Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/324661

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.01.

 

Nondistinctive Configuration of Goods -  Refusal

 

The examining attorney refuses registration on the Principal Register because the proposed mark is a configuration of the goods that has not acquired distinctiveness as a source indicator for the applicant’s goods in commerce.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  The United States Supreme Court has held that a configuration of a product can never be inherently distinctive, and is registrable on the Principal Register only with a showing of acquired distinctiveness.  Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).  See also Textron, Inc. v. U.S. International Trade Commission, 753 F.2d 1019, 224 USPQ 625 (Fed. Cir. 1985); In re Craigmyle, 224 USPQ 791 (TTAB 1984); TMEP §1202.02(b)(i). 

 

In the event of any further prosecution of the application, the applicant must present evidence that the proposed mark has acquired distinctiveness for the applicant’s goods in commerce by submitting examples of advertising and promotional materials that specifically promote the subject matter for which registration is sought as a mark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the subject matter as a mark and any other evidence that establishes recognition of the matter as a mark for the goods.  The evidence must relate to the promotion and recognition of the specific configuration embodied in the proposed mark and not to the goods in general. See TMEP §1202.04(d). 

A mark comprising the configuration of the identified goods or their packaging will be held functional, and thus unregistrable, where the evidence shows that the product design or product packaging design provides identifiable utilitarian advantages to the user – i.e., where the product or container “has a particular shape because it works better in that shape.”  Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ2d 1422, 1425 (Fed. Cir. 2002) (citation and internal quotation marks omitted); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984); see also In re Virshup, 42 USPQ2d 1403, 1405 (TTAB 1997); In re Cabot Corp., 15 USPQ2d 1224, 1227 (TTAB 1990).

A feature is functional as a matter of law if it is “essential to the use or purpose of the product or if it affects the cost or quality of the product.”  TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161, 1163-64 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982). 

In order for a proposed mark to be held functional, the evidence need not establish that the configuration at issue is the very best design for the particular product or product packaging.  Rather, a finding of functionality is proper where the evidence indicates that the configuration at issue provides specific utilitarian advantages that make it one of a few superior designs available.  See, e.g., In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985); In re American National Can Co., 41 USPQ2d 1841 (TTAB 1997); In re Lincoln Diagnostics Inc., 30 USPQ2d 1817 (TTAB 1994); In re Bio-Medicus Inc., 31 USPQ2d 1254 (TTAB 1993); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990); In re Peters, 6 USPQ2d 1390 (TTAB 1988).

 

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 rather is simply one of many equally feasible, efficient and competitive designs, then the mark may be registrable on the Principal or the Supplemental Register.  In re Morton‑Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982); TMEP §§1202.02(b)(i) and 1202.02(b)(ii).  However, a product configuration can never be inherently distinctive, and therefore cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f).  Wal‑Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).  

 

The applicant must provide the following information in order to permit the examining attorney to reach an informed final determination concerning the proposed mark.  37 C.F.R. §2.61(b).

 

(1) The applicant must indicate whether the proposed mark is or has been the subject of either a design or utility patent, including existing and/or expired patents.  The applicant must also indicate whether the proposed mark is or has been the subject of a patent application for either a design or utility patent, including both pending and abandoned patent applications.  For any of the above for which a positive response is provided, the applicant must provide copies of the patent(s) or pending or abandoned patent application(s). 

 

(2) The applicant must provide any available advertising, promotional and/or explanatory materials concerning the configuration for which registration is sought, particularly any materials specifically related to the design feature(s) embodied in the proposed mark. 

 

(3) The applicant must indicate whether alternative designs are available for the feature(s) embodied in the proposed mark, as well as whether the alternative designs are equally efficient and/or competitive.  The applicant must also include with this response any available information concerning designs used by competitors.

 

(4) The applicant must indicate whether the product design or product packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container.  If the applicant has any relevant information regarding the method and/or cost of manufacture, that information must also be provided. 

 

The applicant may also furnish any other evidence the applicant considers relevant to the registrability of the proposed mark. 

 

It is noted, with regard to the above information request, that the Board and courts have recognized that relevant technical information is usually more readily available to an applicant, and that the applicant will thus normally be the source of most of the evidence pertaining to the functionality issue.  In re Teledyne Industries Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); In re Witco Corp., 14 USPQ2d 1557, 1560 (TTAB 1989); In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (registration properly refused where applicant failed to comply with examining attorney’s request for copies of patent applications and other patent information); see also TMEP §§1202.02(a)(v) et seq.

 

The applicant may also wish to consider amendment to the Supplemental Register.

 

Supplemental Register

 

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 801.02(b) and 816 et seq.

 

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. Section 2.76 or statement of use under 37 C.F.R. Section 2.88 has been timely filed.  37 C.F.R. Section 2.47(c); TMEP section 1102.03. When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 206.01.

 

A trademark on the Supplemental Register is merely considered "capable" of being a trademark -- there has been no determination that it is a trademark.  Nevertheless, registration on the Supplemental Register does permit:

 

1.  use of the federal registration symbol;

2.  use of the trademark as a bar to registration of confusingly similar trademarks filed by others;

3.  registration abroad based on U.S. rights; and

4.  the registrant may bring suit in federal court.

 

Informalities

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Drawing Does Not Reproduce Satisfactorily

 

The drawing is not acceptable because it is gray and unclear and does not reproduce satisfactorily.  The applicant must submit a new drawing showing the mark clearly and conforming to the requirements below.

 

Special Form Drawing Through TEAS - Requirements

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The Office will only accept an image in .jpg format.  The image must be formatted at no less than 300 dots per inch and no more than 350 dots per inch; and with a length and width of no less than 250 pixels and no more than 944 pixels.  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.  37 C.F.R. §2.53.

 

Special Form Drawing on Paper – Requirements

 

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

Drawings in Configuration Cases

 

If applicant is seeking to register a configuration of the goods or their packaging or a specific design feature of the goods or packaging, then applicant should note the following additional requirements concerning the drawing for such cases.  The drawing should present a single three-dimensional view of the goods or packaging showing in solid lines those features which applicant claims as its mark and the remainder of the drawing in broken or dotted lines.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983); 37 C.F.R. §2.52(b)(4); TMEP §§807.10 and 807.12.  In addition to these drawing requirements, a clear and concise description of the features claimed as the mark should also be included in such an application.  37 C.F.R. §2.37; TMEP §§807.12 and 1202.02(d).

 

Claimed Application Will Not be Printed

 

Applicant’s claim of ownership of Application Serial No. 78110376 will not be printed on any registration which may issue from this application because only claims of ownership of pertinent live registrations are printed.  If the claimed pending application registers before this application, then applicant may claim ownership of it by registration number.  37 C.F.R. §2.36; TMEP §812.

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

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

 

 

/Elizabeth Pignatello/

Trademark Examining Attorney

Law Office 105

(703) 308-9105 Ext. 224

(703) 872-9825 fax

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.