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. 

 

Serial Number  76/629953

 

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

 

Refusal - Nondistinctive Configuration of Packaging

 

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 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 are considered when assessing the mark:

 

(1)    whether the proposed mark is a “common” basic shape or design;

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

(3)    whether the proposed mark is 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; and

(4)    whether the proposed mark is capable of creating a commercial impression distinct from the accompanying words.

 

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).

 

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).

 

Accordingly, registration is refused.

 

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.

 

Supplemental Register

 

Although the trademark Examining Attorney has refused registration on the Principal Register, applicant may respond to the stated refusal(s) by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.

 

Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

 

The registrant may use the registration symbol ®;

The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);

The registrant may bring suit for infringement in federal court; and

The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

The applicant may simply request that the application be amended to the Supplemental Register.

 

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

 

Mark Clarification

 

The applicant must clarify whether the bottle comprises the color green or whether the liquid product inside the bottle is green since it is unclear from the specimen of record. 

 

Claim and Description of Colors in Mark Required

 

Color drawings must be accompanied by the following:  (1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement describing where the color(s) appear on the mark.  37 C.F.R. §2.52(b)(1).  A color drawing will not publish without both of these statements.  See TMEP §807.07(a)(i) regarding the color claim, and TMEP §807.07(a)(ii) regarding the statement describing the color(s).  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(ii).

 

The applicant must specify the colors that are claimed as a feature of the mark using the following format: 

 

“The color green is claimed as a feature of the mark.”

 

If the liquid product inside the bottle is green, the following description of where the colors appear in the mark is suggested: 

 

“The mark consists of a bottle configuration.  The green portion of the mark represents the applicant’s liqueur inside the bottle.”

 

Entity Clarification

 

Applicant must clarify its entity type because there is an inconsistency in the application.  Specifically, the application indicates that two individuals own the mark.

 

A single business entity or one individual usually owns a mark.  If both named applicants own the mark jointly, they must state that they are joint applicants.  TMEP §803.03(d).  Applicant cannot amend the application to designate another entity as the applicant.  If the application was filed in the name of the wrong party, then this application is considered void.  In such a case, the true owner may re-file a new application for the mark, with a new filing fee.  TMEP §803.06.

 

The applicant may simply state the following:

 

“The applicants listed in the application are joint applicants.”

 

The applicant is encouraged to telephone the assigned Examining Attorney with any questions regarding the application.

 

 

/Kevin M. Dinallo/

Trademark Examining Attorney

Law Office 110

571-272-9731

kdinallo@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• 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 has been 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.