Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 9/12/2009

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

 

NO CONFLICTING MARKS 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.

 

 

APPLICATION SERIAL NO. 77756624

 

Please note that applicant may not apply for a mark which is identical to and for use in connection with the same goods as a prior registration or as another mark.   Please see the attachments showing photographs of applicant’s products, practically the same images shown on the specimens submitted with both applications.  These images show that the marks in both applications 77756624 and 77756637 are claiming the same three dimensional features, and are considered to be identical.  As such, applicant has the option of  expressly abandoning this application by submitting the following notice:

 

Applicant can expressly abandon this or the co-pending application online, using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html.  However, if applicant files an express abandonment on paper via regular mail, applicant may submit the following in a written notice:

 

Applicant hereby expressly abandons its application, Application Serial No. 7756624, pursuant to 37 C.F.R. §2.68.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

Letters of express abandonment must be signed by the applicant or an attorney who is authorized to practice before the Office under 37 C.F.R. §11.14.  TMEP §718.01.  If an applicant has appointed an attorney, the attorney must sign the letter of express abandonment.  If an applicant is not represented by an authorized attorney, the letter of express abandonment must be signed by the applicant or someone with legal authority to bind the applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §718.01. 

 

In addition, the proper signatory must personally sign or manually enter his/her electronic signature in the letter of express abandonment.  TMEP §605.02.

 

 

 

 

SECTION 2(F) CLAIM IS UNACCEPTABLE

 

For marks comprised of nondistinctive product containers or packaging, evidence of five years’ substantially exclusive and continuous use in commerce is not sufficient to show acquired distinctiveness.  In such cases, actual evidence that the matter is perceived as a mark for the relevant goods and/or services would be required to establish distinctiveness.  TMEP §1212.05(a); see In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (holding five year’s use of a configuration of a pillow-pack container for ear plugs is insufficient to show acquired distinctiveness); cf. In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (holding eight years’ use of a configuration of a pistol grip water nozzle for water nozzles is insufficient to show acquired distinctiveness).

 

Establishing acquired distinctiveness by actual evidence was explained by the Court of Appeals for the Federal Circuit in the Owens-Corning Fiberglas case, as follows:

 

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.

 

In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985).

 

An applicant may 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 and/or services.  37 C.F.R. §2.41(a); see TMEP §§1212.06 et seq.

 

The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to specific goods and/or services necessarily depends on the nature of the mark and the circumstances surrounding the use of the mark in each case.  TMEP §1212.01; see In re Owens-Corning Fiberglas Corp., 774 F.2d at 1125, 227 USPQ at 422.

 

In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods and/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 Labs., Inc., 170 USPQ 526 (TTAB 1971); In re Fleet-Wing Corp., 122 USPQ 35 (TTAB 1959).

 

 

Accordingly, registration is refused because the applied-for mark consists of a nondistinctive configuration of packaging for the goods that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052, 1127; see 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); In re J. Kinderman & Sons, Inc., 46 USPQ2d 1253 (TTAB 1998); TMEP §1202.02(b)(ii).

 

In this case, the applied-for mark is not inherently distinctive.  “[A] mark is inherently distinctive if [its] intrinsic nature serves to identify a particular source.”  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000) (internal quotations omitted) (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992)); TMEP 1202.02(b)(ii).  Longevity of use in commerce is not sufficient to show that applicant’s pill bottle is so unique and unusual in the field of containers used to store medical diagnostic strips for blood glucose testing.  Neither is it enough to show that this particular product packaging is identified with applicant as the particular source.

 

 

 

In response to this refusal, applicant may submit evidence that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) by submitting examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark in the United States, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the applied-for mark as a trademark, and any other evidence that establishes recognition of the matter as a mark for the goods.  See 37 C.F.R. §2.41(a), TMEP §§1212.06 et seq.  The evidence must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211, 54 USPQ2d 1065, 1068 (2000).

 

In determining whether the applied-for mark has acquired distinctiveness, the following factors are generally considered:  (1) length and exclusivity of use of the mark in the United States by applicant; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts in the United States to associate the mark with the source of the goods, such as in unsolicited media coverage and consumer studies.  See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).  A showing of acquired distinctiveness need not consider all of these factors, and no single factor is determinative.  Id.; 37 C.F.R. §2.41; see TMEP §§1212 et seq.

 

As an alternative to submitting evidence of acquired distinctiveness, applicant may amend the application to the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.02(b)(ii).

 

 

 

DRAWING AMENDMENT REQUIRED

 

For marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that applicant claims as its mark.  See 37 C.F.R. §2.52(b)(2); TMEP §§807.10, 1202.02(d); In re Minn. Mining & Mfg. Co., 335 F.2d 836, 839, 142 USPQ 366, 368-69 (C.C.P.A. 1964).  If the mark cannot be adequately depicted in a single rendition, applicant must file a petition to the Director requesting that the requirement to provide a single rendition of the mark be waived.  TMEP §807.10.

 

If the drawing includes additional matter not claimed as part of the mark (i.e., that reflects the position or placement of the mark), applicant must depict the additional matter using broken lines.  37 C.F.R. §2.52(b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 1202.02(d); see In re Water Gremlin Co., 208 USPQ 89, 91 (C.C.P.A. 1980).

 

In this case, applicant must depict the mark in the drawing to include broken or dotted lines to show the position of the mark on the goods or container.  Applicant must show the mark itself using solid lines.  See 37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(d).  The top part of the bottle that sticks out, or what appears to be a lid, appears to be a functional element that allows consumers to open the bottles more easily because it protrudes out a little so that the consumer’s finger can lift the bottle top open.  As such, this portion of the bottle does not appear to be a feature that can be claimed as part of the mark, and it should be depicted in dotted lines to show positioning of the bottle. 

 

In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that (1) indicates the mark is a configuration of the goods or their packaging or a specific design feature of the goods or packaging, and (2) describes in detail the features that applicant claims as its mark.  See 37 C.F.R. §§2.37, 2.52(b)(2); In re Famous Foods, Inc., 217 USPQ 177, 178 (TTAB 1983); TMEP §§807.10, 1202.02(d).  If applicant submits a drawing using broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the description must include a statement indicating that the matter shown in broken lines is not part of the mark and serves only to show the position or placement of the mark.  37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(d).

 

 

 

 

RESPONSE GUIDELINES 

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must submit certain documents electronically.  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and maintain a valid e-mail address.  37 C.F.R. §§2.23(a), (b); TMEP §§819, 819.02(a), (b).  Failure to do so will incur an additional fee of $50 per class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.

 

Therefore, applicant must submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of power of attorney; (6) appointments and revocations of domestic representative; (7) amendments to allege use; (8) statements of use; (9) requests for extension of time to file a statement of use; and (10) requests to delete a Trademark Act Section 1(b) basis.  If applicant files any of these documents on paper instead of via TEAS, then applicant must also submit the $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv), 2.23(a)(1); TMEP §§819.02(b), 819.04.  Telephone responses that result in the issuance of an examiner’s amendment will not incur this additional fee. 

 

 

 

 

Giselle M. Agosto

/Giselle M. Agosto/

Trademark Examining Attorney

Law Office 102

Phone:  (571) 272-5868

Fax: (571) 273-9102

 

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77756637) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 9/12/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77756637&doc_type=OOA&mail_date=20090912 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 9/12/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.