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: 3/30/2015

 

This non-final second Office Action is in response to applicant’s communication filed on March 18, 2015. In the initial Office Action the examining attorney issued a nondistinctive incapable elements of product design refusal, a nondistinctive capable elements of product design refusal, an information request, a requirement for an acceptable description of the mark, and a requirement for an acceptable specimen of use. In its response, applicant submitted brief arguments against each of the refusals and adopted an amended description of the mark and provided an acceptable substitute specimen. Applicant also made a claim of acquired distinctiveness based on years of use. Applicant’s claim raises a new issue. The examining attorney finds applicant’s Section 2(f) claim to be insufficient. Please see the new refusal below and additional argument against applicant’s responses. The trade dress information request and nondistinctive product design refusals, which includes the disclaimer requirement, are each continued and maintained.

 

Acquired Distinctiveness Claim Unacceptable – Evidence Required

 

In its response, applicant makes a claim of acquired distinctiveness under Section 2(f) based on exclusive and continuous use in commerce of its mark on exercise machines for over six years. Applicant did not specify what exactly its Section 2(f) is addressed to in its drawing, and consequently, it is presumed that it is applicable to the entire mark, including the literal element, where it is not such required. Applicant did not submit any additional evidence in support of its 2(f) claim. Applicant’s response makes a reference to administering training workshops, issuing videos, and press in regards to the use of applicant’s machines, but the application record is entirely devoid on information showing that consumers would view the claimed elements in applicant’s mark as an indicative of source for the goods. 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.

 

Three types of evidence may 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 may provide one or any combination of these types of evidence.  TMEP §1212.  Depending on the nature of 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.  TMEP §1212; see TMEP §§1212.01, 1212.04(a), 1212.05(a).  Actual evidence of acquired distinctiveness may be provided regardless of the length of time the mark has been used.  TMEP §1212.01; see Ex parte Fox River Paper Corp., 99 USPQ 173, 173-74 (Comm’r Pats. 1953).

 

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).

 

Functionality / Incapable Elements

 

Applicant’s argument against the functionality is stated simply – applicant does not believe that any of the claimed features of applicant’s mark are covered by the claims in utility patent no. 8641585. To the contrary of applicant’s argument, the vertical rail pieces are clearly described in the ‘585 patent, and each is claimed with particular attributes therefor.

 

In the abstract of the patent, the rails make their first mention:

 

The rails have a rectangular cross-section angled 45 degrees to horizontal, and roller assemblies on the platform include wheels angled to engage the surfaces of the rails substantially normal thereto.

 

In the summary of the invention, the frame, which includes the rails elements in the drawing, the following is noted:

 

The frame may comprise first and second substantially parallel rail members that support cooperating rail assemblies on the platform. The rail assemblies may each comprise a downwardly sloped upper surface and an upwardly sloped lower surface converging towards a medial side of the rail member. The downwardly sloped upper surface and upwardly sloped lower surface may extend at angles of about 45° to horizontal, and the first and second rail members may comprise first and second substantially rectangular tube members mounted so that the sides thereof extend at angles of approximately 45° to horizontal. The roller assemblies may each comprise at least one upper roller wheel that engages one of the sloped upper surfaces of the rail members substantially normal thereto, and at least one lower roller wheel that engages one of the sloped lower surfaces of the rail members substantially normal thereto. The roller members may be mounted in outwardly facing pairs on opposite sides of the platform, the pairs of roller assemblies being spaced apart by a distance sufficient that the sloped upper and lower surfaces of the medial sides of the rail members are captured between the upper and lower roller wheels so as to restrict vertical movement of the platform relative to the frame.

 

The detailed discussion of the claim finally bears out the advantages of applicant’s frame assembly, rails, and the integration between the wheels on the platform assembly and the rails that the wheels connect with:

 

Rails

           

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.

 

The rail segments 54 a, 54 b are supported proximate each end atop generally U-shaped cross members 60 a, 60 b the rail segments being mounted to V-shaped saddle brackets 62 on the upwardly projecting ends 64 of the latter by bolts 66. The U-shaped cross members are suitably constructed of bent cylindrical steel tubing, the lower ends of the upright portions 64 being joined by welding or other suitable means to spaced apart, parallel longitudinal members 68 a, 68 b, which are also suitably formed of cylindrical steel tubing. The lower frame members 68 a, 68 b are located relatively near to the floor or other underlying surface, and are joined across the frame end by a transverse segment 70, that may be formed integrally with the longitudinal segments 68 a, 68 b. An additional cross member 72 is mounted between the longitudinal members 68 a, 68 b a spaced distance from the end cross member 60 b to provide support for the locking plate subassembly 222 of the foot-end bar assembly, as will be described in greater detail below.

 

A plurality of foot members 74, preferably one at each of the four corners of each frame section, are mounted to and extend downwardly from the lower frame members 68 a, 68 b, and preferably include threaded adjusters 76 or other mechanisms that permit the frame to be leveled on the floor or other underlying surface.

