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: 2/9/2015

 

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.

 

Search

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Nondistinctive Incapable Elements of Product Design – Amended Drawing and Mark Description Required

 

The drawing of applicant’s applied-for product design/packaging mark is not acceptable because it depicts in solid lines nondistinctive elements that are incapable of functioning as a mark.  See TMEP §1202.02(c)(i)(B); cf. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983).  Generally, nondistinctive elements of a product design mark that are incapable of functioning as a mark are unregistrable and thus are required to be shown in broken or dotted lines on the drawing.  See 15 U.S.C. §§1051-1052, 1127; 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); TMEP §1202.02(c)(i)(B). 

 

Specifically, the following features are nondistinctive and incapable of functioning as a mark:  “the long rails on each side of the exercise machine.”[1] These features are nondistinctive and do not function as a mark because the rails are positioned are a particular angle and provide direct support to numerous elements of applicant’s exercise machines. The rails are integral to the function and overall structure of the machines, providing stability and strength to the design. Further, applicant appears to be an inventor on a utility patent for another version of applicant’s goods. In U.S. utility patent no. 8641585 a similar rail design is described and the patent describes the following benefits of the frame design:

 

FIGS. 6-8 show the structure of the frame assembly 12 in greater detail. As noted above, and as can be seen in FIG. 6, the frame assembly has a generally rectangular configuration in plan view, with first and second elongate side rails 40 a, 40 b joined by cross pieces 44 at the head and foot ends of the frame.

 

In the embodiment that is illustrated, the frame assembly 12 is constructed in two sections 50, 52, which provides significant advantages in terms of packing and shipping costs. As can be seen in FIGS. 7-8, each of the frame sections 50, 52 is substantially identical, with the exception of detail components that may be installed during final assembly, which not only simplifies manufacture but also enables components to be reversed to even out wear and thereby extend the life of the machine. Since the frame sections are substantially identical overall, like reference numerals will be used with respect to like structures in the following description.

 

 As can be seen in FIGS. 7 and 8, each of the frame sections includes first and second spaced apart, parallel rail segments 54 a, 54 b that meet in end-to-end relationship to form the main rails 40 a, 40 b of the machine. The rail segments each have medial and lateral sloped upper surfaces 56, 58, that are preferably angled approximately 90° to one another, and are suitably constructed of rectangular cross section steel tubing. As used herein, the term medial and lateral refer to the sides of the rails disposed towards and away from the longitudinal centerline of the frame assembly.

 

Functional references to the rails are further found in descriptions concerning the sloped 45 degree angle of the rails, which allows for components above the rails to slide back and forth with wheels pressed against the sloped rails:

 

In the preferred embodiment that is illustrated, the upper and lower wheels 182, 184 of the assemblies 180 are mounted on brackets 186 that are in turn mounted to the underframe of the platform 120, suitably on the cross-members 142, 144 as shown in FIG. 10. As can be seen in FIG. 13, each of the brackets 186 is constructed of upper and lower plates 188, 190 that lie flat together to form a horizontal base portion 192 by which the bracket is mounted to the underframe, but which diverge towards the distal end of the bracket to provide attachment points for the wheels. In particular, as can be seen with further reference to FIG. 13, the upper plate 188 extends horizontally to a bend from which it extends downwardly and outwardly at an angle about 45°, to form a mounting flange 194 that lies in a plane generally parallel to that of the sloped outer surface 58 of the associated rail 40 a, 40 b. The lower plate 190 also extends downwardly from a 45° bend to form a second mounting flange 196, but at a spaced distance inwardly from the first mounting flange 194 so as to form a gap sized to receive wheels 182 edgewise therein. Bolts 198 pass through cooperating bores formed perpendicularly through flanges 194, 196 to provide load bearing axles for the upper set of wheels 182, and are secured by nuts 200. The distal portion of lower plate 190, below flange 196, extends through a reverse bend of about 90° to form an end mounting flange 202 having a cooperating perpendicular bore (not shown) through which bolt 204 passes and is secured by nut 206, to form a load bearing axle for the lower wheel 184 of the assembly. Thus assembled and mounted to the bottom of the platform in the manner described, the wheel assemblies engage both the downwardly sloped upper medial walls 56 of the rails 40 a, 40 b and the upwardly sloped lower medial walls 208 that extend parallel to walls 58. The combination of angled wheels and sloped surfaces insures effective transmission of both vertical and lateral loads from the platform assembly to the rails of the frame assembly, with this being accomplished using inexpensive “off-the-shelf” rectangular tubing for the rails rather than requiring specialized extrusions, tracks, etc. Moreover, upper and lower wheels cooperate with the sloped surfaces of the rails, which in essence form a taper towards the wheels and the longitudinal centerline of the frame, to provide a gentle self-centering action that maintains the platform assembly in alignment with the frame without abrupt changes in direction or unpleasant “slamming”. In addition, the lateral spacing between wheel assemblies on opposite sides of the platform is such that the engagement between the angled wheels and the “corners” formed between the angled surfaces 56, 208 also captures and holds the platform against rocking or other vertical movement relative to the frame during use. The wheels are preferably formed of a material having low rolling resistance and good durability combined with a slight degree of resilience, such as urethane or synthetic rubber, for example, with suitable wheel units being available from numerous commercial sources.

