Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/622356

 

This letter responds to the applicant’s communication filed on October 4, 2006.  The applicant  submitted two supporting verification statments from third parties recognizing the well-known goods of applicant’s.  However, the statements do not address the functionality issue which is the import of this refusal.  Therefore, the examining attorney maintains and makes final the section 2(e)(5) refusal.  The following is advised.

 

Section 23(c) Final Refusal on Supplemental Register

 

In the response of  August 7, 2006, the applicant submitted a color drawing and description of the mark and confirmed the mark as the entire configuration of the coupler with a claim for the color red.  The applicant alternatively amended the application to the Supplemental Register.

 

In the Office Action of September 5, 2006, the examining attorney refused registration under Section 23(c) on the Supplemental Register because the entirety of the mark is functional.  Trademark Act Section 23(c), 15 U.S.C. §1091(c); 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.  For the reasons in the Office Actions of January 30, 2006 and September 5, 2006, the examiner argues that the proposed mark “configuration of a coupler,” is functional and thus incapable of distinguishing the applicant’s goods because the particular features of this proposed mark, namely, the self-threading screws on both ends are functional for the goods because they allow for the coupling of two hoses with a quick twist.  This is a classic coupler configuration.  In support, the examiner presented applicant’s specimen of record and website excerpts in the Office Action of July 1, 2005 indicating other valve/hose adapters with similar features.

 

In the response of August 7, 2006, the applicant contends that the configuration is not subject to either a design or utility patent and that alternative designs are available.  The configuration consists of an straight, horizontal tube fixture with threading on both ends.  This refusal goes to the entirety of the mark, i.e., the straight, horizontal tube fixture or better known as a hose coupler is a common design for most couplers.  This is readily evident in third party goods seen at Exh. C, D and E of applicant’s communication of August 7, 2006 and in the Office Action evidence of July 1, 2005.

 

The straight, horizontal tube fixture functions for ease of connection between two hoses.  As can be seen in the evidence mentioned above, the straight, horizontal tube fixture is a well known and manufactured configuration for most couplers whether for RV sanitation use or other uses.  Therefore, the overall configuration of the coupler is functional for ease of connection between two hoses.  Where the evidence shows that the overall design is functional, the inclusion of a few arbitrary or otherwise nonfunctional features in the design will not change the result.  See Textron, Inc. v. U.S. International Trade Commission, 753 F.2d 1019, 224 USPQ 625, 628-29 (Fed. Cir. 1985); In re Vico Products Mfg. Co., Inc., 229 USPQ 364, 368 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB 1986).

 

Moreover, upon closer inspection, the elements of the mark are functional as well.  The threaded portion of the goods are functional.  The specimen and throughout the advertising submitted predominantly tout the “self-threading” ends to make a quick-twist and easy connection between two hoses and thus maintaining a tight seal without the use of clamps.  In this case, the applicant claims the predominant use is of a tighter seal without the use of clamps.  It is noted that other couplers for RV use do not have the “threads”.  However, the only difference between applicant’s and third party goods is the threaded portiona and its non-use of clamps.  The applicant’s contention that the alternative designs is not more expensive to make is insufficient to establish that the configuration is not functional.  In re Pingel Enterprise Inc., 46 USPQ2d 1811, 1821 (TTAB 1998); See In re Caterpillar Inc., 43 USPQ2d 1335, 1341 (TTAB 1997); In re American National Can Co., 41 USPQ2d 1841, 1844-45 (TTAB 1997).  Therefore, the main import here is that the “self-threading” ends function for a quick and easy connection between two hoses and that it provides a tight seal.  Applicant’s advertising that touts the utilitarian advantages of the design is a key factor in determining functionality.  In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982).

 

Therefore, the section 2(e)(5) refusal is maintained and made FINAL.

 

 

Response to a Final 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).

 

 

 

 

 

/William T. Verhosek/

USPTO

LO 114

571-272-9464

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.