UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/162286 APPLICANT: Natural Waters ofViti, Ltd | |
| CORRESPONDENT ADDRESS: DANA HARTJE CARDWELL SHERIDAN ROSS P C 1560 BROADWAY STE 1200 DENVER CO 80202-5145 | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov |
| MARK: | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: 3642-21 CORRESPONDENT EMAIL ADDRESS: | Please provide in all correspondence: 1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address. |
Serial Number 76/162286
This letter responds to the applicant’s communication, filed in this Office on April 3, 2003, in which the applicant: (1) responded to the information request regarding the Section 2(e)(5) functionality refusal; and (2) submitted a claim of acquired distinctiveness under Section 2(f) in response to the nondistinctiveness refusal.
The examining attorney has reviewed all of the evidence and information submitted by the applicant on each of these issues, and finds that both refusals must be continued for the reasons discussed below. Because the Section 2(f) claim raises a new issue, this action is non-final in nature.
In response to the examining attorney’s information request in the context of the functionality issue, the applicant has answered the particular questions listed in the previous Office action, and has also included a copy of a declaration that the applicant prepared during past civil litigation, with this declaration including statements concerning the proposed mark.
The examining attorney appreciates the applicant’s information and materials submitted in response to the information request. However, in carefully reviewing the materials that the applicant submitted in connection with its Section 2(f) claim, the examining attorney finds that one of the articles about the applicant’s bottles raises a clear question concerning the functionality issue. Specifically, the applicant submitted an article from the July 30, 2001 issue of Newsweek entitled “The Water of the Moment,” with the article discussing the success of the applicant’s product. In the first full paragraph beginning underneath the picture of the applicant’s goods, the article states as follows:
Even more remarkable than its eminence are the logistics of shipping water from paradise. Turns out the distinctive square shape of the bottle was designed to save shipping costs as well as look cool. Square bottles simply use space in cargo holds more efficiently.[1]
(emphasis added).
It is well established that trade dress is functional if it is essential to the use or purpose of a product or if it affects the cost or quality of the product. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, 214 USPQ 1, 4 n. 10 (1982). Evidence that the subject design makes the product simpler or less costly to manufacture weighs strongly in favor of a finding of functionality. See, e.g., TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); In re Virshup, 42 USPQ2d 1403 (TTAB 1997).
In this case, the above-quoted statement specifically indicates that the square design of the bottle was intentionally used for purposes of saving shipping costs – which affects the overall costs to the applicant in providing its products to consumers. This fact clearly weighs in favor of a finding of functionality. See, e.g., M-5 Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (statements in promotional material that applicant’s design results in reduced costs of installation found to be evidence of functionality of applicant’s configurations of metal ventilating ducts and vents for tile or concrete roofs); TMEP §1202.02(a)(v)(C).
The examining attorney finds that this statement, clearly referencing the utilitarian benefit of the applicant’s bottle shape in terms of shipping economy, establishes a prima facie case that the trade dress sought to be registered is functional. The burden thus shifts to the applicant to present sufficient evidence to rebut this prima facie case of functionality. In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984).
For the above reasons, the functionality refusal is hereby continued.
If the applicant chooses to respond to the refusal, then the applicant must also provide all available information and/or evidence specifically relating to the issue of the bottle design’s effect on shipping costs, so that this issue may be fully evaluated in conjunction with the functionality refusal.
In response to the examining attorney’s previous Office action continuing the nondistinctiveness refusal, the applicant has asserted a claim of acquired distinctiveness under Section 2(f), based on a five years’ use statement as well as information concerning advertising and sales figures.
