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  76/439661

 

Upon remand by the Board to the examining attorney, the examining attorney has determined the following.  Registration has been refused under Section 2(e)(5) of the Trademark Act, 15 U.S.C. Section 1052(e)(5), on the grounds that the proposed mark is functional.  The examining attorney has considered the applicant’s arguments and evidence in support of registration and has found them to be unpersuasive.  Accordingly, this refusal of registration is hereby continued and made FINAL.  Registration has also been refused under Sections 1, 2 and 45 of the Trademark Act, on the ground that the proposed mark is a configuration of the goods that has not acquired distinctiveness as a source indicator.  Trademark Act Sections 1, 2 and 45.  15 U.S.C. Sections 1051, 1052 and 1127.  The examining attorney has carefully considered applicant’s arguments and evidence in support of registration and has found them to be unpersuasive.    Accordingly, this refusal of registration is hereby continued and made FINAL.  The applicant’s request for registration under Section 2(f) of the Trademark Act has also been refused on the ground that the applicant’s evidence, in the nature of five year’s use, is insufficient to demonstrate acquired distinctiveness.  The examining attorney has reviewed the applicant’s additional evidence and finds it to be insufficient to establish acquired distinctiveness.  Therefore, the refusal of registration based on acquired distinctiveness is hereby continued and made FINAL. 

A.                Refusal – Functionality

 

A feature is functional as a matter of law if it is “essential to the use or purpose of the product or if it affects the cost or quality of the product.”  TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982).  A mark comprising the configuration of the identified goods or their packaging will be held functional, and thus unregistrable, where the evidence shows that the product design or product packaging design provides identifiable utilitarian advantages to the user – i.e., where the product or container “has a particular shape because it works better in that shape.”  Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ2d 1422, 1425 (Fed. Cir. 2002) (citation and internal quotation marks omitted); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984); see also In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997); In re Cabot Corp., 15 USPQ2d 1224, 1227 (TTAB 1990).

 

In order for a proposed mark to be held functional, the evidence need not establish that the configuration at issue is the very best design for the particular product.  Rather, a finding of functionality is proper where the evidence indicates that the configuration at issue provides specific utilitarian advantages that make it one of a few superior designs available.  See, e.g., In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985); In re American National Can Co., 41 USPQ2d 1841 (TTAB 1997); In re Lincoln Diagnostics Inc., 30 USPQ2d 1817 (TTAB 1994); In re Bio-Medicus Inc., 31 USPQ2d 1254 (TTAB 1993); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990); In re Peters, 6 USPQ2d 1390 (TTAB 1988).

In the present case, the applicant has applied to register a proposed mark in the shape of an earplug, i.e., the configuration of the earplug itself, for earplugs for noise protection.  The proposed mark is functional and, thus, may not be registered under Section 2(f) of the Trademark Act or on the Supplemental Register. 

In support of registration, applicant argues that the proposed mark is not functional, and that, although it is the subject of a patent, the patent claims cover the internal construction of the earplug and not the shape (other than to “describe a largely cylindrical body.”).  Contrary to this assertion, however, it would appear that the patent claims do cover the shape of the earplug.  Specifically, Figure 1 of the patent illustrations, also described in the “preferred embodiment” description, refers to a “largely bullet-shaped main body portion” and a “flared rear end.”  Further, between lines 25 and 35 of the “preferred embodiment” description, applicant states the following:

The flanged or flared rear end of the earplug limits the depth of insertion of the earplug into the ear, and also provides a region to be grasped to remove the earplug from the ear canal.  Because of the flange, users tend to roll only the bullet-shaped or largely cylindrical body, while leaving the flanged end at its full size.  This reduces the possibility of deep insertion of the compressed earplug into the ear, and it reduces the difficulty of removing the earplug.

Further, the section describing what is claimed under the applicant’s patent reads, in relevant part, as follows:

1.  An earplug comprising and earplug body having a main body portion forming a largely cylindrical outer surface and constructed to enable its reception in the ear and having outer walls adapted to directly contact the surface of the ear canal.

