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: 5/15/2012

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues

 

1)      Functionality Refusal.

2)      Prior Pending Applications.

 

FUNCTIONALITY - PACKAGING

 

Registration is refused because the applied-for mark, which consists of a three-dimensional configuration of packaging for the goods, appears to be a functional design for such packaging.  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) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995)); Inwood Labs., Inc., v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982); 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 Dietrich, 91 USPQ2d 1622 (TTAB 2009) (holding particular spoke arrangement of a bicycle wheel functional because it is more stable and provides better performance than wheels with other spoke arrangements featuring the same or greater number of spokes); 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).

 

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, or any feature(s) thereof, 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).

 

DISTINCTIVENESS

 

Distinctiveness and functionality are two separate issues in an application for a three-dimensional configuration mark consisting of a product design, product packaging or other types of trade dress.  See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001); In re Ennco Display Sys., Inc., 56 USPQ2d 1279 (TTAB 2000); TMEP §1202.02.

 

“[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).

 

The Supreme Court distinguished between two types of trade dress - product design and product packaging.  If the trade dress falls within the category of product design, it can never be inherently distinctive and will always require evidence of acquired distinctiveness or secondary meaning.  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215, 54 USPQ2d 1065, 1069 (2000); TMEP §1202.02(b)(i).

 

Product design almost invariably serves purposes other than source identification, and consumers are aware that even the most unusual product design is intended not to identify the source of the goods, but to render the product itself more useful or appealing.  See Wal-Mart Stores, Inc., 529 U.S. at 213, 54 USPQ2d at 1069; In re Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); TMEP §1202.02(b)(i).

 

Unlike product design, product packaging may be inherently distinctive and registrable on the Principal Register without a showing of acquired distinctiveness.  However, in close cases in which it is difficult to determine whether the trade dress at issue is product packaging or product design, “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”  Wal-Mart Stores, Inc., 529 U.S. at 215, 54 USPQ2d at 1070; In re Slokevage, 441 F.3d at 962, 78 USPQ2d at 1399; TMEP §1202.02(b)(ii).

 

An applicant bears the burden of proving that a mark has acquired distinctiveness.  See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1578-79, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 949, 122 USPQ 372, 374-75 (C.C.P.A. 1959); TMEP §1212.01.

 

An applicant can present any competent evidence to establish that a mark has acquired distinctiveness.  The amount and type of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.  See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985); TMEP §1212.01.

 

There are three types of evidence that can be used to establish acquired distinctiveness:

 

(1)        A claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods and/or services that are the same as or related to those named in the pending application.  37 C.F.R. §2.41(b); see TMEP §§1212.04 et seq.;

 

(2)        A verified statement by the applicant that the mark has become distinctive of the applicant’s goods and/or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made.  37 C.F.R. §2.41(b); see TMEP §§1212.05 et seq.; or

 

(3)        Actual evidence of acquired distinctiveness.  37 C.F.R. §2.41(a); TMEP §1212.06.  Such evidence may include the following:  examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark or service mark 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 or service mark; and any other evidence that establishes recognition of the applied-for mark as a source-identifier for the goods and/or services.  See TMEP §§1212.06 et seq.

 

TMEP §1212.

 

Applicant can provide one or any combination of these types of evidence.  Depending on the mark and the facts in the record, a claim of ownership of a prior registration or a claim of five years’ substantially exclusive and continuous use in commerce may be insufficient to establish a prima facie case of acquired distinctiveness.  Actual evidence of acquired distinctiveness can be provided regardless of the length of time the mark has been used.  See Ex parte Fox River Paper Corp., 99 USPQ 173 (Comm’r Pats. 1953); TMEP §1212.01.

 

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).

 

If an applied-for mark of a configuration of packaging is not inherently distinctive, the mark may be registered on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register.  TMEP §1202.02(b)(ii).  A mark has acquired distinctiveness when the public views its primary significance as identifying the source of the product rather than the product itself.  Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211, 54 USPQ2d 1065, 1068 (2000); TMEP §1202.02(b)(ii).

 

In the following cases, the evidence was found to support a claim of acquired distinctiveness:  In re World’s Finest Chocolate, Inc., 474 F.2d 1012, 177 USPQ 205 (C.C.P.A. 1973) (holding packaging for candy bars registrable and finding distinctiveness based on evidence incorporated by reference from the Board’s decision, which evidence consisted of a claim of five years’ substantially exclusive and continuous use, an affidavit from applicant’s president attesting to long use of the packaging and substantial sales figures, and thirty-three letters from customers regarding the distinctiveness and source-indicating significance of the packaging); Ex parte Haig & Haig Ltd., 118 USPQ 229, 230 (Comm’r Pats. 1958) (holding bottle configuration for whiskey registrable where the court incorporated facts from a decree of injunction entered in 1912 by the Superior Court of Cook County, Illinois, which had found that the bottle configuration had been associated with the goods and had come to be known by the public, dealers and consumers as the “Pinched Decanter” or “Pinched Bottle,” and that the mark had been in use for more than fifty years).  See also TMEP §1202.02(b)(ii).

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirement(s) set forth below.

 

PRIOR PENDING APPLICATIONS

 

The Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, please be advised that potentially conflicting marks in prior-filed pending applications may present a bar to registration.

 

Information regarding pending Application Serial Nos. 77467249 and 85616520 are enclosed.  The filing dates of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks.  If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

OWNERSHIP OF POTENTIONALLY CONFLICTING APPLICATIONS

 

If the mark(s) in the potentially conflicting prior-filed application(s) has been assigned to applicant, applicant can provide evidence of ownership of the mark(s) to avoid a possible refusal on the basis of likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); TMEP §812.01. 

 

Applicant can provide evidence of ownership of the mark(s) by satisfying one of the following:

 

(1)  Record the assignment with the Office’s Assignment Services Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)  Submit copies of documents evidencing the chain of title; or

 

(3)  Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of Application Serial No(s). 77467249 and 85616520.” 

 

See 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73; TMEP §§502.02(a), 812.01.

 

Merely recording a document with the Assignment Services Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax.  Cf. ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

 

 

 

 

 

 

 

 

 

 

Howard Smiga /hs/

Trademark Attorney

Law Office 102

571-272-9220 Office

571-273-9102 Fax

Howard.Smiga@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 5/15/2012 FOR

SERIAL NO. 85533055

 

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 5/15/2012 (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.