 

In order to conveniently install the platform assembly including wheel assemblies 180 on the frame 12 of the machine, the platform can first be rolled endwise onto one of the two frame sections 50, 52 while they are separated, and the two frame sections then join together in the manner previously described so that the wheel assemblies are captured between the assembled rails 40 a, 40 b.

 

Summarily, the advantages from the design are in the packing and shipping costs, the ability to reverse components to even out wear.

 

Therefore, applicant must provide (1) a new drawing of the mark showing the nondistinctive incapable elements in broken or dotted lines, and (2) an amended mark description that references the matter in broken or dotted lines and indicates such matter is not claimed as part of the mark.  See TMEP §1202.02(c)(i)(B), (c)(ii).  Applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable.  TMEP §1202.02(c)(i)(B).

 

Applicant may submit the following mark description, if accurate: 

 

The mark consists of a three-dimensional configuration of the non-functional aspects of an exercise machine known as the “Megaformer M3S”. The mark consists of the literal element “MEGAFORMER M3S” which featured placement on horizontal rails; the top and bottom of the middle sliding platform and the front and back stationary platforms having edges which are non-perpendicular to the sides; inwardly tapering lateral sides of the middle sliding platform; side edges of the middle sliding platform and the front and back stationary platforms substantially overhanging over the rails; and side-facing edges of the front and back plates angled substantially from the horizontal plane. The broken lines indicate placement of the mark on the goods and are not part of the mark. 

 

See TMEP §1202.02(c)(ii).

 

Nondistinctive Capable Elements of Product Design – Disclaimer Required

 

Applicant must disclaim the following elements of the applied-for product design mark because they comprise nondistinctive matter that does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others:  “the middle sliding platform”, “the front and back stationery platforms”.  See 15 U.S.C. §§1051-1052, 1056(a), 1127; TMEP §1202.02(b)(i), (c)(i)(B), (c)(iii)(B).  

 

A product design can never be inherently distinctive as a matter of law; consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source.  See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212-13, 54 USPQ2d 1065, 1068-69 (2000); In re Slokevage, 441 F.3d 957, 962, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006).  Thus, consumer predisposition to equate a product design with its source does not exist.  Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. at 213, 54 USPQ2d at 1069.

 

An applicant may not claim exclusive rights to an unregistrable component of a mark, such as this nondistinctive matter, and therefore must provide a disclaimer of it.  See 15 U.S.C. §1056(a); TMEP §§1202.02(c)(iii), (c)(iii)(B), 1213.03(a), (b).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

Applicant must provide the disclaimer regardless of whether the remaining portions of the mark are determined to be registrable.  See TMEP §1202.02(c)(iii)(B).  If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Slokevage, 441 F.3d at 959, 962-63, 78 USPQ2d at 1397, 1400; TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use the design of the middle sliding platform and the front and back stationery platforms apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).

 

 

Trade Dress – 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, 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.

 

(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.

 

Any document filed with the USPTO becomes part of the official public application record and will not be returned or removed.  TMEP §§404, 814.  If any of the information requested above is confidential or applicant does not want such information to become part of the public record for a valid reason, applicant should submit an explanation of those circumstances or redact confidential portions prior to submission.  See TMEP §814.  Applicants are not required to submit confidential information into the record; a written explanation or summary of that information may suffice.  Id.

 

Regarding the requirement for this information, the Trademark Trial and Appeal Board and its appeals court have recognized that the necessary technical information for ex parte determinations as to functionality is usually more readily available to an applicant, and thus an applicant is normally the source of most 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 comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.

 

Specimen Unacceptable – Does Not Show Entire Mark

 

Registration is refused because the specimen in International Class 28 is altered, mutilated, or illegible, and thus does not clearly show the applied-for mark in use in commerce for each international class.  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), 1301.04(g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Although the specimen of use shows clearly the literal element in the mark, it only shows about 40% of the entirety of the mark claimed in the configuration drawing. Applicant must submit a specimen that shows the entirety of the claimed elements in the mark.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)  Submit a true, unaltered copy of the originally submitted specimen that is clear and readable, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted. 

 

(2)  Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. 

 

(3)  Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/S5.jsp.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

Assistance

 

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. §§2.62(c), 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.

 

 

/Jordan A. Baker/

Trademark Examining Attorney

Law Office 102

571-272-8844

jordan.baker@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.