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 Enlightened and Misc. Design

Serial Number  76/531065

 

This letter is in response to the applicant’s  communication filed on June 14, 2004

 

The description of the mark is acceptable and made of record.

 

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

 

The refusal under Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5), is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

The proposed mark is a functional design for the packaging of 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 bottle which comprises the packaging for the applicant’s aromatherapy products, namely, gels, lotions, powders and liquid for use in pools, hot tubs and jetted baths.   The fact that the proposed mark comprises the packaging for the goods is clearly stated in the applicant’s own description of the mark wherein the application says the mark comprises “the shape of a aromatherapy products bottle. . .”  In addition, the applicant states that the “application is for the package design. . .”  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).

 

In the instant case the product packaging design of the bottle provides a utilitarian advantage to the user.  The shape of the bottle makes it easy to grasp and  hold.  The attached evidence shows that bottles of similar shapes are common for use in holding similar aromatherapy goods most likely due to their ease of use.  The goods are also easy to manufacture due to their smooth lines.  The cap  further makes for easy use and storage of the goods contained therein.

 

The applicant argues that because the shape of the bottle alone is not the subject of the application, it is not functional.  However, the entire package must be considered.  The applicant includes the bottle shape as part of the proposed mark.   The applicant has not depicted the bottle portion of the mark on the drawing using broken or dotted lines to show the position of the wording on the bottle.  It is clear that the bottle is intended to be a part of the proposed mark.   37 C.F.R. §2.52(b)(4); TMEP §807.10. It is a common basic shape for such bottles that serves a utilitarian purpose and it does not create a commercial impression distinct from the accompanying words.

 

The applicant has required to 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.

 

The applicant was also advised that it could also furnish any other evidence that the 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.

 

The applicant did not provide any of the above information or documentation.

 

The refusal to register and the request for the above information and documentation are made FINAL.

 

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

 

Registration was also 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).  This refusal is made FINAL.

 

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.

 

As stated in the above refusal, the bottle shape at issue is a common basic design that fails to create a commercial impression distinct from the accompanying words. The evidence shows that such shapes are not unique or unusual in the field of aromatherapy products. 

 

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).

 

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).

 

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 instant case, the applicant has been using the mark for less than five years.  Therefore, amendment to the Supplemental Register is suggested.

 

The refusal to register is made FINAL.

 

Response to Final Office Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

                                                                        Mary E. Crawford

                                                                        Trademark Attorney

                                                                        Law Office 102

                                                                        (571) 272 - 9149

 

 

 

 

 

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.

 

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION IF NOT FILING AN APPEAL:

• 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.