UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 9/20/2010

 

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

 

INTRODUCTION TO ADDITIONAL NON-FINAL OFFICE ACTION

 

This additional, non-final Office Action is written in response to applicant’s “Response to Office Action” (herein “Response”) dated August 25, 2010.

 

In her initial Office Action, the examining attorney refused registration of applicant’s mark due to its functional nature and its non-distinctive product design. Additionally, applicant required a new mark drawing, a new mark description, additional information and an acceptable specimen.

 

In its Response, applicant provided a new drawing and amended its mark description.  For the reasons provided below the following refusals and requirements are continued and maintained:   functionality refusal, non-distinctive product design refusal; and requirements for a new mark drawing, a new mark description, additional information and an acceptable specimen.

 

 

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).  This requirement is herein maintained and continued from the initial Office Action.

 

In this case, the applied-for mark is the trade dress of an insole.  The mark is functional in that the raised area of the arch and the five raised bands appear to support the instep or raise the instep, and it features wavy lines that function to massage the foot.  Therefore, the three dimensional bands are functional designs for the goods. As such, this refusal in maintained and continued.

 

 

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).

 

Two aspects of applicant’s product design are non-distinctive, and are addressed below separately.

 

Color in Inherently Non-Distinctive –New Issue

 

In this case, the applied-for mark is not inherently distinctive because it consists of color.  The or Trademark Manual of Examining Procedure or “TMEP” provides the following regarding color marks: 

 

            1202.05(a) Color Marks Never Inherently Distinctive

 

Color marks are never inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163, 34 USPQ2d 1161, 1162-1163 (1995); In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001). Therefore, the examining attorney must refuse to register a color mark on the Principal Register, unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The examining attorney must issue this refusal in all color mark applications where acquired distinctiveness has not been shown, regardless of the filing basis of the application. The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45, or does not function as a service mark under §§1, 2, 3, and 45.

If the proposed color mark is not functional, it may be registrable on the Principal Register if it is shown to have acquired distinctiveness under §2(f). If it is not distinctive, it is registrable only on the Supplemental Register. See In re Hudson News Co., 39 USPQ2d 1915 (TTAB 1996), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“blue motif” applied to retail store services not registrable on Principal Register without resort to Section 2(f)); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (the color green, as uniformly applied to medical instruments, not barred from registration on the basis of functionality; however, evidence failed to establish that the color had become distinctive of the goods); In re Deere & Co., 7 USPQ2d 1401 (TTAB 1988) (the colors green and yellow, as applied to the body and wheels of machines, respectively, not barred from registration on the basis of functionality; evidence held to establish that the colors had become distinctive of the goods).

 

The burden of proving that a color mark has acquired distinctiveness is substantial. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink, as uniformly applied to fibrous glass residential insulation, shown to have acquired distinctiveness as a trademark for the goods); In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998) (evidence insufficient to establish that green rectangular background design had acquired distinctiveness as applied to clothing and footwear); In re American Home Products Corp., 226 USPQ 327 (TTAB 1985) (tri-colored, three-dimensional, circular-shaped design found to have become distinctive of analgesic and muscle relaxant tablets); In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (evidence found insufficient to establish that two-colored drug capsules and multi-colored seeds or granules contained therein had become distinctive of methyltestosterone). A mere statement of long use is not sufficient. The applicant must demonstrate that the color has acquired source-indicating significance in the minds of consumers.

 

As noted above, the commercial impression of a color may change depending on the object to which it is applied. Therefore, evidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects, but not for other objects. See Thrifty, 61 USPQ2d at 1124. Cf. Qualitex, 514 U.S. at 163, 34 USPQ2d at 1162-1163 (“The imaginary word ‘Suntost,’ or the words ‘Suntost Marmalade,’ on a jar of orange jam immediately would signal a brand or a product ‘source’; the jam’s orange color does not do so. But, over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods – i. e., ‘to indicate’ their ‘source...’”).

