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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 6/27/2019

 

INTRODUCTION

 

This new non-final Office action is in response to applicant’s correspondence dated April 29, 2019.

 

In the October 30, 2018 Office action, registration was refused based on the following: Refusal under Sections 1 & 45- Specimens not Acceptable- Does not Show Applied-for Mark Associated with Identified Goods. Additionally, the applicant was required to satisfy the following: Clarification as to Whether Mark is Two-Dimensional or Three-Dimensional Required, Informational Matter on Mark Drawing- New Mark Drawing Required, Color Claim Incomplete- Complete Color Claim Required, Mark Description Incomplete- Complete Mark Description Required and Disclaimer Statement Required. Lastly, the applicant was advised of the following: Non-Distinctive Configuration of Product Packaging Advisory.

 

Based on the applicant’s response the following refusal and requirement are maintained and continued: Refusal under Sections 1 & 45- Specimens not Acceptable- Does not Show Applied-for Mark Associated with Identified Goods and Mark Description Incomplete- Complete Mark Description Required.

 

Additionally, a new refusal and a new requirement is discussed below.

 

Lastly, the following requirements are satisfied: Clarification as to Whether Mark is Two-Dimensional or Three-Dimensional Required, Informational Matter on Mark Drawing- New Mark Drawing Required, Color Claim Incomplete- Complete Color Claim Required and Disclaimer Statement Required.

 

SUMMARY OF ISSUES:

 

• NEW REFUSAL: REFUSAL UNDER SECTION 2(e)(5) OF THE TRADEMARK ACT- NON-DISTINCTIVE PRODUCT PACKAGING
• NEW REQUIREMENT: REQUEST FOR INFORMATION- MORE INFORMATION ABOUT ELEMENTS IN THE MARK REQUIRED
• REFUSAL UNDER SECTIONS 1 & 45 OF THE TRADEMARK ACT- SPECIMENS NOT ACCEPTABLE- SPECIMENS DO NOT SHOW APPLIED-FOR MARK ASSOCIATED WITH IDENTIFIED GOODS- OTHERWISE ACCEPTABLE SUBSTITUTE SPECIMENS WERE NOT PROPERLY VERIFIED- REFUSAL MAINTAINED AND CONTINUED
• MARK DESCRIPTION INCOMPLETE- COMPLETE MARK DESCRIPTION REQUIRED- REQUIREMENT MAINTAINED AND CONTINUED

 

NEW REFUSAL: REFUSAL UNDER SECTION 2(e)(5) OF THE TRADEMARK ACT- NON-DISTINCTIVE PRODUCT PACKAGING

 

The drawing of applicant’s applied-for three-dimensional mark is not acceptable because it includes functional elements depicted in solid lines rather than broken or dotted lines.  See TMEP §1202.02(c)(i)(A).  Elements of a mark that are functional are required to be shown in broken or dotted lines.  See 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); In re Heatcon, Inc., 116 USPQ2d 1366, 1379-80 (TTAB 2015); TMEP §1202.02(c)(i)(A). 

 

“Functional matter cannot be protected as a trademark.”  TMEP §1202.02(a)(iii)(A); see 15 U.S.C. §§1052(e)(5), (f), 1091(c), 1064(3), 1115(b)(8).  A feature is functional as a matter of law 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); TMEP §1202.02(a)(iii)(A).

 

In the present case, the following elements are functional:  the shape of the hang tag, the pinholes on the hang tag and the hang tag hole.  Please see the attached evidence from Uline, National Hardware and True Value web sites, which show virtually identical rectangular hang tags. That is, this evidence shows that these elements are functional because common use in the industry reflects that there are few alternative designs available.  See 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).

 

Therefore, applicant must provide (1) a new drawing of the mark showing the functional element(s) 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)(A), (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)(A).

 

The following mark description format is suggested, if accurate: 

 

“The mark consists of a three-dimensional configuration of product packaging in the shape of a rectangle, the depth of which is very thin, with a hole at the top adapted for hanging, having a blue outline around the perimeter thereof, with a smaller yellow rectangle in the middle outlined in red, with black pin holes and the red stylized letters "ARP" with a black shadow effect above the yellow rectangle with the white stylized wording "AUTOMOTIVE RACING PRODUCTS" and the white stylized wording "PROFESSIONAL QUALITY FASTENERS" below the letters "ARP"; the black stylized wording "A.R.P. AUTOMOTIVE RACING PRODUCTS" and the black stylized wording "VENTURA, CA" appear at the bottom of the yellow square with a black dot in between the wording "PRODUCTS" and "VENTURA"; the black stylized wording "MADE IN THE USA" appears in the top left corner above a design of the outline of the United States with a red, white and blue American flag motif inside of it outlined in black. The black behind the rectangle represents background or transparent and is a not a feature of the mark. The broken lines depicting the shape of the hang tag, the pinholes on the hang tag and the hang tag hole indicate the positioning of the wording and designs on the product packaging and are not a part of the mark.”

 

See TMEP §1202.02(c)(ii).

 

NOTE: The mark description suggested above is the same as mark description suggested in the last requirement below.

