MCDAVID, INC.
clothing, namely, shirts, shorts, tights, athletic support tops, athletic crop tops, tops, briefs, girdles, compression shirts, compression tops, compression shorts,compression pants [, heel inserts, wrist bands ]
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
RESPONSE
This is in response to the Office Action issued on February 28, 2008, in connection
with the above-identified application.
REMARKS
The Applicant provides the following arguments in response to the initial
determination that the description of the mark in the application is unacceptable and does
not match the mark depicted in the drawing page.
The Office has determined that the Application contains an inaccurate description of
the mark shown on the Applicants drawing page. The Applicant respectfully disagrees with
this determination. The Application as filed contains a drawing page showing exactly what
the Applicants Hex Configuration (the mark applied for in the Application) looks like when
viewing it straight on or frontally, and the description in the Application clearly states that
the Applicants Hex Configuration is a configuration of the goods.
The Applicants Hex Configuration consists of repeated polygons arranged closely
together in an overall rectangular shape placed on the goods. All of the polygons of the
Applicants Hex Configuration are elevated slightly above the surface of the goods on which
the mark is placed. The depth aspect of the polygons in Applicants Hex Configuration is
very shallow. The repeated polygons of the Applicants Hex Configuration are positioned so
closely together and elevated so slightly above the surface of the Applicants goods that it
would be extremely difficult, if not entirely impossible, to provide the Office with a drawing
different from the drawing already on file that would accurately and clearly show the three-
dimensional aspect of the Applicants configuration.
SN: 77/094660
Barbara A. Gold
Law Office 106
For reference, the Applicant provides, by way of example only, the following picture1
of the Applicants goods bearing its Hex Configuration mark so that the Office may see just
how difficult it would be to provide a drawing of the Applicants Hex Configuration as it
appears on the goods showing the three-dimensional aspect.
When comparing the above picture to the Application drawing page, one gets an indication
of how thin the depth of the Applicants mark is. The depth is perceptible, but given how
close together the polygons are, it would be virtually impossible to draw.
The Office cites to TMEP Section 807.01 and the Trademark Trial and Appeal Board
(Board) decision in In re L.G. Lavorazioni Grafite S.r.l. to support its determination of a
perceived discrepancy between the Applicants drawing and written application and its
procedural decision to disregard the Applicants written application and only to look to the
1
The Applicant does not intend this example to be a specimen of use for the purpose of alleging use of the mark
in commerce. The Applicant will file either an amendment to allege use or a statement of use separately and
later in the application process.
-2-
SN: 77/094660
Barbara A. Gold
Law Office 106
Applicants drawing page to identify the Applicants mark. The Applicant submits that the
Offices reliance on this procedure and case for identifying what mark the Applicant has
applied to register in its Application is misplaced. TMEP Section 807.01 and the In re L.G.
Lavorazioni Grafite case address meeting the minimum application filing requirements
necessary to receive an application filing date and how the Office should make that
determination in the face of a drawing actually differing from the accompanying written
description of a mark.
Unlike the application parts filed by the petitioner in the Lavorazioni Grafite case, the
application materials filed by the Applicant include a written description of a mark that
matches the mark depicted on the drawing page. The petitioner in the Lavorazioni Grafite case
submitted a written description of its mark that read only Device Mark, while the
application drawing page included a design as well as two written words. Because of this
discrepancy between the written portion of the application and the drawing page, the Office
could not determine which mark the petitioner had applied to register. In order to facilitate
the petitioners receiving a filing date and to develop a future system for examiners to use to
determine whether minimum filing requirements have been met, the Board developed a
system for handling such circumstances. The Board describes this system as follows:
if an applicant submits a separate drawing page showing a mark, and a
different mark appears in the written application, the Office will grant a filing
date to the application; the mark that appears on the drawing page will
control, and the Office will disregard the mark in the written application.
In re L.G. Lavorazioni Grafite S.r.l., 61 U.S.P.Q.2d 1063, 1064 (TTAB 2001).
The Applicants circumstances are not the circumstances of the Lazorazioni Grafite
petitioner. Instead, the Applicants written description and the drawing page match one
-3-
SN: 77/094660
Barbara A. Gold
Law Office 106
another, and, as a result, the Applicant received a filing date. The Lazorazioni Grafite case
concerns assessing patent discrepancies between a written description and drawing of a
mark for the purposes of giving an applicant a filing date and not for making a final
determination about the appearance of a mark in a drawing when the drawing matches the
way a mark is used on the goods.
The Applicants written description states that the mark consists of a configuration
of the goods. The Applicants drawing page shows the Applicants Hex Configuration mark
from a straight-on or front facing view. The Applicant submits that together the written
description and drawing accurately depict the Applicants Hex Configuration applied for in
the Application.
