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Thread: Dimarzio has REVIVED the blade trademark application

  1. #36
    CNC Trial by Fire kayakerca's Avatar
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    Did the zebra thing with Dim get resolved in favour of the winding community? I only ask as I noticed today that SD is providing zebra and reverse zebra as bobbin options on the webpage for the related humbucker.

    As an example. . .

    https://www.seymourduncan.com/pickup...=5bda2542e6d00

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    Take Care,

    Jim. . .
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    In the immortal words of Dr. Johnny Fever, “When everyone is out to get you, paranoid is just good thinking.”

  2. #37
    Senior Member LtKojak's Avatar
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    Quote Originally Posted by kayakerca View Post
    I noticed today that SD is providing zebra and reverse zebra as bobbin options on the webpage for the related humbucker.
    They always have, since they started the Duncan Co.

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    Pepe aka Lt. Kojak
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  3. #38
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    Yea, what zebra thing? Methinks you may be mis-remembering something.
    -rb

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    DON'T FEED THE TROLLS!

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    http://tsdr.uspto.gov/documentviewer...Index=0&page=1

    From the Office response dated September 13th. ...

    OFFICE ACTION



    STRICT DEADLINE TO RESPOND TO THIS LETTER
    TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.





    ISSUE/MAILING DATE: 9/13/2018



    The Office has reassigned this application to the undersigned trademark examining attorney.



    In response to a Final Office Action dated 02/01/18 in which the refusal under Trademark Act Sections 1, 2, and 45 for failure to function as a trademark (based on the unacceptable drawing of applicant’s applied-for three-dimensional mark) was made final, applicant submitted a Request for Reconsideration after Final Action dated 07/30/18 with a new drawing of the mark. In light of the new drawing of the mark which is now a color mark, the following Office Action is issued.



    SEARCH OF OFFICE’S DATABASE OF MARKS



    The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).



    The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.



    SUMMARY OF ISSUES:

    Refusal under Trademark Act Sections 1, 2, and 45 - Color Mark
    Trademark Act Section 2(f) Claim Unsupported
    Requirement for Information on Color Mark
    Requirement for Acceptable Drawing of the Mark and an Accurate Description of the Mark


    REFUSAL UNDER SECTIONS 1, 2, AND 45



    Registration is refused because the applied-for color mark, consisting of one color used on all of the surfaces of a product, is not inherently distinctive. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166, 34 USPQ2d 1161, 1164 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1121-23, 227 USPQ 417, 420-21 (Fed. Cir. 1985); TMEP §1202.05(a). Such marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness. See In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 n.4 (TTAB 2017) (citing TMEP §1202.05(a)).



    Color marks are never inherently distinctive and can only be registered on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995); In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 & n.4 (TTAB 2017) (citing Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000)); TMEP §1202.05(a).



    In this case, applicant seeks registration for the color cream applied to applicant’s goods. The applied-for mark fails to function as a trademark because it consists solely of a color used on applicant’s goods. When used in this manner, purchasers will not perceive the color cream as identifying applicant as the source of the goods; rather, purchasers will perceive the color as a non-source identifying feature of the goods because they are accustomed to encountering these types of goods offered in a variety of colors, including cream (see Sweetwater Sound evidence attached).



    Where the use of color is common in a particular field or industry, customers are more accustomed to recognizing color as a product feature that may enhance the attractiveness of the goods. See, e.g., In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1025 (TTAB 2017); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1441 (TTAB 2007). For that reason, an applicant in such a case has a difficult burden demonstrating that purchasers recognize a color as distinctive of applicant’s goods. See In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d at 1025; Saint-Gobain Corp., 90 USPQ2d at 1441; TMEP §1202.05(a).



    Where the use of color is common in a particular field or industry, customers are more accustomed to recognizing color as a product feature that may enhance the attractiveness of the goods. See, e.g., In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1025 (TTAB 2017); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1441 (TTAB 2007). For that reason, an applicant in such a case has a difficult burden demonstrating that purchasers recognize a color as distinctive of applicant’s goods. See In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d at 1025; Saint-Gobain Corp., 90 USPQ2d at 1441; TMEP §1202.05(a).



    The burden of proving that a color mark has acquired distinctiveness is substantial. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (holding the color pink used on fibrous glass residential insulation to have acquired distinctiveness based on evidence of twenty-nine years’ use, extensive affidavit and documentary evidence, surveys, and extensive media advertising expenditures); In re Am. Home Prods. Corp., 226 USPQ 327 (TTAB 1985) (holding combination of colors pink, white and yellow used on an analgesic/muscle relaxant tablet to have acquired distinctiveness based on evidence of more than twenty years’ use, extensive advertising, and sales of over two billion tablets from 1960-1980); cf. In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998). A mere statement of long use is not sufficient; an applicant must provide evidence demonstrating that the color mark has acquired source-indicating significance in the minds of consumers. TMEP §1202.05(a); see TMEP §1212.06.



