Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86459030 MEGAFORMER M3S (Stylized and/or with Design, see http://uspto.report/TM/86459030/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION Applicant hereby responds to the Office Action of February 9, 2015. In the office action, the Examining Attorney issued a non-final refusal of registration of Applicant's design mark ("the Mark") based on the determinations that the Mark contains nondistinctive incapable elements of product design and request for additional information. Applicant hereby responds to each of the requirements, either in the text below or elsewhere in the TEAS Office Action Response form submitted herewith. I. The Mark is NON-Functional The Examining Attorney has issued a non-final refusal of registration based on a determination that the Mark contains functional elements. Applicant respectfully contends that, the Mark is non-functional for the reasons set forth below. A. The Mark is Non-Functional Because the '585 Patent Does Cover Any of the Design Features of the Proposed Mark In the Office Action, the Examining Attorney contends that U.S. Patent No. 8,641,585 ("the '585 patent"), directed to certain functional features of an exercise machine, tends to show that the Mark contain functional elements. However, attached as Exhibit A are more drawings with descriptions evidencing that the Mark is not functional, not part of the '585 patent, and does not contain any functional elements When considering the effect of a patent on a proposed design mark, "[i]t is important to read the patent to determine whether the patent actually claims the features presented in the proposed mark. . . . [i]f it does not, or if the features are referenced in the patent, but only as arbitrary or incidental features, then the probative value of the patent as evidence of functionality is substantially diminished or negated entirely." TMEP §1202.02(a)(v)(A); TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 34, 58 U.S.P.Q.2d 1001 (S. Ct. 2001). In this case, the Mark proposed by the Applicant comprises of unique three- dimensional shapes embodied on the M2S machine that are not part of the '585 patent. Specifically and as listed in Exhibit A these shapes are: 183 Laterally facing angular rail surface angled substantially from the horizontal plane 183 Side-facing edges of the end plates angled substantially from the horizontal plane. 183 Inwardly tapering lateral sides of a sliding platform (radiused or angular). 183 front and back edges of platform are non- perpendicular to sides (radiused or angular). 183 Side edges of sliding and stationary platforms overhanging longitudinal parallel rails. Thus, the '585 patent does not claim, any of the features of the proposed Mark. In addition, under TMEP §1202.02(a) (v)(A), the probative value of the '585 patent as evidence of functionality of the Mark is "substantially diminished or negated entirely." In fact, the '585 patent is strong evidence of the Non-functionality of the Mark because the basic frame referenced by the '585 patent lacks every feature of the Mark. B. The Availability of Alternative Designs Demonstrates That The Mark is Non- Functional Applicant is not claiming that his Mark include any type of rails but that the unique angles of its rails are not functional and are actually part of the unique design of Applicant's exercise machine and its Mark. Same applies to the unique design of Applicant's front, back, and middle platforms. Applicant is not claiming that the Mark include the functional element of these platforms but their unique and non functional design-the Mark. Applicant hereby provides the requested explanation and evidence (attached hereto as Exhibit B) and contends that this evidence tends to demonstrate the non-functionality of the Mark, specifically the angles of the rails, platforms, and plates. If evidence shows the existence of a number of functionally equivalent alternative designs that work "equally well," such that competitors do not need applicant's design to compete effectively, this factor may support non- functionality. TMEP §1202.02(a)(v)(C); In re Dietrich, 91 USPQ2d 1622, 1636 (TTAB 2009). This wide variety of functionally equivalent designs for exercise machines frames, rails, plates, and platforms demonstrates that competitors do not need applicant's design to compete effectively. Indeed, the Mark serves to create a unique commercial impression in the minds of consumers and thereby distinguish the MEGAFORMER M3S from the other exercise machines available on the market. Thus, this factor supports the non-functionality of the Mark. C. The Mark is Non-Functional Because it Does Not Result From a Comparatively Simple or Inexpensive Method of Manufacture The cost of applying a design mark to a product may support a finding of functionality only when the mark "results from a comparatively simple or inexpensive method of manufacture." TMEP §1202.02(a)(v)(D); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982). In the present case, the shapes that comprise the Mark do not result from a comparatively simple or inexpensive method of manufacture, therefore this factor tends to show the non- functionality of the Mark. II. The Mark is Non-Functional Because the Unique Shape of the Angled Rails, the Angled Plates, and Head, Foot, and Middle Platforms Are Not part of the Machine's Function As shown in Exhibit C, which contains images of the Mark, the unique shapes and designs are not part of the functional elements of the machine, are not included in the '585 patent, and are very different from the designs used by other machines as detailed in Exhibit B. Therefore, the Mark, including the rails, plates, head, foot, and middle platforms, is not functional. III. Applicant's Evidence Shows that the Mark Has Acquired Distinctiveness Under Section 2(f) of the Trademark Act Applicant demonstrates that the Mark has acquired distinctiveness under 15 U.S.C. § 1052(f) because exclusive and continuous use in commerce of the Mark in connection with exercise machines for over six years. Since, as early as 2009, Applicant has consistently and exclusively used the Mark in connection with marketing, distributing, offering for sale and selling its MEGAFORMER M3S exercise machine. Applicant has administered numerous training workshops, workouts, videos, and press regarding the use of the MEGAFORMER M3S and the Mark, throughout the United States and internationally. Therefore, the Mark is known by consumers and third parties as a source identifier associated with the MEGAFORMER M2S exercise machine. IV. The Mark Functions as a Trademark Because It Identifies and Distinguishes Applicant's Goods and Indicates the Source of the Goods In the office action, the Examining Attorney asserts that "rails, head, foot, and middle platforms" do not function as a mark. Applicant respectfully contends that, contrary to this assertion, the Mark functions as a trademark to identify and distinguish Applicant's goods and to indicate the source of Applicant's goods, for the reasons set forth below. The term "trademark" includes any word, name, symbol, or device, or combination thereof used to identify and distinguish the Applicant's goods from those of others and to indicate the source of Applicant's goods. 15 U.S.C. §1127; TMEP §1202. The critical question in determining whether a proposed mark, as used in a specimen, functions as a trademark is the commercial impression it makes on the relevant public. In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827- 28 (TTAB 2012). The Mark, as used in specimen of record, is prominently displayed and used in a way to draw the attention of potential purchasers to the design and to make a source-identifying commercial impression. Exhibit C shows the unique shapes of the angled rails, angled plates, and head, foot, and middle platforms. Hence, the Mark is immediately recognizable, featured prominently, and strongly associated with the goods. Therefore, the commercial impression made on consumers by the Mark acts as a source indication. Conclusion For all of the aforementioned reasons, Applicant respectfully contends that that the Mark is a non-functional design, is a distinctive product design, and functions as a trademark. Accordingly, Applicant respectfully requests that Examining Attorney withdraw the refusal of registration and approve the Mark for publication.

