UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/622357
APPLICANT: VALTERRA PRODUCTS, INC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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CORRESPONDENT’S REFERENCE/DOCKET NO: G-3522
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 76/622357
The assigned trademark examining attorney has reviewed the referenced application and determined the following.
NO CONFLICTING MARK FOUND
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
SUBSTANTIVE REFUSAL – PROPOSED CONFIGURATION MARK IS FUNCTIONAL
Registration is refused because the proposed three-dimensional configuration mark appears to be functional 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 identified 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 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 proposed mark is a configuration of a plumbing fitting for use with recreational vehicles, and the goods are plumbing fitting for use with recreational vehicles. The particular features of this proposed mark, namely, the threaded screws and the four bayonet attachments are functional for the goods because they allow for a leak-proof seal and permit the fittings to twist right onto the recreational vehicle sewer hose without the need for a hose clamp. See applicant’s specimen of record. Attached are website excerpts indicating that other valve/hose adapters with similar features.
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).
Evidence in functionality cases normally involves consideration of the following four factors, commonly known as the “Morton-Norwich factors,” in reference to the Federal Circuit decision in which they were first articulated:
(1) the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
(2) advertising by the applicant that touts the utilitarian advantages of the design;
(3) facts pertaining to the availability of alternative designs; and
(4) facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.
In re Morton‑Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (C.C.P.A. 1982).
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).
The determination that a proposed mark is functional constitutes an absolute bar to registration 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); See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ2d 1422 (Fed. Cir. 2002); In re Controls Corp. of America, 46 USPQ2d 1308, 1311 (TTAB 1998).
In the alternative, the following refusal is issued.
REGISTRATION REFUSED -- NONDISTINCTIVE CONFIGURATION
In the alternative, assuming that the configuration mark is not functional, registration is refused because the proposed mark comprises a configuration of the goods that is not inherently distinctive and would not be perceived as a mark. 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).
Applicant is referred to the attached website excerpts indicating that other valve/hose adapters have similar features.
Applicant must present evidence that the proposed mark has acquired distinctiveness by submitting examples of advertising and promotional materials that specifically promote the proposed mark as a trademark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the proposed mark as a trademark 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.
In the alternative to submitting evidence of acquired distinctiveness, applicant may amend to the Supplemental Register.
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 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 Corps., 99 US 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 mark 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); In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791 (TTAB 1984) (configuration of halter square for horse halters).
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).
PROCEDURAL REQUIREMENTS
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following procedural requirements.
If applicant is seeking to register a configuration of the goods or their packaging or a specific design feature of the goods or packaging, then applicant should note the following additional requirements concerning the drawing for such cases. The drawing should present a single three-dimensional view of the goods or packaging showing in solid lines those features which applicant claims as its mark 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(b)(2) and (b)(4); TMEP §§807.08 and 807.10. In addition to these drawing requirements, a clear and concise description of the features claimed as the mark should also be included in such an application. 37 C.F.R. §2.37; TMEP §§807.08, 807.10 and 1202.02(d).
COLOR DRAWING
Applicant has submitted a drawing in color. As such, applicant must submit the following: (1) a statement that “the color red is claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the entire mark is in the color red.” 37 C.F.R. §2.52(b)(1). Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue. Exam Guide 01-03, section I.B.1.
If applicant is not claiming color as a feature of the mark, applicant must submit a new drawing showing the mark in black and white only.
REQUEST FOR INFORMATION REGARDING THIS REFUSAL OF REGISTRATION.
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.
RESPONSE
If applicant has any questions regarding any of the issues set forth in this Office action, applicant may telephone the trademark examining attorney.
/Douglas M. Lee/
Trademark Examining Attorney
Law Office 108
Tel. (571) 272-9343
Fax. (571) 273-9108
douglas.lee4@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
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.