 

Moreover, as the attached Internet evidence from amazon.com also shows, it is common practice in the applicant’s industry to use at least two colors in the design of insoles:  http://www.drugstore.com/products/prod.asp?pid=208470&catid=882&fromsrch=insoles,   http://www.drugstore.com/products/prod.asp?pid=187555&catid=882&fromsrch=insoles, http://www.amazon.com/Profoot-Miracle-Molding-Insoles-Lavendar/dp/B001INWDZS/ref=sr_1_21?ie=UTF8&s=hpc&qid=1285023725&sr=1-21, http://www.amazon.com/Soft-Point-Viscolas-Sports-Insole/dp/B000MFWG28/ref=sr_1_58?ie=UTF8&s=hpc&qid=1285023832&sr=1-58, http://www.amazon.com/Spenco-PolySorb-Walker-Runner-Insoles/dp/B0012YO4JG/ref=sr_1_62?ie=UTF8&s=hpc&qid=1285023832&sr=1-62, http://www.amazon.com/Shock-Doctor-Insole-Orange-Womens/dp/B002BETQDU/ref=sr_1_89?ie=UTF8&s=hpc&qid=1285023912&sr=1-89, http://www.amazon.com/Spenco-Q-Factor-Womens-Support-Insoles/dp/B00130C4DM/ref=sr_1_102?ie=UTF8&s=hpc&qid=1285023942&sr=1-102,

 

Therefore, the colors comprising applicant’s mark are not distinctive and cannot be registered on the Principal Register without a claim of acquired distinctiveness. As such, this refusal is herein maintained and continued.

 

 

Configuration of the Goods in Non-Distinctive

 

Additionally, the applied-for mark is not inherently distinctive because it comprises a common shape, feature or design for insoles.  As the following attached internet evidence demonstrates, it is common practice in the applicant’s industry to place ridges in the arch area of an insole:  http://www.drugstore.com/products/prod.asp?pid=150857&catid=882&fromsrch=insoles, http://www.spenco.com/products/footcare/spenco-gel/total-support, http://www.amazon.com/Spenco-Performance-Gel-Insole-3/dp/B000EHHMTG/ref=sr_1_31?ie=UTF8&s=hpc&qid=1285023764&sr=1-31, http://www.amazon.com/Sof-Sole-Athlete-Cushion-Insole/dp/B002VEGMRS/ref=sr_1_36?ie=UTF8&s=hpc&qid=1285023764&sr=1-36, http://www.amazon.com/Pair-Womens-Massaging-Insoles-5-7/dp/B001PS665Y/ref=sr_1_48?ie=UTF8&s=hpc&qid=1285023764&sr=1-48, http://www.amazon.com/Tulis-Mustangs-Universal-Insole-Ladies/dp/B000MT3G9G/ref=sr_1_51?ie=UTF8&s=hpc&qid=1285023832&sr=1-51,

 

Therefore, even this design aspect of applicant’s goods were registrable, they are not distinctive and cannot be registered on the Principal Register without a claim of acquired distinctiveness. As such, this refusal is herein maintained and continued.

 

 

SECTION 2(f): ACQUIRED DISTINCTIVENESS

 

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.

 

 

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 trade dress consisting of the blue and purple.  Applicant’s mark is light blue with a purple portion super imposed over the lower portion of the mark and extending up the outer right side,  The bottom center of this purple portion dears a cut-out which reveals light blue oval shape.  The wording “Dr. Scholl’s” appears in the middle of the mark and is presented in a dark blue stylized font within a dark blue oval outline.  The oval and word elements are superimposed over the light blue.  The matter shown in broken lines is not part of the mark and serves only to show the position of placement of the mark. 

 

Please note that if applicant adopts this mark description it must amend its mark drawing accordingly. Namely, it will have to dot out the five, raised bar elements appearing in the instep/right portion of the mark.

 

 

REQUIREMENT FOR ADDITIONAL INFORMATION – New Issues

 

To permit proper examination of the application, applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

 

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

Applicant must provide the following information and documentation regarding the applied-for three-dimensional configuration mark.  Additionally, applicant must provide answers to the following questions and provide the following information:

 

           

(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.

 

            (6)  Does applicant have a utility patent for the ridged elements located in the instep portion

            f the insole?

 

(7) Has applicant applied for a patent for any ridged or similar elements to those present in the arch portion of the insole?

 

(8) Are there any third party patents for such or similar ridged or elevated bars/members  in the insoles?

 

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).

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI, 67 USPQ2d at 1701-02.  Merely stating that information about the goods 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.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

UNACCEPTABLE SPECIMEN OF USE

 

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 and/or services.  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 online via the Trademark Electronic Application System (TEAS), or by regular mail, 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.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 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).

 

 

 

RESPONSE

 

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

 

 

/N. Gretchen Ulrich/

N. Gretchen Ulrich

Trademark Attorney-Advisor

Law Office 113

Phone: (571) 272-1951

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 9/20/2010 FOR

SERIAL NO. 77926629

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

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

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 9/20/2010 (or sooner if specified in the office action).

 

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.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

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