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: 4/15/2011

 

 

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 after “Response”) dated March 18, 2011.

 

In her last Office Action, the examining attorney refused registration of applicant’s mark due to its functional and non-distinctive nature. Additionally, the examining attorney provided an advisory and required the applicant to provide additional information regarding its goods.

 

In it Response, applicant claimed that its mark has acquired distinctiveness under Trademark Act Section 2(f), dotted out all functional features of the mark other than the color scheme and “Dr. Scholl’s” presented in an oval, and provided an accurate mark drawing to this extent.  As such, the functionality and non-distinctive refusals are herein withdrawn. Applicant did not, however, respond to the information request. Therefore, this requirement is herein maintained and continued. Additionally, in light of applicant’s new mark drawing applicant is required to provide an accurate mark description. This issue is new and provides the basis for this additional mark description.

 

 

REQUIREMENT FOR AN ACCURATE MARK DESCRIPTION

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  Applicant must describe the presence and nature of the dotted lines within its mark drawing.  See TMEP §1202.02(c)(ii).

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of trade dress of the colors blue and purple as applied to insoles. The mark is light blue with a purple irregular shape superimposed over the lower portion of the mark. The bottom center portion of the purple shape contains a light blue oval cut out. The wording “Dr. Scholl’s” appears in dark blue stylized font within a dark blue oval carrier.  The dotted lines outlining the insole and elements on the insoles indicate placement of the mark on the goods and are not part of the mark.

 

 

REQUIREMENT FOR ADDITIONAL INFORMATION – Continued and Maintained

 

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

 of 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).

 

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

gretchen.ulrich@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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 4/15/2011 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 4/15/2011 (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.