The main purpose of the drawing in an application is to provide notice of the nature of
the mark sought to be registered. TMEP § 807. The Applicants drawing as filed
accomplishes this purpose. Trademark law requires that the mark in a drawing agree with
the mark as used on the specimen in a Section 1 application. 15 U.S.C. §1051. Throughout the
TMEP, the Office repeats this requirement and provides that for a Section 1 application the
drawing of a mark must be a substantially exact representation of the mark as it appears on a
specimen of use. TMEP §§ 807.03(e) and 807.12(e). The TMEP requires that an examining
attorney determine whether the mark as used on the specimens is a substantially exact
representation of the mark on the drawing. TMEP §1109.09(b). It is the Offices practice to
require that an applicant amend its drawing page if the drawing is not a substantially exact
representation of the mark as used on the goods, so long as such amendment would not
materially alter the mark. TMEP § 1109.12.
-4-
SN: 77/094660
Barbara A. Gold
Law Office 106
The Applicant submits that in the Office Action the Office got ahead of itself in
making a final determination as to what shall appear in the Applicants drawing. The Office
Action states that any amendments to the drawing which show the mark as a three
dimensional design on the goods would be unacceptable as a material alteration of the
applied-for-mark. The Applicant submits that the applied for mark is the Applicants Hex
Configuration, which is a three dimensional design and is accurately pictured in the
application drawing.
As demonstrated by the above representative example of the Applicants goods, the
drawing as filed is a substantially exact representation of the mark as it appears on the
Applicants goods. The Office Action states that there is no mention in the application of a
three dimensional mark. The Applicant disagrees. The written description clearly states
that the mark is a configuration of the goods, which description conveys that the mark is
three dimensional. For three dimensional marks, the trademark law states that the drawing
must depict a single rendition of the mark, and the applicant must indicate that the mark is
three-dimensional. 37 C.F.R. 2.52(b)(2). The Applicants drawing depicts a single rendition
of the Applicants Hex Configuration, and the Applicants written description indicates that
the Applicants Hex Configuration is three-dimensional. The Applicant respectfully submits
that it has met the statutory requirements for a three-dimensional mark. If the Office were to
require the Applicant to re-file this Application, the Applicant does not know how it would
draw the mark differently on the drawing page to reflect the three-dimensional aspect of its
mark because of how closely spaced together the polygons of its configuration are and how
thin the depth of its configuration is.
-5-
SN: 77/094660
Barbara A. Gold
Law Office 106
The Applicant therefore respectfully submits that its drawing and description should
be acceptable as filed.
CONCLUSION
The Applicant respectfully requests that the requirement to amend the description of
its mark be withdrawn and that the application be allowed for publication at the earliest
convenience of the Office.
-6-
RESPONSE
This is in response to the Office Action issued on February 28, 2008, in connection
with the above-identified application.
REMARKS
The Applicant provides the following arguments in response to the initial
determination that the description of the mark in the application is unacceptable and does
not match the mark depicted in the drawing page.
The Office has determined that the Application contains an inaccurate description of
the mark shown on the Applicants drawing page. The Applicant respectfully disagrees with
this determination. The Application as filed contains a drawing page showing exactly what
the Applicants Hex Configuration (the mark applied for in the Application) looks like when
viewing it straight on or frontally, and the description in the Application clearly states that
the Applicants Hex Configuration is a configuration of the goods.
The Applicants Hex Configuration consists of repeated polygons arranged closely
together in an overall rectangular shape placed on the goods. All of the polygons of the
Applicants Hex Configuration are elevated slightly above the surface of the goods on which
the mark is placed. The depth aspect of the polygons in Applicants Hex Configuration is
very shallow. The repeated polygons of the Applicants Hex Configuration are positioned so
closely together and elevated so slightly above the surface of the Applicants goods that it
would be extremely difficult, if not entirely impossible, to provide the Office with a drawing
different from the drawing already on file that would accurately and clearly show the three-
dimensional aspect of the Applicants configuration.
SN: 77/094660
Barbara A. Gold
Law Office 106
For reference, the Applicant provides, by way of example only, the following picture1
of the Applicants goods bearing its Hex Configuration mark so that the Office may see just
how difficult it would be to provide a drawing of the Applicants Hex Configuration as it
appears on the goods showing the three-dimensional aspect.
When comparing the above picture to the Application drawing page, one gets an indication
of how thin the depth of the Applicants mark is. The depth is perceptible, but given how
close together the polygons are, it would be virtually impossible to draw.
The Office cites to TMEP Section 807.01 and the Trademark Trial and Appeal Board
(Board) decision in In re L.G. Lavorazioni Grafite S.r.l. to support its determination of a
perceived discrepancy between the Applicants drawing and written application and its
procedural decision to disregard the Applicants written application and only to look to the
1
The Applicant does not intend this example to be a specimen of use for the purpose of alleging use of the mark
in commerce. The Applicant will file either an amendment to allege use or a statement of use separately and
later in the application process.
