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: 2/25/2010

 

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 NOTED

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

Registration is refused, however, for the following reasons:

 

FUNCTIONALITY REFUSAL

 

Registration is refused because the applied-for mark, which consists of a three-dimensional configuration of the goods, appears to be a functional design for such goods.  Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5); see TMEP §1202.02(a)-(a)(ii).  A feature is functional if it is “essential to the use or purpose of the [product]” or “it affects the cost or quality of the [product].”  TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995); TMEP §1202.02(a)(iii)(A).

 

A mark that consists of a three-dimensional configuration of a product or its packaging is functional, and thus unregistrable, when the evidence shows that the design provides identifiable utilitarian advantages to the user; i.e., the product or container “has a particular shape because it works better in [that] shape.”  Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002) (internal punctuation and citation omitted); see TMEP §1202.02(a)(iii)(A).

 

The evidence need not establish that the configuration at issue is the very best design for the particular product or product packaging.  A configuration can be held functional when the evidence shows that it provides a specific utilitarian advantage that makes it one of a few superior designs available.  See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (holding shape of a loudspeaker system enclosure functional because it conforms to the shape of the sound matrix and is thereby an efficient and superior design); In re Am. Nat’l Can Co., 41 USPQ2d 1841 (TTAB 1997) (holding metal beverage containers with vertical fluting functional because vertical fluting is one of a limited number of ways to strengthen can sidewalls and it allows for an easier way to grip and hold the can); TMEP §1202.02(a)(v), (a)(v)(C).

 

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 is one of many equally feasible, efficient and competitive designs, then it may be registrable.  See In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982).  However, a product configuration cannot be registered on the Principal Register without a showing of acquired distinctiveness.  See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000); TMEP §1202.02(b)-(b)(i).

 

In this case, the applied-for mark is the trade dress of an insole.  The mark is functional in that it approximates the shape of the foot, it contains curved bands and numbers that approximate the size of the foot and are likely to be used as guidance for cutting the insole to the appropriate size, it contains ridges and a raised area that appear to function to support the instep or raise the instep, and it features wavy lines that function to massage the foot.  As the attached Internet evidence from drugstore.com shows, the gel waves in the goods function to massage the heel.  As the attached Internet evidence from amazon.com also shows, the goods may be trimmed to a custom fit, evidencing the functionality of the curved lines towards the top of the insole and the numbers 8, 10 and 12 in those corresponding lines.

 

MARK COMPRISES NON-DISTINCTIVE CONFIGURATION OF THE GOODS

 

Registration is also refused because the applied-for mark consists of a nondistinctive product design or nondistinctive features of a product design 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; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 213-14, 54 USPQ2d 1065, 1068-69 (2000); In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006); see TMEP §1202.02(b)(i).

 

In this case, the applied-for mark is not inherently distinctive because it comprises a common shape or design for insoles and approximates the shape of the foot.  (Please see attached evidence from theinsolestore.com showing that insoles generally approximate the shape of the foot.)  Moreover, as the attached Internet evidence from amazon.com also shows, it is common practice in the applicant’s industry to use two colors in the design of insoles.

 

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.  See, e.g., In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008); In re Edward Ski Prods. Inc., 49 USPQ2d 2001, 2005 (TTAB 1999); In re Pingel Enter. Inc., 46 USPQ2d 1811, 1822 (TTAB 1998).

 

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.; see TMEP §§1212.06 et seq.

 

In establishing acquired distinctiveness, applicant may not rely on use other than use in commerce that may be regulated by the United States Congress.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  In re Rogers, 53 USPQ2d 1741, 1746 (TTAB 1999); TMEP §§1010, 1212.08.

 

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)(i).

 

DRAWINGS FOR CONFIGURATION MARKS

 

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(c)(iv); 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(c)(i); see In re Water Gremlin Co., 208 USPQ 89, 91 (C.C.P.A. 1980).

 

In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that (1) indicates that 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, 217 USPQ at 178; TMEP §§807.10, 1202.02(c)(ii).  If the drawing includes broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the description should 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(c)(ii).

 

ADVISORY REGARDING DRAWING AND MARK DESCRIPTION

 

Given the above refusals, the advisory regarding configuration drawings and mark descriptions and the requirement discussed below regarding deleting purely informational portions of trade dress marks, applicant is advised as follows:

 

If applicant elects to amend the drawing to claim only the portions that do not appear to be functional or purely informational (i.e., if applicant elects to register the colors blue and purple as applied to the insole and the wording “Dr. Scholl’s” within the oval), applicant is advised that the drawing must present all elements of the insole in dotted lines, except the wording “Dr. Scholl’s” within the oval and may present the insole in the colors blue and purple.  (Please note that the outline of the insole must also be presented in dotted lines.)  If applicant amends the drawing as such, the following mark description statement is suggested:

 

The mark consists of the wording Dr. Scholl’s in blue on a blue oval, the color blue as applied to the bottom, foot-shaped portion of the insole and the color purple as applied to the top portion of the insole with a hollow oval cut-out showing the blue, bottom portion of the insole.  The matter shown in broken lines is not part of the mark and serves only to show the position of placement of the mark. 

