Offc Action Outgoing

Applicant’s acquired distinctiveness claim based on five years’ use in commerce was refused in the first Office action because the applied-for mark is highly descriptive of applicant’s goods. In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989); TMEP §1212.05(a).

Applicant was informed that the following factors are generally considered in an acquired distinctiveness analysis: (1) length and exclusivity of use by applicant of the mark in the United States; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts, such as unsolicited media coverage and consumer studies, in the United States to associate the mark with the source of the goods and/or services identified in the application. In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 U.S.P.Q.2d 1420, 1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider each of these factors, and no single factor is determinative. Id.; see 37 C.F.R. §2.41; TMEP §§1212 et seq.

In response, applicant stated, and supported with evidence, that applicant has sold 237,920,423 units, totaling $135,142,680.00 in gross sales since January 2000.

Applicant’s acquired distinctiveness claim remains unacceptable.

The burden of proving that a mark has acquired distinctiveness is on the applicant. Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959); TMEP §1212.01. An applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.

Allegations of sales cannot per se establish that a term has acquired significance as a mark. It is necessary to examine the advertising material to determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers. TMEP §1212.06(b); see In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).

Applicant has submitted two pages of coupons for the product at issue. While applicant uses a TM symbol and displays the proposed mark in big letters, there is no evidence that consumers view the proposed mark as a trademark, distinct from similar goods of others.

The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source. TMEP §1212.06(b); see In re Packaging Specialists,221 USPQ at 920; In re Redken Labs., Inc., 170 USPQ 526 (TTAB 1971).

Applicant has provided evidence of high sales figures for the goods at issue; however, such evidence is not dispositive of whether the proposed mark has acquired distinctiveness. Such extensive sales may demonstrate the commercial success of applicant’s goods, but not that relevant consumers view the matter as a mark for such goods. See In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re Busch Entm’t Corp., 60 USPQ2d 1130, 1134 (TTAB 2000).

The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); see In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); TMEP §1212.05(a).

More evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods would be less likely to believe that it indicates source in any one party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Assocs., Inc., 1 USPQ2d 1657 (TTAB 1986).

However, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark. Such a designation cannot become a trademark under any circumstances. See In re Bongrain, 894 F.2d at 1317 n.4, 13 USPQ2d at 1728 n.4; H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).

With respect to the type of evidence provided by applicant, discussed in the second paragraph above, applicant has indicated only that it has used the mark since 1989 and that it advertises on television, radio, magazine, newspaper and by way of its weekly advertisements.

Applicant has not show that its use is exclusive, and the evidence attached to the first Office action shows the contrary; numerous third parties use the mark. Applicant has not indicated the expense or amount of advertising of the mark in the United States. And applicant has not shown any efforts in the United States to associate the mark with the source of the goods identified in the application.

The evidence of record therefore falls far short of what would be needed to make an acquired distinctiveness showing in a case where, as here, the proposed mark is highly descriptive.

The refusal to register is therefore continued and now made FINAL.

Response Guidelines

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

Applicant is invited to call or email the assigned examining attorney with any specific questions regarding the substance of this action.

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.