EVIDENCE
Evidence in the nature of 1. Response 2. Exhibit A 3. Exhibit B 4. Exhibit C has been attached.
Original PDF file:
evi_17224847212-20150313190118269565_._M3S_response.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_17224847212-20150313190118269565_._Exhibit_A_M3S.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_17224847212-20150313190118269565_._Exhibit_B.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_17224847212-20150313190118269565_._Exhibit_C_M3S.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Exercise machines
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/01/2009 and first used in commerce at least as early as 01/06/2009 , and is now in use in such commerce.

Proposed: Class 028 for Exercise machines
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/01/2009 and first used in commerce at least as early as 01/06/2009 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 028 . The specimen(s) submitted consists of Image of the machine as used in commerce with the trade dress as a source identifier. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-17224847212-20150313190118269565_._megaformer_m3s_pic_1.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-17224847212-20150313190118269565_._megaformer_m3s_pic_2.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-17224847212-20150313190118269565_._megaformer_m3s_pic_3.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-17224847212-20150313190118269565_._megaformer_m3s_pic_4.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

ADDITIONAL STATEMENTS
Description of mark
The mark consists of 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.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

Signature: /bl/      Date: 03/13/2015
Signatory's Name: Benjamin Laski
Signatory's Position: Attorney of Record
Signatory's Phone Number: (310) 454-5280


Response Signature
Signature: /bl/     Date: 03/13/2015
Signatory's Name: Benjamin Laski
Signatory's Position: Attorney of Record

Signatory's Phone Number: (310) 454-5280

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86459030
Internet Transmission Date: Fri Mar 13 19:13:31 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201503131913313
32757-86459030-530b12fc2479e4037ea6d7665
3ac66d1f971d2d9e9999a16c7547550d42225322
3-N/A-N/A-20150313190118269565