 

Please note the new requirement below.

 

NEW REQUIREMENT: REQUEST FOR INFORMATION- MORE INFORMATION ABOUT ELEMENTS IN THE MARK REQUIRED

 

Applicant must provide the following information and documentation regarding the pinholes appearing in the applied-for three-dimensional configuration mark:

 

(1)       A written statement as to whether the applied-for mark, and the pinhole feature 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 pinhole 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 pinhole 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 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.

 

NOTE: If the applicant submits an amended mark drawing with the pinholes on the product packaging depicted in broken or dotted lines, then this requirement will be moot.

 

If the applicant responds to the new refusal and new requirement above, the applicant must also respond to the refusal and requirement maintained and continued below.

 

REFUSAL UNDER SECTIONS 1 & 45 OF THE TRADEMARK ACT- SPECIMENS NOT ACCEPTABLE- SPECIMENS DO NOT SHOW APPLIED-FOR MARK ASSOCIATED WITH IDENTIFIED GOODS- OTHERWISE ACCEPTABLE SUBSTITUTE SPECIMENS WERE NOT PROPERLY VERIFIED- REFUSAL MAINTAINED AND CONTINUED

 

The refusal to register the applied-for mark in International Class 06 is maintained and continued because applicant failed to provide in response to the refusal a properly verified specimen showing the mark in use in commerce for applicant’s goods.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2); TMEP §§904, 904.07(a), 1301.04(g)(i). 

 

Applicant was previously refused registration and required to submit a verified specimen in International Class 06 to show use of the applied-for mark in commerce because the original specimen is a mere duplication of the mark drawing.  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 identified in the application or amendment to allege use.  15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2); TMEP §§904, 904.07(a). 

 

In response to each refused international class, applicant provided a substitute specimens that appear to show use of the applied-for mark in commerce but is not verified.  The USPTO does not accept materials submitted as specimens without proper verification.  See 37 C.F.R. §§2.34(a)(1), 2.59(a)-(b)(1), 2.76(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).   

 

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). 

 

Therefore, the refusal to register the applied-for mark under Sections 1 and 45 of the Trademark Act is maintained and continued.

 

RESPONSE OPTIONS

 

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

 

(1)       Submit a verification of the previously submitted substitute specimens, attesting that they were 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.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “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 or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Submit a different and properly verified 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 identified in the application or amendment to allege use.  The substitute specimen cannot be accepted without the verified statement referenced in (1).

 

(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/specimen.jsp.

 

Please note the requirement also maintained and continued below.

 

MARK DESCRIPTION INCOMPLETE- COMPLETE MARK DESCRIPTION REQUIRED- REQUIREMENT MAINTAINED AND CONTINUED

 

In the first Office action, a requirement was issued for a complete mark description and a suggested complete mark description was provided. In its response, the applicant adopted most of the suggested complete mark description; however, upon further review, the suggested mark description is incomplete. Therefore, the requirement for a complete mark description is maintained and continued as follows:

 

Applicant has submitted a color drawing and provided a color claim, but has not provided the required complete mark description specifying where all of the color appears in the literal and design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).  And for marks depicted in color, this description must specify where all of the colors appear on the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(ii).

 

Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

Therefore, applicant must provide a mark description that specifies where all of the colors appear in the literal and design elements in the mark.  See TMEP §807.07(a)(ii). 

 

Additionally, the applicant must describe the hole adapted for hanging at the top of the rectangle. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02.

 

The following is an example:

 

“The mark consists of a three-dimensional configuration of product packaging in the shape of a rectangle, the depth of which is very thin, with a hole at the top adapted for hanging, having a blue outline around the perimeter thereof, with a smaller yellow rectangle in the middle outlined in red, with black pin holes and the red stylized letters "ARP" with a black shadow effect above the yellow rectangle with the white stylized wording "AUTOMOTIVE RACING PRODUCTS" and the white stylized wording "PROFESSIONAL QUALITY FASTENERS" below the letters "ARP"; the black stylized wording "A.R.P. AUTOMOTIVE RACING PRODUCTS" and the black stylized wording "VENTURA, CA" appear at the bottom of the yellow square with a black dot in between the wording "PRODUCTS" and "VENTURA"; the black stylized wording "MADE IN THE USA" appears in the top left corner above a design of the outline of the United States with a red, white and blue American flag motif inside of it outlined in black. The black behind the rectangle represents background or transparent and is a not a feature of the mark. The broken lines depicting the shape of the hang tag, the pinholes on the hang tag and the hang tag hole indicate the positioning of the wording and designs on the product packaging and are not a part of the mark.”

 

NOTE: This new suggested mark description includes the reference to the broken lines for the non-distinctive matter discussed in the new refusal above.

 

RESPONSE GUIDELINES

 

If the applicant has any questions, please email or telephone the trademark examining attorney with the specific questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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 $125 per class of goods.  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 or e-mail without incurring this additional fee.  

 

 

 

/Deborah Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@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 6/27/2019 FOR U.S. APPLICATION SERIAL NO. 88020518

 

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 6/27/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.