.
`Drawi1_1g and Sp_ecimens do not Match
`In the prior office action the examining attorney required that the applicant’s drawing and specimens
`match. The applicant has not submitted new specimens that match the new drawing. The drawing
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`requirement is maintained and continued. The configuration of the table and chairs in the current
`specimens do not match the configuration of the table and chairs as shown on the drawing.
`Color Location Statement
`In the prior office action the examining attorney required that the applicant submit a proper color claim
`and a proper color location statement. The applicant has submitted a proper color claim. The applicant
`has attempted to submit a color description; however, the color description does not describe the
`location of the colors on the mark with enough specificity. TMEP Section 807.07(a)(ii). A properly
`worded color claim is as follows.
`The mark consists of colored paint designs on the surface of tables and chairs. The mark consists
`of the surfaces of three chairs and a square table in the following order from left to right: one
`green and yellow chair, one green and red chair and one orange, purple and red chair with a
`square table in the middle in yellow and purple. The applicant does not claim the shape of the
`chairs or of the table as a part of the mark.
`_
`The applicant should note now that the applicant has placed the proper elements in dotted lines, the
`applicant should explain what the dotted lines in the drawing mean. TMEP Section 807.08.
`Disclaimer
`The applicant has inserted a disclaimer that effectively disclaims the entire mark. The applicant may not
`disclaim the entire mark. TMEP Section 1213.06. The disclaimer should be deleted from the
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`application.
`Ifthe applicant needs assistance in responding to this office action, please contact the examining
`attorney.
`
`/Dawn Feldman Lehker/
`
`Trademark Examining Attorney
`United States Patent and Trademark Office
`
`(571)272-9381
`F (571) 273-9111
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`RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the
`form at hgp://www.uspto.gov/teas/eTEA§pageD.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 Oflice 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.
`
`Ifresponding 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.
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`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 ofthe
`complete TARR screen. Ifthe status of your application has not changed for more than six months,
`please contact the assigned examining attorney.
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