Offc Action Outgoing

This office action responds to applicant’s correspondence dated 9 October 2007. Applicant’s amended identification is acceptable and has been made of record. The examining attorney has reviewed the submission and the evidence and has determined the following:

Sections 1,2 and 45 – Nondistinctive Configuration of Goods Refusal

The examining attorney has considered applicant’s arguments carefully but found them unpersuasive. Accordingly, the refusal under Trademark Act Sections 1, 2 and 45 because the proposed mark consists of a nondistinctive configuration of the goods that does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source, is continued and maintained. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127.

Applicant should note the following additional ground for refusal.

Configuration/Functionality Refusal

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.

In functionality cases, the trademark examining attorney must establish a prima facie case that the trade dress sought to be registered is functional. The burden then shifts to applicant to present sufficient evidence to rebut the trademark examining attorney’s prima facie case of functionality. In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984); In re Bio-Medicus Inc., 31 USPQ2d 1254, 1257 n.5 (TTAB 1993).

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).

The proposed mark is described as the “overall visual impression of the distinctive configuration of Applicant's measuring device”, and the goods are “measuring device, namely, moisture/density guage.” The particular features of this proposed mark that show keypads, display panel screen, are functional for the goods because they serve a utilitarian purpose--keypads are used for entering information and the panel screen displays the information.

Moreover, applicant’s advertisements indicate the existence of patents with respect to the goods. The examining attorney notes the “Features & Benefits” flyer in Exhibit 10 evidences USA Patent Numbers: 4,749,858 & 5,442,186. The Features sections of the flyer clearly tout the utilitarian advantages of the design: “Simple to operate—single keystroke function access. Direct readout of test result” and “calculator mode with storage.”

In light of the foregoing, registration is refused under Trademark Act Section 2(e)(5).

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

Drawing Requirement in Configuration Cases

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).

If applicant’s keypad, reading panel, handle or any other parts of the gauge are not part of the mark, applicant must re-submit the drawing dotting out those parts of the mark that are not intended to be part of the mark.

Distinctiveness under Section 2(f)--Insufficient

Applicant has asserted acquired distinctiveness based on 17 years’ use in commerce. However, applicant did not submit the required statement claiming acquired distinctiveness supported by a declaration. Therefore, applicant’s 2(f) claim is insufficient.

To amend the application to Section 2(f) based on five years length of use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(b); TMEP §1212.05(d).

Requirement for Additional Information

To permit an informed determination concerning the registrability of the proposed mark, applicant must provide the following information. 37 C.F.R. §2.61(b). See 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).

(1) copies of any patent(s) or any pending or abandoned patent application(s), applicant should clearly indicate if the patents are utility patents or design patents;

(2) any material specifically related to all the features embodied in the proposed mark and indicate their purpose;

(3) applicant must indicate whether alternative designs are available; and

(4) applicant must indicate whether the features in the mark make the product easier or cheaper to manufacture.

Failure to respond to a request for information can be grounds for refusing registration. In re DTI P'ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003). Merely stating that information about the goods or services is available on applicant’s website is an inappropriate response to a request for additional information, and is insufficient to make the relevant information of record. In re Planalytics, Inc., 70 USPQ2d 1453, 1457-1458 (TTAB 2004).

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Emily Chuo/

Trademark Examining Attorney

Law Office 101

U.S. Patent & Trademark Office

Phone: 571.272.1728

Emily.Chuo@uspto.gov

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.