UNITED STATES PATENT AND TRADEMARK OFFICE
| SERIAL NO: 76/451483 APPLICANT: Dye Precision, Inc. | |
| CORRESPONDENT ADDRESS: HARRIS F. BROTMAN PROCOPIO, CORY, HARGREAVES & SAVITCH LLP 530 B STREET, SUITE 2100 SAN DIEGO, CA 92101-4469 | RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov |
| MARK: | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: N/A 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 76/451483
The assigned examining attorney has reviewed the referenced application and determined the following.
I. OFFICE RECORDS
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 1105.01.
The applicant must provide the following information in order to permit the examining attorney to reach an informed determination concerning the issue of functionality under §2(e)(5) of the Trademark Act. 37 C.F.R. §2.61(b).
(1) The applicant must indicate whether the proposed mark is or has been the subject of either a design or utility patent, including existing and/or expired patents. The applicant must also indicate whether the proposed mark is or has been the subject of a patent application for either a design or utility patent, including both pending and abandoned patent applications. For any of the above for which a positive response is provided, the applicant must provide copies of the patent(s) or pending or abandoned patent application(s).
(2) The applicant must provide any available advertising, promotional and/or explanatory materials concerning the configuration for which registration is sought, particularly any materials specifically related to the design feature(s) embodied in the proposed mark.
(3) The applicant must indicate whether alternative designs are available for the feature(s) embodied in the proposed mark, as well as whether the alternative designs are equally efficient and/or competitive. The applicant must also include with this response any available information concerning designs used by competitors.
(4) The applicant must indicate whether the product design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product. If the applicant has any relevant information regarding the method and/or cost of manufacture, that information must also be provided.
The applicant may also furnish any other evidence the applicant considers relevant to the registrability of the proposed mark. It is noted, with regard to the above information request, that the Board and courts have recognized that relevant technical information is usually more readily available to an applicant, and that the applicant will thus normally be the source of most of the evidence pertaining to the functionality issue. In re Teledyne Industries Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1989); In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information); see also TMEP §§1202.02(a)(v) et seq.
The determination that a portion of proposed mark is functional constitutes an absolute bar to registration of that portion of the mark either on the Principal Register or the Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness. Trademark Act §§2(e)(5) and 23(c), 15 U.S.C. §§1052(e)(5) and 1091(c); In re Controls Corp. of America, 46 USPQ2d 1308, 1311 (TTAB 1998).
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 a 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 or product packaging. 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). Regardless of whether or not the examining attorney finds that the applicant’s proposed mark is functional based in part on the applicant’s response to this Office action, the following refusal will also apply in the alternative.
III. THE PROPOSED MARK IS NOT INHERENTLY DISTINCTIVE
The examining attorney refuses registration on the Principal Register because the proposed mark is not inherently distinctive. Trademark Act Sections 1, 3 and 45, 15 U.S.C. §§1051, 1053 and 1127. Assuming that a proposed mark is not functional, if it is not inherently distinctive, the mark may be registered on either the Principal Register under §2(f) or on the Supplemental Register. Secondary meaning is acquired when the public views its primary significance as identifying the source of the product rather than the product itself. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211, 54 USPQ2d 1065, 1068 (2000).
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). The burden of proving that a mark has acquired distinctiveness is on the applicant. See Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1578-79, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959). The applicant may present any competent evidence to establish that a mark has acquired distinctiveness. The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See 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 Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985).
The applicant may attempt to establish acquired distinctiveness, for example, by submitting such evidence as advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods. The evidence must relate to the promotion and recognition of the specific configuration embodied in the proposed mark and not to the goods in general. Wal-Mart, 529 U.S. at 211, 54 USPQ2d at 1068. See TMEP §§1212.06 et seq. regarding evidence of acquired distinctiveness. The applicant may also wish to consider amendment to the Supplemental Register.
IV. CONCLUSION
If the applicant has any questions or needs assistance in responding to this Office action, please do not hesitate to telephone the assigned examining attorney.
__________________________
Nicholas K.D. Altree
Trademark Attorney
Law Office 108
(703) 308-9108, ext. 132
Fax: (703) 746-8108
nick.altree@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.