4.  The earplug described in claim 1 wherein said body has a flared rear end of greater diameter than said main body portion…whereby to encourage rolling of only the main body portion but not the rear end.

Thus, it is clear that the shape of the earplug is, in fact, being claimed in applicant’s patent.  Moreover, as applicant itself acknowledges in the patent, the shape of the earplug is, in fact, essential to the use or purpose of the product.  The main body is cylindrical in nature because it enables its reception in the ear and allows the outer walls to adapt to directly contact the surface of the ear canal.  Given that the human ear canal is cylindrical in nature, only an earplug having an overall  cylindrical shape such as applicant’s earplugs have could adapt to directly contact the surface of the ear canal.  Further, applicant’s patent also acknowledges that the flared rear end of the product is necessary not only to reduce the possibility of deep insertion of the compressed earplug into the ear canal and provide for ease in removing the earplug, but it also encourages rolling of only the main body portion, but not the rear end.  Again, given the set general shape of the human ear canal and inner ear in general, there are a very limited number of designs that would achieve this purpose, and the shape of the earplug is, in fact, essential to achieving this purpose.  As such, it is essential to the use or purpose of the product. 

Based on the record, and for the foregoing reasons, the refusal of registration under Section 2(e)(5) of the Trademark Act is, again, hereby continued and made FINAL.

B.                  Refusal – Mark is a Nondistinctive Configuration of the Goods

As stated in the first Office action in this case, the arguments and evidence of which are included by reference herein, applicant’s proposed mark comprises a configuration of the goods that is not inherently distinctive and would not be perceived as a mark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The United States Supreme Court has held that a configuration of a product can never be inherently distinctive, and is registrable on the Principal Register only with a showing of acquired distinctiveness.  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).  See also Textron, Inc. v. U.S. International Trade Commission, 753 F.2d 1019, 224 USPQ 625 (Fed. Cir. 1985); In re Craigmyle, 224 USPQ 791 (TTAB 1984); TMEP §1202.02(b)(i) [Emphasis added.].  Thus, the refusal of registration on under Sections 1, 2 and 45 of the Trademark Act must be, and is, hereby continued and made FINAL.

 

Were the proposed mark not also functional, applicant would be able to move to registration by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 202.02(b) and 1115.  Although applicant may still do this to overcome the refusals of registration under Sections 1, 2 and 45 of the Trademark Act, it will not overcome the functionality refusal discussed above.

 

C.                 Applicant’s Evidence is Insufficient to Establish Acquired Distinctiveness

Assuming arguendo that the applicant’s proposed mark were not functional, applicant’s evidence of acquired distinctiveness in the present case is insufficient to support registration of the mark under Section 2(f).  Specifically, the fact that applicant has “high sales” of the goods does not mean that the proposed mark has achieved distinctiveness.  Standing alone, the sales figures and advertising expenditures demonstrate the success of applicant’s goods, but not that relevant consumers have come to view the proposed mark as applicant’s mark for such goods.  These statements and exhibits merely tend to show that applicant has undertaken extensive promotions and has achieved commercial success.  See In re Busch Entertainment Corp., 60 USPQ2d 1130 (TTAB 2000); In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994); In re Franklin Mint Corporation, 209 USPQ 172, 174 (TTAB 1980); In re Behre Industries Inc., 203 USPQ 1030 (TTAB 1979).

 Similarly, applicant’s advertising expenditures are merely indicative of its efforts to develop distinctiveness, not evidence that the mark has acquired distinctiveness.  See In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).  Moreover, the examining attorney notes that the applicant’s advertisements tend to emphasize the effective nature of the earplug based on its shape.  They do not appear to promote the shape as a trademark. 

For the foregoing reasons, the applicant’s evidence is, again, insufficient to establish acquired distinctiveness.

Please note that the only appropriate responses to a final action are either (1) compliance with the 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).

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Scott Oslick/

Trademark Examining Attorney

Law Office 108

(571) 272-9348 (Telephone)

(571) 273-9108 (Fax - For Official Responses Only)

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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