    TRADEMARK ACT SECTION 2(f) CLAIM UNSUPPORTED



    Although registration on the Principal Register has been refused, applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f). Amending the application to Section 2(f) does not preclude applicant from also submitting arguments against the refusal(s).



    Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) in response to the functionality refusal before applicant amended the mark to a color mark. However, this evidence is insufficient to show acquired distinctiveness because, as the attached evidence demonstrates, the applied-for mark is a color mark and applicant has not demonstrated how the public associates the color cream on the goods with applicant alone. See In re MetPath Inc., 1 USPQ2d 1750, 1751-52 (TTAB 1986); TMEP §1212.06. Although applicant’s evidence may show the goods in the claimed color, none of applicant’s evidence mentions the color “cream” as a source of the goods or even mentions the color “cream” at all except to say “these picksups are available in double crème or black & creme bobbins” and “The PAF is available in double creme or black & creme coils” (page 57 of applicant’s 11/06/17 Response to Office Action). Applicant’s pickup char (page 62 of applicant’s 11/06/17 Response to Office Action) shows that applicant offers the goods in a wide variety of colors such as green, pink, red, and black and that “creme” is merely one of the “standard colors” offered. The “Dealer Declarations” and “Consumer Declarations” (which are virtually identical in form) only discuss the configuration of the goods, not the color as a source-identifying trademark. Applicant may respond by providing evidence of acquired distinctiveness for the cream color, not for the configuration.



    To support a claim under Section 2(f), applicant may submit evidence of “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, the determination involves assessing all of the circumstances involving the use of the mark. See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)). The evidence must relate to the promotion and recognition of the specific color embodied in the applied-for mark and not to the goods in general. See, e.g., In re Koninklijke Philips Elecs. N.V., 112 USPQ2d 1177, 1180 (TTAB 2014) (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, 214 USPQ 1, 4 n.11 (1982)); AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1838 (TTAB 2013).



    In this case, the applicant’s website attached does not appear to refer to the color cream as it is used on the goods and recognized by consumers. There is no “look for” reference to highlight the color as a mark or source identifying matter. Instead, applicant uses wording to indicate the source of the goods, e.g., D Activator-X™ or Super 3™. Applicant’s pickups are shown in the color cream but the color is not identified as a source of the goods. In fact, applicant’s goods are shown in the color cream but users are permitted to choose whatever color they actually want for the goods, e.g., red, yellow, neon green. See “Color Options” on applicant’s website attached as well as the following:



    My local music store had the pickup model that I wanted, but it was in a color that doesn't go with my guitar. I bought it anyway. Can I exchange it for the color I want?



    If your DiMarzio® single-coil-size pickup has a replaceable plastic cover, you can order a replacement cover in the color you want. However, in all other cases, "right model, wrong color" does not qualify for a free exchange, which is intended only for performance issues.



    Thus, there is no direct evidence that consumers see the use of the color cream as identifying applicant as the source of the goods. In addition to the above, it does not appear that applicant has exclusive use of the color cream on pickups. See:



    https://www.kieselguitars.com/products/C22B-1

    Upgrade your pickups coils to cream.



    https://www.sweetwater.com/store/det...yABEgJEIfD_BwE

    Seymour Duncan Custom Shop Little '78 Humbucking Strat Pickup – Cream



    https://www.ebay.com/i/271294725574?chn=ps

    Dragonfire Crusader Humbucker Pickup Set- Invader Type- Bridge & Neck- Cream!



    https://reverb.com/item/3243869-guit...rc=aw.ds&pla=1

    Guitar Madness G.M. Hot Shred Platinum Bridge Pickup Cream



    https://reverb.com/item/13000410-yam...rc=aw.ds&pla=1

    Yamaha SG-200 Vintage Cream Humbucker 1970’s/80’s

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  5. #40
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    https://www.kieselguitars.com/group/...bucker-pickups

    Kiesel Guitars humbuckers are available in cream or black, as well as cream/black zebra, and with cream or black bezels.



    https://www.amazon.com/Yibuy-Single-.../dp/B072FRHXCT

    Yibuy 48/50/52mm Cream Color Four Wire Single Coil Magnetic Pickup to Humbucker for Electric Guitar Set of 3



    https://www.guitarfetish.com/KP--Cre...y_p_23255.html

    KP - Cream Neodymium Single Pickup- True Vintage Sparkle - Kwikplug™ Ready



    https://www.guitarcenter.com/Bill-La...L4GC-adTypePLA

    Bill Lawrence L500XL Hot Humbucker Electric Guitar Pickup Cream



    https://guitar-compare.com/wp-conten...flet_Cimar.pdf

    The cream-colored coils are wound for very high output and the high power ferrite magnet and adjustable polepieces assure you of brightness and balance.



