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  76/451483

 

I.         INTRODUCTION

 

            This Office Action responds to the applicant’s correspondence dated November 20, 2003.  Having carefully considered the applicant’s arguments in favor of registration, the examining attorney has determined the following.

 

II.        THE PROPOSED CONFIGURATION MARK IS FUNCTIONAL

 

            The examining attorney refuses registration on the Principal Register because the proposed mark appears to be functional.  Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5).  That is, the proposed mark consists a configuration of a shoe sole that serves a utilitarian purpose.  Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081 (1992); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ2d 1422 (Fed. Cir. 2002); In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984); TMEP §§1202.02(a) et seq.  The determination that a product configuration 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 product 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 – for example, 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).  In this case, at the request of the examining attorney, the applicant has submitted information from its 2004 catalog that describes some of the benefits of its shoe soles, and from these descriptions, there can be little doubt that the design provides identifiable utilitarian advantages to its users.  The applicant argues that its 2004 catalog “is mere advertising bluster.”  Needless to say, the examining attorney respectfully disagrees.  Whether highlighting the product’s “cross heel stabilizers,” or its “hydro gel,” or its “turf studs” or its “toe tooth,” this one catalog alone provides ample evidence of the functionality of the applicant’s proposed mark.  Accordingly, the examining attorney is compelled to refuse registration under §2(e)(5) of the Trademark Act.

 

III.      THE PROPOSED MARK IS NOT INHERENTLY DISTINCTIVE

 

            In addition, the examining attorney also 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.  Although the applicant argues that its product configuration is inherently distinctive, the United States Supreme Court has held that a product configuration 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).  Even assuming, arguendo, that the applicant’s proposed mark is not functional, it is certainly not inherently distinctive and therefore may be registered on the Principal Register only through a claim of acquired distinctiveness 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 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).  For example, the applicant may attempt to establish acquired distinctiveness 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.

               In this case, the applicant has submitted a couple of pages from its 2004 catalog and has stated that it spends over $100,000 per year to advertise its shoes.  Such evidence is clearly insufficient to establish that the applicant has promoted the product configuration as a mark and has established recognition of the configuration among consumers as a mark.  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

 

 

 

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 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.