Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  76/195364

 

This letter responds to the applicant’s request for reconsideration filed on January 14, 2003.  The applicant (1) argued against the nondistinctive product design refusal and (2) submitted actual evidence to establish distinctiveness of the mark under section 2(f).  Upon further review, new issues have arisen.  The final refusal is withdrawn.  The applicant’s section 2(f) actual evidence is an acceptable assertion of a section 2(f) claim.  Further, applicant claimed section 2(f) of over five years’ use in the communication of October 16, 2001.  The section 2(f) claim based on actual evidence and over five years’ use gives rise to a new issue and thereby a withdrawal of the final refusal at this time.  TMEP § 1212.07.  However, the claim of acquired distinctiveness under section 2(f) based on actual evidence and a five years’ use statement is not allowed in a section 1(b) application before the applicant files an amendment to allege use or a statement of use.  TMEP § 1212.09(a).  Therefore, the applicant’s claim of acquired distinctiveness under section 2(f) is unacceptable at this time.  In any event, the nondistinctive product design refusal is maintained and continued.

 

Section 2(f) Claim Unacceptable in a Section 1(b) Application

 

Despite applicant’s best efforts to assert a section 2(f) claim, the claim of acquired distinctiveness under section 2(f) based on actual evidence and a five years’ use statement is not allowed in a section 1(b) application before the applicant files an amendment to allege use or a statement of use.  TMEP § 1212.09(a).  Therefore, the applicant’s claim of acquired distinctiveness under section 2(f) is unacceptable at this time.  The nondistinctive product design refusal is maintained and continued.

 

Five Years’ Use Statement Unacceptable to Assert Section 2(f)

 

In the communication of October 16, 2001, the applicant claims acquired distinctiveness under section 2(f) of over five years’ use, namely 17 years.  See Applicant’s communication of October 16, 2001 at page 3-4.  The applicant’s long use of the mark is unacceptable by itself to claim acquired distinctiveness under Section 2(f).  The configuration of the goods are nondistinctive.  The claimed portions of the goods merely represents a handle for turning and pulling rear axle bearing.  Long use of the mark is one relevant factor to consider in determining whether a mark has acquired distinctiveness.  See In re Uncle Sam Chemical Co., Inc., 229 USPQ 233 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).  The applicant’s long use claim under section 2(f) by itself is insufficient evidence to overcome the nondistinctive product design refusal. Therefore, the nondistinctive product design refusal is maintained and continued.

 

Section 2(f) Evidence Based on Actual Evidence Is Insufficient

 

In the communication of July 16, 2002, the applicant merely states that they are “preparing affidavits and gathering information pertaining to the sale of the proposed goods to further support the position that the product configuration has acquired distinctiveness”.  See the Request for Reconsideration of January 14, 2003.  If the statement requesting registration under §2(f) and the evidence submitted to establish acquired distinctiveness are in the application when filed, the §2(f) statement and proof are supported by the verification of the application.  In this case, there was no evidence submitted showing acquired distinctiveness with the original filing.  Moreover, applicant’s mere statement of actual evidence to be submitted without any evidence actually being submitted coupled with no verification statement fails to properly assert section 2(f) based on actual evidence.  TMEP § 1212.07

Further, in the request for reconsideration of January 14, 2003, the applicant actually provides evidence of acquired distinctiveness.  The applicant merely states the actual evidence of sold units, goods exposure in trade shows and catalogs, advertising revenue and consumer/mechanic recognition.  See the Request for Reconsideration of January 14, 2003 at page 2.  Even though the mere statement of actual evidence showing acquired distinctiveness is still unacceptable without a verification statement, the examining attorney accepts the applicant’s assertion of section 2(f) based on actual evidence. 

 

The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods or services necessarily depends on the nature of the mark and the circumstances surrounding the use of the mark in each case.  Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Capital Formation Counselors, 219 USPQ 916 (TTAB 1983).

 

The applicant merely states that it “has sold over twenty-five thousand units generating over a million dollars in revenue”, is on “display over 30-50 tradeshows per year”, distributes “over 150,000 catalogs annually … a quarter of a billion flyers”, and has spent “on average $100, 000 to promote its line of goods”.  Large scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used.  However, 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); Mattel, Inc. v. Azrak-Hamway International, Inc., 724 F.2d 357, 221 USPQ 302, 305 n. 2 (2d Cir. 1983).  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 advertising material must show how the mark is being used, the commercial impression created by such use, and what the use would mean to purchasers.  In re Redken Laboratories, Inc., 170 USPQ 526, 529 (TTAB 1971).  See also In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984); In re Kwik Lok Corp., 217 USPQ 1245 (TTAB 1983).  TMEP § 1212.06(b).  Moreover, the applicant suggests and merely states a sophisticated purchaser, i.e., the mechanic, without further evidence of consumer recognition.  TMEP § 1212.06(c).

 

As the burden of proof for the applicant is substantial, the information currently of record is insufficient to prove acquired distinctiveness.  The advertisement and statements of record do not provide sufficient evidence to determine that the mark has acquired distinctiveness.  The examining attorney suggests that the applicant submit additional evidence.  TMEP §1212.01. 

 

Under Trademark Rule 2.41(a), 37 C.F.R. §2.41(a), an applicant may, in support of registrability, submit affidavits, declarations under 37 C.F.R. §2.20, depositions or other appropriate evidence showing the duration, extent and nature of the applicant’s use of a mark in commerce that may lawfully be regulated by Congress, advertising expenditures in connection with such use, letters or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services. 

 

Informational—Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

 

/William T. Verhosek/

Examining Atty/LO 114

703-308-9114x142

(Off fax) 703-746-8114

(Off email) ecom114@uspto.gov

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.