    Because many parties offer cream colored pickups, the mark does not appear to be distinctive of the goods through applicant’s “substantially exclusive and continuous use of the mark in commerce”.



    ADVISORY ON SUPPLEMENTAL REGISTER



    Applicant may also respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal. TMEP §816.04.



    INFORMATION REQUIREMENT



    To permit proper examination of the applied-for color mark, applicant must provide the following information and documentation:



    (1) An explanation as to whether the identified color serves any purpose as used on the goods – for example, do consumers want to match the color on guitar pickups to the color on other features on the guitar?



    (2) An explanation as to whether the identified color is a natural by-product of the manufacturing process for the goods



    (3) Any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the applied-for color mark



    (4) An explanation as to whether any statutes, regulations, ordinances, codes or industry standards require, regulate and/or standardize the use of the identified color on the goods



    (5) An explanation as to the use of the identified color in applicant’s industry and any other similar use of color in applicant’s industry (see discussion above and evidence attached regarding similar use of color in applicant’s industry)



    (6) An explanation describing any other similar use of color by applicant



    (7) An explanation as to whether competitors produce the goods in the identified color and in color other than the identified color (see evidence attached regarding competitors producing the goods in the identified color)



    (8) Color photographs and color advertisements showing competitive goods in applicant’s industry



    See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).



    Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.



    DRAWING AND DESCRIPTION OF THE MARK



    The drawing of applicant’s applied-for color mark is not acceptable because it includes functional elements depicted in solid lines rather than broken or dotted lines. See TMEP §1202.02(c)(i)(A). Elements of a mark that are functional are required to be shown in broken or dotted lines. See 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); In re Heatcon, Inc., 116 USPQ2d 1366, 1379-80 (TTAB 2015); TMEP §1202.02(c)(i)(A).



    “Functional matter cannot be protected as a trademark.” TMEP §1202.02(a)(iii)(A); see 15 U.S.C. §§1052(e)(5), (f), 1091(c), 1064(3), 1115(b)(8). A feature is functional as a matter of law if it is “‘essential to the use or purpose of the [product]’” or “‘it affects the cost or quality of the [product].’” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); TMEP §1202.02(a)(iii)(A).



    In the present case, the following elements are functional: the solid line between the two coils as well as the two blade pole sections. The attached evidence from https://www.seymourduncan.com/suppor...1/pickup-types and the evidence attached to the prior Office Actions in support of the functional refusal and non-distinctive product design refusal, shows that this element is functional because common use in the industry reflects that there are few alternative designs available. See In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982); TMEP §1202.02(a)(v).



    Therefore, applicant must provide (1) a new drawing of the mark showing the functional element(s) in broken or dotted lines, and (2) an amended mark description that references the matter in broken or dotted lines and indicates such matter is not claimed as part of the mark. See TMEP §1202.02(c)(i)(A), (c)(ii). Applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable. TMEP §1202.02(c)(i)(A).



    The following mark description format is suggested, if accurate:



    The mark consists of the color cream applied to the entire surface of the goods. The broken lines depicting the overall shapes of the pickup indicate placement of the mark on the goods and are not part of the mark.



    See TMEP §1202.02(c)(ii).



    The requirements for a special form drawing for color marks are as follows:



    (1) Shows the mark in color on a white background, because color is a feature of the mark.

    (2) Is of sufficient quality that will reproduce well.

    (3) Includes in the application a description of all elements in the mark.



    37 C.F.R. §§2.37, 2.52(b), 2.53(b)-(c), 2.54(e); see TMEP §§807.04-.04(a), 808.01-.02.



    For more information about special form drawings and drawings in general, and instructions on how to submit a drawing, please visit the Drawing webpage.



    All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.



    RESPONSE GUIDELINES



    If applicant has questions regarding this Office action, please e-mail the assigned trademark examining attorney at Tasneem.hussain@uspto.gov. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.



    To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.uspto.gov/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.uspto.gov/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.





    /Ms. Tasneem Hussain/

    Trademark Examining Attorney

    Law Office 118

    tasneem.hussain@uspto.gov (preferred)

    571.272.8273



    TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.



    All informal e-mail communications relevant to this application will be placed in the official application record.



    WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.



    PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.



    TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

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  6. #41
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    Last edited by rjb; 11-05-2018 at 02:49 AM.
    DON'T FEED THE TROLLS!

  7. #42
    Senior Member LtKojak's Avatar
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    For us, slow old men that don't understand legalese, can somebody answer the following question:
    Is the DMZ double cream trademark still valid?

    Yes

    No.

    That can I understand.

    Pretty please?

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    Pepe aka Lt. Kojak
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  8. #43
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    Yes.

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  9. #44
    Senior Member LtKojak's Avatar
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    Quote Originally Posted by WolfeMacleod View Post
    Yes.
    Dammit!

    Thank you, Wolf.

    Yours very truly,

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    Pepe aka Lt. Kojak
    Milano, Italy

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