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. 

 

Mark:  Being Enlighten and Design

Serial Number  76/531065

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Trademark Act Section 2(e)(5) – Functionality – Refusal to Register

 

Registration is refused 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. §1052(e)(5).  That is, the proposed mark comprises the configuration of a design feature of the packaging for the goods that serves a utilitarian purpose.  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 Witco Corp., 14 USPQ2d 1557 (TTAB 1989); 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 §§1202.02(a) et seq.

 

The proposed mark is a design of the packaging for the applicant goods which are “aromatherapy products, namely, gels, lotions, powders and liquids for use in pools, hot tubs and jetted baths.” 

 

 

 

 

The particular features of this proposed mark, namely, the bottle, are functional for the packaging for such goods because they are used to contain the goods.

 

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 goods or their packaging is 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).

 

On the other hand, where the evidence shows that the specific product or container configuration at issue provides no real utilitarian advantages to the user, but rather is simply one of many equally feasible, efficient and competitive designs, then the mark may be registrable.  In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982); TMEP §§1202.02(b)(i) and 1202.02(b)(ii).  However, a product configuration is not inherently distinctive, and therefore cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f).  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).

 

Applicant must provide the following information and documentation in order to permit proper examination of the application.  37 C.F.R. §2.61(b):

 

(1)    A written statement as to whether the proposed mark is or has been the subject of either a design or utility patent, including existing and/or expired patents.  Applicant must also state 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)    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)    A written explanation and any relevant evidence as to 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.  Applicant must also include a written explanation and any available information concerning designs used by competitors.

 

(4)    A written statement as to whether the product design or product packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container.  If applicant has any relevant information regarding the method and/or cost of manufacture, that information must also be provided.

 

Applicant may also furnish any other evidence that applicant considers relevant to the registrability of the proposed configuration mark.

 

With regard to the above requested information, it is noted 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 trademark examining attorney’s request for copies of patent applications and other patent information); See TMEP §§1202.02(a)(v) et seq.

 

Trademark Act Sections 1, 2, and 45 – Nondistinctive Configuration – Refusal to Register

 

Registration is refused because the proposed mark comprises a nondistinctive configuration of the packaging for the goods and would not be perceived as a mark.  As such, the proposed mark is not registrable on the Principal Register without proof of acquired distinctiveness.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593 (C.C.P.A. 1967); In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138 (C.C.P.A. 1960); TMEP §1202.02(b)(ii).

 

In an application for trade dress, distinctiveness and functionality are two separate issues.  TMEP §1202.02(c).

 

“[A] mark is inherently distinctive if [its] intrinsic nature serves to identify a particular source.”  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000), citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081 (1992); TMEP 1202.02(b)(ii).

 

In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000), the Supreme Court distinguished between two types of trade dress - product design and product packaging.  If the trade dress falls within the category of product design, it can never be inherently distinctive.

 

 

 

Product design almost invariably serves purposes other than source identification, and consumers are aware that even the most unusual product design is intended not to identify the source, but to render the product itself more useful or appealing.  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).

 

Unlike product design, product packaging may be inherently distinctive and registrable on the Principal Register without a showing of acquired distinctiveness.  However, in close cases in which it is difficult to determine whether the trade dress at issue is product packaging or product design, “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”  Wal-Mart, 529 U.S. at 215, 54 USPQ2d at 1070.

 

Note:  If the trade dress is functional, it cannot be registered despite acquired distinctiveness.  TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1007 (2001).

 

The test for determining inherent distinctiveness of product packaging trade dress was set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977).  The following “Seabrook” factors should be considered.  Whether the proposed mark is:

 

(1)  a “common” basic shape or design;

(2)  unique or unusual in the field in which it is used;

(3) a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods;

(4)  capable of creating a commercial impression distinct from the accompanying words.

 

Note:  This test is not applicable to product design trade dress.

 

The burden of proving that a mark has acquired distinctiveness is on 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).

 

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).

