UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/571335
APPLICANT: Andreas Stihl AG & Co KG
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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CORRESPONDENT’S REFERENCE/DOCKET NO: 2007920-0587
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.
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Serial Number 76/571335
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
The examining attorney refuses registration on the Principal Register because the proposed mark is a configuration of the goods that has not acquired distinctiveness as a source indicator for the applicant’s goods in commerce. 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) (please note, the statement regarding the exclusive and continuous use of the mark in commerce is not enough to demonstrate acquired distinctiveness alone in this instance).
In the event of any further prosecution of the application, the applicant must present evidence that the proposed mark has acquired distinctiveness for the applicant’s goods in commerce by submitting examples of 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.
Additionally, the examining attorney refuses registration on the Principal Register because the proposed mark itself appears to be functional. 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 identified goods which 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 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.
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 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 on the Principal or the Supplemental Register. 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 can never be 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).
The applicant must provide the following information in order to permit the examining attorney to reach an informed final determination concerning the proposed mark. 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 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 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 examining attorney encloses information regarding pending Application Serial Nos. 75766169 and 75831360. The filing date of the referenced applications precede the applicant's filing date. There may be a likelihood of confusion between the applicant's mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). If one or more of the referenced applications mature into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP section 1208.01.
Informalities
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 issues.
(1) Identification of Goods
The applicant has applied to register its design mark for “POWER TOOLS, NAMELY, POWER-OPERATED CUT-OFF MACHINES” in IC 7.
The identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the common commercial name of the goods or must specify their exact nature. TMEP section 1402.01.
The listed “cut-off machines” are ambiguous, construed to be too broad and require greater specificity regarding the exact nature of the goods, which may include (but is not limited to):
The applicant may adopt the following suggested identification of goods, if accurate:
The suggested identification specifies and properly classifies the goods. 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 that are not within the scope of goods set forth in the present identification.
This is not an exhaustive list of identifications. Please check the Office’s website for additional acceptable identifications of goods and services at the following website:
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
New Trademark Rules pertaining to drawings went into effect on November 2, 2003. The new rules may be found at 37 C.F.R. §2.52(a) and information regarding these rules may be found in Exam Guide 01-03, section I.A.9.
All applications filed on or after November 2, 2003, must comply with the new drawing rules. For applications filed before November 2, 2003, the new rules are optional. Applicants opting to amend their drawing to comply with the new rules must advise the assigned Examining Attorney.
In this instance, the drawing for the design mark contains indefinite, soft edged lining throughout the mark that has caused a smudgy appearance in the drawing so that it does not reproduce in a satisfactory manner. As shown under standards number one, two, three and four below, “the drawing must appear in black and white; no color is permitted, every line and letter must be black and clear and the use of gray to indicate shading is unacceptable and the lining must not be too fine or too close together.” As such, lining which more clearly depicts the mark is required.
Furthermore, if the applicant wishes to register a configuration of the goods or their packaging or a specific design feature of the goods or packaging, the applicant should note the following additional requirements concerning the drawing. The drawing should present a single three‑dimensional view of the goods or packaging, showing those features which the applicant claims as its mark in solid lines and the remainder of the drawing in broken or dotted lines. In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983); 37 C.F.R. §2.52(a)(2)(iii); TMEP §§807.10 and 807.12. A clear and concise description of the mark should also be included in such an application. TMEP §§807.12 and 1202.02(d).
Finally, applicant must submit (1) a new drawing that shows the mark in color, (2) a statement that “the color(s) <specify> <is/are> claimed as a feature of the mark;” and (3) a description of where the colors appear in the mark, i.e., “the color(s) <name of color(s)> appear in <specify portion of the mark on which color(s) appear>”. The Office no longer accepts black and white drawings with color lining and/or a color claim. 37 C.F.R. §2.52(b)(1). (please note, the applicant has properly stated the colors orange and gray are a feature of the mark and has stated that the color orange is applied to the top housing of the goods, while the color gray is applied to the bottom of the housing of the goods – however, the informational (RAL 2004, Pantone 164C) [regarding orange] and (RAL 7035, Pantone 428U) [regarding gray] is superfluous and should be deleted from the color statement.
In the present case, color(s) is material to the commercial impression of the mark; its deletion would be considered a material alteration of the mark, and is therefore not permitted. 37 C.F.R. §2.72; TMEP §807.14(a).
The requirements for a special‑form drawing, in addition to the heading, are as follows.
(1) The drawing must appear in black and white; no color is permitted.
(2) Every line and letter must be black and clear.
(3) The use of gray to indicate shading is unacceptable.
(4) The lining must not be too fine or too close together.
(5) The preferred size of the area in which the mark is displayed is 2 1/2 inches (6.1 cm.) high and 2 1/2 inches (6.1 cm.) wide. In no case may it be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.
(6) If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. Sections 2.51 and 2.52; TMEP section 807.05. The Office will enforce these drawing requirements strictly. TMEP section 807.
The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant's complete name; the applicant's address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.
The drawing of the mark contains what could be construed as lining and stippling, which has potentially caused the smudgy appearance in the mark so that it does not reproduce in a satisfactory manner. As noted above, a new drawing is required. If the newly submitted drawing contains stippling/lining (as the current drawing potentially does), then the applicant must explain the purpose of the stippling/lining.
For example, if the lining and stippling in the drawing is for shading purposes only, then the applicant must insert a statement to that effect. 37 C.F.R. §2.37; TMEP §807.09(e) (i.e., “The stippling and lining shown in the mark is merely to indicate shading”). The examiner acknowledges that the applicant has stated that the dotted lining demonstrates the positioning of the mark – however additional statements may be required (based upon the newly submitted drawing).
(4) Claim of Ownership
Please note, a claim of ownership statement is improper for a prior pending application, and must be deleted in this instance.
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/CHRISTOPHER S. ADKINS/
christopher.adkins@uspto.gov
Examining Attorney
Law Office 113
(703) 308-9113 ext. 437
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.