 

Applicant must respond to the following requirements:

 

FUNCTIONALITY – INFORMATION REQUEST

 

Applicant must provide the following information and documentation regarding the applied-for three-dimensional configuration mark:

 

(1)  A written statement as to whether the applied-for mark is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications.  Applicant must also provide copies of the patent and/or patent application documentation.;

 

(2)  Advertising, promotional and/or explanatory materials concerning the applied-for configuration mark, particularly materials specifically related to the design feature(s) embodied in the applied-for mark.;

 

(3)  A written explanation and any evidence as to whether there are alternative designs available for the feature(s) embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive.  Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.;

 

(4)  A written statement as to whether the product design or packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container.  Applicant must also provide information regarding the method and/or cost of manufacture relating to applicant’s goods.; and

 

(5)  Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.

 

See 37 C.F.R. §2.61(b); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982); TMEP §§1202.02(a)(v) et seq.

 

With regard to this requirement for information, the Trademark Trial and Appeal Board and its appeals court have recognized that the necessary technical information for ex parte determinations regarding functionality is usually more readily available to an applicant, and thus the applicant will normally be the source of much of the evidence in these cases.  In re Teledyne Indus. Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); see In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (holding registration was properly refused where applicant failed to comply with trademark examining attorney’s request for copies of patent applications and other patent information); TMEP §1202.02(a)(v).

 

NEW DRAWING REQUIRED

 

A photograph of the applied-for trade dress is acceptable as a drawing if it otherwise meets the drawing requirements (e.g., it does not contain extraneous, purely informational matter such as net weight, contents, or business addresses) and it fairly represents the mark.  TMEP §1202.02(c)(i)   In this case, the drawing is not acceptable because it contains extraneous, purely informational matter.  That is, the wording RIGHT and BOTTOM are purely informational in that it informs the consumer in how to place the goods.  In addition, the numbers 8, 10 and 12, and any other numbers that may appear to correspond with the sizes depicted by the curved arches on the goods, merely inform the consumers of such sizes so that consumers may approximate where the goods must be cut for a custom fit.  Therefore, applicant must submit a new drawing deleting such elements.  Applicant is advised to submit a new drawing while considering the configuration drawing advisory set forth above.

 

The drawing is also unacceptable because the literal elements referenced by applicant in its mark description are not legible and thus, the drawing will not create a high quality image when reproduced.  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52.  Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).

 

If applicant submits a new drawing in the form of a digitized image, it must be in jpg format.  The Office recommends that the digitized image have a length and width no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); TMEP §807.05(c).

 

Amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.

 

SPECIMEN ILLEGIBLE

 

The specimen is not acceptable because the literal elements referenced by applicant in the mark description are illegible and thus the specimen does not clearly show the applied-for mark in use in commerce for the identified goods.  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

Therefore, applicant must satisfy one of the following:

 

(1)  Submit by mail or fax a true and unaltered copy of the originally submitted specimen, and a statement by the person who transmitted the application to the Office that the resubmitted specimen is a true copy of the specimen that was originally filed with the application.  TMEP §904.02(a); see TMEP §904.02(b).; or 

 

(2)  Submit a substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §§904.02(a), 904.05; see 37 C.F.R. §2.193(e)(1); TMEP §904.02(b).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq. 

 

If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

REQUEST FOR ADDITIONAL INFORMATION

 

The examining attorney may request additional information in order to examine the application properly.  37 C.F.R. §2.61(b).  In this case, the applicant must respond to the following questions:

 

• Does the overall shape of the goods function to approximate the shape of the foot?
• Do the curved bands towards the top of the goods function to guide consumers when cutting the goods for a custom fit?
• Do the numbers featured with the lines towards the top of the goods function to inform consumers of foot or shoe sizes?
• Do the words RIGHT and BOTTOM function to inform consumers how to place the goods?
• Does the raised purple area in the goods function to support or protect the arch, instep or heel?
• If the raised purple area in the goods does not function to support or protect the arch, instep or heel, what is the function or purpose of this design element?
• Do the dots or circles towards the top portion of the goods function to massage the foot?
• If the dots or circles towards the top portion of the goods do not function to massage the foot, what is the function or purpose of these design elements?
• Do the wavy lines towards the bottom portion of the goods function to massage the foot or heel?
• If the wavy lines towards the bottom portion of the goods do not function to massage the foot or heel, what is the function or purpose of these design elements?

 

Applicant must also submit advertising materials or similar materials utilized by applicant to describe the goods to consumers.    If available, such materials should include information or descriptions about different portions and elements of the insoles.

 

Please note that failure to fully comply with a request pursuant to 37 C.F.R. §2.61(b) is an independent basis for refusal and may result in the refusal of the entire application. See In re DTI Partnership, L.L.P., 67 USPQ2d 1699 (TTAB 2003); In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

 

 

 

/Melissa Vallillo/

Examining Attorney

Law Office 113

Phone: (571) 272-5891

Fax: (571) 273-9113

 

 

 

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. 77926629) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 2/25/2010 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=77926629&doc_type=OOA&mail_date=20100225 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 2/25/2010 (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.