 

There are three basic types of evidence that may be used to establish acquired distinctiveness under §2(f):

 

(1)   A claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application (See 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.);

 

(2)   A statement verified by applicant that the mark has become distinctive of applicant’s goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made (See 37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.);

 

(3)   Actual evidence of acquired distinctiveness (See 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.).

 

Applicant may submit one or any combination of these types of evidence.  Depending on the mark and the facts in the record, a claim of ownership of a prior registration(s) or a claim of five years’ substantially exclusive and continuous use in commerce may be insufficient to establish a prima facie case of acquired distinctiveness.  Actual evidence of acquired distinctiveness may be submitted regardless of the length of time the mark has been used.  Ex parte Fox River Paper Corp., 99 USPQ 173 (Comm’r Pats. 1953).

 

For matter that does not inherently function as a mark because of its nature (e.g., nondistinctive product container shapes, overall color of a product, mere ornamentation), evidence of five years’ use is not sufficient to show acquired distinctiveness.  In such a case, actual evidence that the matter is perceived as a mark for the relevant goods or services would be required to establish distinctiveness.  See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant’s fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress [white circle surrounded by blue border] for ear plugs).

 

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.

 

Establishing acquired distinctiveness by actual evidence was explained as follows in In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985):

 

An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.

 

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).

 

In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public, not whether the mark is capable of becoming distinctive.  In re Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 335 (TTAB 1959).

 

If a proposed mark 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).

 

In the following cases, the applicant’s evidence was found to be sufficient to support a claim of acquired distinctiveness:  In re World’s Finest Chocolate, Inc., 474 F.2d 1012, 177 USPQ 205 (C.C.P.A. 1973) (package design found to identify applicant’s candy bars and distinguish them from those of others); Ex parte Haig & Haig Ltd., 118 USPQ 229, 230 (Comm’r Pats. 1958) (“The decree recited that because of the original, distinctive and peculiar appearance of the ‘Pinched Decanter’ the brand of whiskey in such bottles had come to be known and recognized by the public, by dealers and by consumers; and that the whiskey contained in such bottles had come to be identified with the ‘Pinched Decanter’ in the minds of the public generally.”).  See TMEP §§1212 et seq. regarding acquired distinctiveness and TMEP §§815 and 816 et seq. regarding the Supplemental Register.

 

In the following cases, the applicant’s evidence failed to demonstrate that the product packaging had acquired distinctiveness.   Yankee Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25, 59 USPQ2d 1720 (1^st Cir. 2001) (trade dress for common elements of candle labels was nondistinctive product packaging for which insufficient evidence of acquired distinctiveness was shown; also insufficient evidence of acquired distinctiveness for trade dress comprised of label elements, candle holders, display systems, and candle containers); In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“[f]or the ‘blue motif’ of a retail store to be registrable on the Principal Register without resort to §2(f), the trade dress would have to be immediately recognizable as a distinctive way of identifying the source of the store services.”); In re File, 48 USPQ2d 1363, 1367 (TTAB 1998) (novel tubular lights used in connection with bowling alley services would be perceived by customers as “simply a refinement of the commonplace decorative or ornamental lighting and would not be inherently regarded as a source indicator.”); In re J. Kinderman & Sons Inc., 46 USPQ2d 1253, 1255 (TTAB 1998) (“while the designs applicant seeks to register [the packaging for electric lights for Christmas trees] may be unique in the sense that we have no evidence that anyone else is using designs which are identical to them, they are…not inherently distinctive.”).

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Description of the Mark

 

Applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The following is suggested:  The mark consists of a design of an aromatherapy products bottle and cap there for having a raised lead design on the cap and a design of an evergreen branch on the lower bottle with the word “being” at the top portion of the bottle and the word “enlighten” at the bottom portion of the bottle.

 

Additions to Goods or Services Not Permitted

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

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. §1052(d).  TMEP §704.02.

 

Trademark Status Line

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

/Mary E. Crawford/

Trademark Attorney

Law Office 102

(703) 308 – 9102 ext. 162

Email:  ecom102@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.