-2-
SN: 77/094660
Barbara A. Gold
Law Office 106
Applicants drawing page to identify the Applicants mark. The Applicant submits that the
Offices reliance on this procedure and case for identifying what mark the Applicant has
applied to register in its Application is misplaced. TMEP Section 807.01 and the In re L.G.
Lavorazioni Grafite case address meeting the minimum application filing requirements
necessary to receive an application filing date and how the Office should make that
determination in the face of a drawing actually differing from the accompanying written
description of a mark.
Unlike the application parts filed by the petitioner in the Lavorazioni Grafite case, the
application materials filed by the Applicant include a written description of a mark that
matches the mark depicted on the drawing page. The petitioner in the Lavorazioni Grafite case
submitted a written description of its mark that read only Device Mark, while the
application drawing page included a design as well as two written words. Because of this
discrepancy between the written portion of the application and the drawing page, the Office
could not determine which mark the petitioner had applied to register. In order to facilitate
the petitioners receiving a filing date and to develop a future system for examiners to use to
determine whether minimum filing requirements have been met, the Board developed a
system for handling such circumstances. The Board describes this system as follows:
if an applicant submits a separate drawing page showing a mark, and a
different mark appears in the written application, the Office will grant a filing
date to the application; the mark that appears on the drawing page will
control, and the Office will disregard the mark in the written application.
In re L.G. Lavorazioni Grafite S.r.l., 61 U.S.P.Q.2d 1063, 1064 (TTAB 2001).
The Applicants circumstances are not the circumstances of the Lazorazioni Grafite
petitioner. Instead, the Applicants written description and the drawing page match one
-3-
SN: 77/094660
Barbara A. Gold
Law Office 106
another, and, as a result, the Applicant received a filing date. The Lazorazioni Grafite case
concerns assessing patent discrepancies between a written description and drawing of a
mark for the purposes of giving an applicant a filing date and not for making a final
determination about the appearance of a mark in a drawing when the drawing matches the
way a mark is used on the goods.
The Applicants written description states that the mark consists of a configuration
of the goods. The Applicants drawing page shows the Applicants Hex Configuration mark
from a straight-on or front facing view. The Applicant submits that together the written
description and drawing accurately depict the Applicants Hex Configuration applied for in
the Application.
The main purpose of the drawing in an application is to provide notice of the nature of
the mark sought to be registered. TMEP § 807. The Applicants drawing as filed
accomplishes this purpose. Trademark law requires that the mark in a drawing agree with
the mark as used on the specimen in a Section 1 application. 15 U.S.C. §1051. Throughout the
TMEP, the Office repeats this requirement and provides that for a Section 1 application the
drawing of a mark must be a substantially exact representation of the mark as it appears on a
specimen of use. TMEP §§ 807.03(e) and 807.12(e). The TMEP requires that an examining
attorney determine whether the mark as used on the specimens is a substantially exact
representation of the mark on the drawing. TMEP §1109.09(b). It is the Offices practice to
require that an applicant amend its drawing page if the drawing is not a substantially exact
representation of the mark as used on the goods, so long as such amendment would not
materially alter the mark. TMEP § 1109.12.
-4-
SN: 77/094660
Barbara A. Gold
Law Office 106
The Applicant submits that in the Office Action the Office got ahead of itself in
making a final determination as to what shall appear in the Applicants drawing. The Office
Action states that any amendments to the drawing which show the mark as a three
dimensional design on the goods would be unacceptable as a material alteration of the
applied-for-mark. The Applicant submits that the applied for mark is the Applicants Hex
Configuration, which is a three dimensional design and is accurately pictured in the
application drawing.
As demonstrated by the above representative example of the Applicants goods, the
drawing as filed is a substantially exact representation of the mark as it appears on the
Applicants goods. The Office Action states that there is no mention in the application of a
three dimensional mark. The Applicant disagrees. The written description clearly states
that the mark is a configuration of the goods, which description conveys that the mark is
three dimensional. For three dimensional marks, the trademark law states that the drawing
must depict a single rendition of the mark, and the applicant must indicate that the mark is
three-dimensional. 37 C.F.R. 2.52(b)(2). The Applicants drawing depicts a single rendition
of the Applicants Hex Configuration, and the Applicants written description indicates that
the Applicants Hex Configuration is three-dimensional. The Applicant respectfully submits
that it has met the statutory requirements for a three-dimensional mark. If the Office were to
require the Applicant to re-file this Application, the Applicant does not know how it would
draw the mark differently on the drawing page to reflect the three-dimensional aspect of its
mark because of how closely spaced together the polygons of its configuration are and how
thin the depth of its configuration is.
-5-
SN: 77/094660
Barbara A. Gold
Law Office 106
The Applicant therefore respectfully submits that its drawing and description should
be acceptable as filed.
CONCLUSION
The Applicant respectfully requests that the requirement to amend the description of
its mark be withdrawn and that the application be allowed for publication at the earliest
convenience of the Office.
-6-