The examining attorney has carefully reviewed the applicant’s information and evidence, but finds that the evidence is insufficient to establish that the shape of the bottle has acquired distinctiveness as a source indicator. While the evidence clearly shows that the applicant has achieved a high degree of success in marketing its water, there is very little evidence that actually points to the acquired distinctiveness of the bottle shape alone. For example, the applicant stated in its response that it has spent more than $20 million in marketing, “nearly all of it incorporating Applicant’s unique bottle design” (Applicant’s 4/3/03 Response at p. 3). However, a review of the samples of the various advertisements that the applicant included as evidentiary support for the Section 2(f) claim shows that the clearly predominant feature of the advertisements is the combination of the term FIJI and the elaborate design of the waterfall and tropical landscape. Those features are always present, whether the goods are being advertised on a t-shirt or in a coupon for the goods. And even in the advertisements where the full bottle is featured, that bottle always appears with the large, two-tiered label that features the term FIJI in bold lettering and the intricate tropical design. Some of the articles that mention the applicant’s water show a portion of the bottle but not the entire container – although the prominent term FIJI is always visible.
The examining attorney was able to find only one clear promotion of the specific bottle shape apart from the elaborate label design: the applicant included in its evidence what appears to be a single advertisement sheet depicting a drawing of a large display for the goods, with the display rack itself shaped like the bottles (and with rows of the bottles on the shelves of the rack). This is the type of material that can be used to establish acquired distinctiveness in a particular case – but in this case, the examining attorney is uncertain as to whether that single sheet is even an actual advertisement that is used in marketing the applicant’s goods, or whether it is a rendition of a possible design for a display rack for the goods. The applicant is encouraged to provide additional information regarding the nature of this document so that its weight in connection with this issue may be properly evaluated. In any case, however, even if this particular document is used as an advertisement or is otherwise connected to the marketing of the applicant’s product, it would be insufficient in itself to establish a prima facie case of acquired distinctiveness.
It is also emphasized, with regard to the issue of advertising expenditures, that proof of an expensive and successful advertising campaign is not in itself enough to prove secondary meaning. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999). The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source. The examining attorney must examine the advertising material to determine how the term is being used, the commercial impression created by such use, and what the use would mean to purchasers. See In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (refusal to register OFFICE MOVERS, INC., for moving services, affirmed notwithstanding §2(f) claim based on, inter alia, evidence of substantial advertising expenditures, the Board stating: “There is no evidence that any of the advertising activity was directed to creating secondary meaning in applicant’s highly descriptive trade name.”); In re Kwik Lok Corp., 217 USPQ 1245 (TTAB 1983) (evidence held insufficient to establish acquired distinctiveness for configuration of bag closures made of plastic, notwithstanding applicant’s statement that advertising of the closures involved several hundred thousands of dollars, where there was no evidence that the advertising had any impact on purchasers in perceiving the configuration as a mark); TMEP §1212.06(b).
In this case, the fact that many (or even most) of the applicant’s advertisements may show the bottle as part of the advertisement does not establish that the bottle design itself has become recognized by consumers as a source indicator – especially given the fact that the examining attorney was unable to find any statement or other indicator in any of the advertisements specifically directing consumers to recognize the bottle shape itself (apart from the wording and label design) as indicating source in the applicant.
For the above reasons, the examining attorney finds that the applicant has not established that the bottle design has acquired distinctiveness under Section 2(f). The nondistinctiveness refusal under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127, is thus continued.
Please note: As discussed in the previous Office action, the applicant may either respond to this refusal with additional evidence in support of the Section 2(f) claim, or by amending to the Supplemental Register in light of the nondistinctiveness refusal. Regardless of which option the applicant chooses, the examining attorney again emphasizes that the shape of the bottle cap itself is not capable of acquiring distinctiveness, as it is simply a commonly used round screw cap that is essentially identical to the type of cap used on all other bottle water containers (for example, see the photograph of water containers attached to the examining attorney’s previous Office action).
Accordingly, whether the applicant seeks to provide additional evidence to support the Section 2(f) claim or to amend to the Supplemental Register, the applicant must also enter a disclaimer of the shape of the bottle cap apart from the mark as a whole. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP §§1212.02(e), 1213 and 1213.02(a). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use the shape of the bottle cap apart from the mark as shown.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Elizabeth A. Hughitt/
Examining Attorney
Law Office 111
(703) 308-9111 x 250
ecom111@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.uspto.gov/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.uspto.gov/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
[1] It is noted that the rightmost edge of the text in the photocopied article was inadvertently cut off during the photocopying process; however, the examining attorney is presuming that the wording “cargo ho___[cut off]” refers to “cargo holds.”