UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  76/434917

 

The following issues were discussed in communication with Leslie Mitchell on July 21^st, 2003.

 

The following responds to the applicant’s communication filed on June 12^th, 2003.

 

The registration of the application was originally denied for the following reasons:

 

1. Functionality refusal;
2. Description of mark statement required.

 

The applicant has provided an acceptable description of mark statement, which has been entered into the record.  As discussed via telephone, the examining attorney has read the applicant’s arguments carefully, and the functionality refusal is maintained and made FINAL.  However, the examining attorney believes that the applicant’s mark would certainly be acceptable on the Supplemental Register, and suggests that the applicant simply amends its application to the Supplemental Register.

 

Functionality Refusal - Configuration

 

The examining attorney has refused registration on the Principal Register because the proposed mark appears to be a functional design for the packaging for the identified goods.  Trademark Act Section 2(e)(5), 15 U.S.C. Section 1052(e)(5).  That is, the proposed mark consists of a design feature of the packaging for the goods which serves a utilitarian purpose. In re Witco Corp., 14 USPQ2d 1557 (TTAB 1990); In re Peters, 6 USPQ2d 1390 (TTAB 1988); In re Swift & Co., 217 USPQ 85 (TTAB 1982), recon. denied, 217 USPQ 87 (TTAB 1982); TMEP sections 1202.03(a) et seq. and 1202.03(f)(ii).

 

The applicant has applied for a container configuration design for “confectionery, namely, candy in paste, powder and dust form with and without chili spices, sweet and sour candy, chocolates, soft caramel candy, sweet lollipops and sweet lollipops with chili sauces, sauces and seasonings” in International Class 30.  The container will presumptively be packaged along with the listed goods (will be the container holding the goods - thus consisting of product packaging). 

 

The examiner notes that the configuration shows what appears to be an attached lid, demonstrating the functionality of the container (the candy comes out when the lid is open, likely through a spout).     

 

A mark may be functional in two senses.  If the proposed mark embodies a design feature of the packaging which is superior to other available designs and thus provides a competitive advantage to the user, then the proposed mark is de jure functional and unregistrable on either the Principal Register or the Supplemental Register.  See In re Morton‑Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).  Or, as another court has characterized the test, if the underlying design is one which would be costly to do without, then the proposed mark is de jure functional. W.T. Rogers Co., Inc. v. Keene, 778 F.2d 334, 228 USPQ 145 (7th Cir. 1985).

 

On the other hand, if the proposed mark embodies a design feature of the packaging which is one of many equally‑feasible, efficient and competitive alternatives, then the mark is merely de facto functional and may be registrable on the Principal or the Supplemental Register.  TMEP section 1202.03(a)(i)(C).

 

If the proposed mark is de facto functional and is inherently distinctive, then the mark is registrable on the Principal Register.  If the proposed mark is de facto functional, but is not inherently distinctive, then the mark is registrable on the Principal Register only with a showing of acquired distinctiveness.  Such a mark may also be registrable on the Supplemental Register. See generally Oddi, The Functions of "Functionality" in Trademark Law, 76 Trademark Rep. 308 (1986); TMEP section 1202.03(a)(i)(B)..

 

Therefore, in the event of any further prosecution of the application, the applicant must present evidence that the proposed mark has acquired distinctiveness, that is, that it has acquired distinctiveness as a source indicator for the identified goods.  This evidence must relate to the promotion and recognition of the specific configuration embodied in the proposed mark and not to the goods in general.

 

The evidence may consist of examples of advertising or promotional material featuring the proposed mark, dollar figures related to the advertising and promotion of the proposed mark, statements of dealer and consumer recognition of the proposed mark and any other evidence that would show that the proposed mark has acquired distinctiveness as a source indicator for the identified goods.  The applicant may also wish to consider amendment to the Supplemental Register in view of this refusal.

 

As noted via telephone, the examining attorney believes that the design feature of the packaging which is one of many equally‑feasible, efficient and competitive alternatives, and therefore believes the mark is merely de facto functional.  The examining attorney believes that the applicant may amend its application to the Supplemental Register.  Please see the attached U.S. Registrations (including those owned by the applicant) in which similar small container items were permitted registration on the Supplemental Register. 

 

Response

 

Please note that the only appropriate responses to a final action refusal are either:  (1) compliance with outstanding requirements, if feasible, or (2) filing an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

Current status and status date information is available, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven‑digit registration number or eight‑digit application number, followed by the "#" symbol, after the welcoming message and tone.  Callers may request information for up to five registration number or application number records per call.

 

 

 

 

 

 

Christopher Scott Adkins

/Christopher S. Adkins/

Christopher Adkins

Examining Attorney

Law Office 113

(703) 308-9113 xt. 437

 

 

 

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