 

At the head end of frame section 50 an eye fitting 78 is mounted to the lower frame cross member 70, for attachment of a ring or carabineer to form a connection to a pulley or rope, for example.

 

As can be seen with further reference to FIGS. 7-8, the transverse bridge portions 44 at the ends of each of the frame assemblies 50, 52 include flat, somewhat tray-shaped panel members 80 that fill the span between the inside edges of the two rail segments 54 a, 54 b, and that include upwardly and outwardly angled flange portions 82 that mate flatly against the medial upper sloped surfaces 56 of the rail segments and are mounted thereto by bolts 84 or similar fasteners. A row of upstanding, mushroom-shaped pegs 86 is mounted along the forward edge of each of the bridge panels 80, for attachment of cooperating end loops of tension springs connected to the rolling platform assembly, as will be described in greater detail below. A pair of block members 88 are mounted to each bridge panels rearwardly of the spring attachment pegs, the blocks providing horizontal-axes pivot connections for pairs of legs 90 to which the end platforms 20, 22 (see FIG. 1) are mounted, thus allowing the user to raise and pivot the end platforms out of the way from over the row of attachments pegs 86, to provide access for attachment/detachment of tension springs as desired.

 

As is also shown in FIGS. 7-8, circular bores 100 and bolt holes 102 are formed in the rail segments 54 a, 54 b proximate and just slightly forward of the bridge panels 80, for attachment of the adjustable arm assemblies as will be described below.

 

To assemble the frame 12, alignment blocks 104 are first inserted into the open ends of the rail segments 54 a, 54 b of one or the other of the frame sections. The alignment blocks have a generally rectangular cross-section sized and configured such that the blocks can be inserted axially into the cooperating hollow interiors of the rail segments in close-fitting engagement therewith, and include bores 106 that align with bores 108 formed in the rail segments for bolts 66 when the sections are brought together. Similarly, close-fitting cylindrical alignment plugs 110 are inserted into the ends of the tubular lower frame members 68 a, 68 b. The plug members are preferably formed of a material having sufficient strength and rigidity to avoid excessive flexing or looseness at the connection between the two frame sections, with rigid plastic being eminently suitable for this purpose.

 

With the alignment plugs thus in place, the corresponding ends of the frame sections 50, 52 are brought into position so that the protruding ends of the plugs enter their counterpart openings in the opposite frame section, and the two frame sections are then pushed together until the ends 112, 114 of the tubular rail segments and frame members meet in abutment. The remaining bolts 66 are then installed so that the frame sections are secured together tightly and rigidly via the plug members, with the rail segments meeting in alignment to form the rails 40 a, 40 b on the two sides of the machine.

 

Platform wheels / Rails

 

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.

 

Claim 11: The exercise machine of claim 10, wherein said rail members each comprise:

a downwardly sloped upper surface and an upwardly sloped lower surface converging towards a medial side of said rail member.

 

Claim 12:  The exercise machine of claim 11, wherein said downwardly sloped upper surface and upwardly sloped lower surface extend at angles of about 45° to horizontal.

 

Claim 13: The exercise machine of claim 12, wherein said first and second rail members comprise:

first and second substantially rectangular tube members mounted so that all sides thereof extend at angles of approximately 45° to horizontal.

 

Claim 14: The exercise machine of claim 11, wherein said roller assemblies on said platform each comprise: at least one upper roller wheel that engages one of said upper sloped surfaces substantially normal thereto; and at least one lower roller wheel that engages one of said lower sloped surfaces substantially normal thereto.

 

Claim 15: The exercise machine of claim 14, wherein said roller assemblies are mounted in outwardly facing pairs on opposite sides of said platform, said pairs of roller assemblies being spaced apart by a distance sufficient that said sloped upper and lower surfaces of said medial sides of said rail members are captured between said upper and lower roller wheels so as to restrict vertical movement of said platform relative to said frame.

 

--

 

A utility patent claiming the design features at issue is strong evidence that those features are functional.  TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001); In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); see TMEP §1202.02(a)(iv), (a)(v)(A). 

 

In this case, the utility patent claims the rail design features at issue.  Accordingly, the trademark examining attorney has established a prima facie case that the applied-for mark is functional and the burden of proof now shifts to applicant to show nonfunctionality.  See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. at 29-30, 58 USPQ2d at 1005; In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006); see TMEP §1202.02(a)(iv), (a)(v)(A).  Applicant must meet this burden by providing “competent evidence” of the applied-for mark’s nonfunctionality.  See In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376; In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984); TMEP §1202.02(a)(iv).  The “competent evidence” standard requires proof by a preponderance of the evidence.  In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1377.

 

Finally, when functionality is found based on other considerations, there is “no need to consider the [third Morton-Norwich factor regarding] availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available.”  In re Becton, Dickinson & Co., 675 F.3d 1368, 1376, 102 USPQ2d 1372, 1378 (Fed. Cir. 2012) (quoting Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002)); TMEP §1202.02(a)(v)(C).

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/30/2015 FOR U.S. APPLICATION SERIAL NO. 86459030

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 3/30/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.