Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

 

Applicant has appealed the Trademark Examining Attorney’s final refusal to register the mark DOOR-IN-DOOR in International Class 011 for “Electric refrigerators” on the grounds that (1) the mark is merely descriptive of the goods under Section 2(e)(1), 15 U.S.C. §1052(e)(1),  and (2) the evidence submitted by applicant to establish acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §1052(f), is insufficient.

 

 

ARGUMENTS

 

 

I. DOOR-IN-DOOR IS MERELY DESCRIPTIVE OF A REFRIGERATOR DOOR THAT CONTAINS A SECOND DOOR INSIDE IT

 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. 

 

Specifically, applicant seeks registration of DOOR-IN-DOOR for “Electric refrigerators.”  The term “DOOR” is defined as “A hinged, sliding, or revolving barrier at the entrance to a building, room, or vehicle, or in the framework of a cupboard.”  The term “IN” is defined as “Expressing the situation of something that is or appears to be enclosed or surrounded by something else.”  See the definitions attached to the first Office action of November 23, 2018, incorporated by reference herein.

 

The specimens of record indicate that applicant is offering a refrigerator incorporating a design feature of a main door that encloses or surrounds a second smaller door inside of it.  Applicant’s refrigerators feature a door within a door.

 

To support the final refusal in the June 25, 2019 Office action, the examining attorney attached records of applicant’s prior U.S. Registration No. 4766120 for DOOR-IN-DOOR for electric refrigerators, registered on the Supplemental Register; and U.S. Registration No. 4235912 for the mark “DID DOOR IN DOOR,” with “DOOR IN DOOR” disclaimed, also for goods identified as “electric refrigerators.”  These registrations demonstrate that the wording DOOR-IN-DOOR has been treated by the Office as descriptive of refrigerators that feature a door within a door.  It is noted that certain marks that are not eligible for registration on the Principal Register, but are capable of distinguishing an applicant’s goods or services, such as descriptive marks under Section 2(e)(1), may be registered on the Supplemental Register.  See TMEP Section 815. 

 

Thus, the wording DOOR-IN-DOOR in the instant application merely describes a key quality, characteristic, or feature of applicant’s refrigerators that are designed with a small door inside a larger door, and a refusal to register the mark under Trademark Act Section 2(e)(1) is appropriate. In response to this refusal, applicant maintains that the mark has acquired distinctiveness under Trademark Act Section 2(f) (Applicant’s Brief, page 2).

 

II. APPLICANT HAS NOT ESTABLISHED ACQUIRED DISCTINCTIVENESS OF THE MARK UNDER TRADEMARK ACT SECTION 2(f)

 

A. 5 YEARS USE IS INSUFFICIENT TO ESTABLISH ACQUIRED DISCTINCTIVENESS OF DOOR-IN-DOOR

 

Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §1052(f), in the initial application based on use of the mark in commerce with the goods for five years prior to the date on which the claim was made. 

 

However, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of applicant’s goods, i.e., the terms DOOR-IN-DOOR immediately describes a feature of a refrigerator incorporating a design of a main door that encloses or surrounds a second smaller door inside of it.  See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013); TMEP §1212.05(a).  See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *11-12 (TTAB 2019); TMEP §1212.05(a).  An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; as in this case, a more descriptive term requires more evidence.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). 

In response, applicant submitted additional evidence of acquired distinctiveness.  This additional evidence is also insufficient to show the applied for mark has acquired distinctiveness under Section 2(f). 

When determining whether the evidence shows the mark has acquired distinctiveness, the trademark examining attorney will consider the following six factors:  (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage.  See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse factors”).  “[N]o single factor is determinative.”  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424.  This evidence must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of applicant’s product or service rather than identifying the product or service itself.  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.

 

B. PRIOR REGISTRATIONS WITH TERMS DISCLAIMED OR REGISTERED ON THE SUPPLMENTAL REGISTER DO NOT ESTABLISH ACQUIRED DISTINCTIVENESS                

 

Applicant contends that its’ prior U.S. Registration No. 4235912 for the mark “DID DOOR IN DOOR” with “DOOR IN DOOR” disclaimed, for identical goods, shows acquired distinctiveness of the terms DOOR-IN-DOOR in the instant application (Applicant’s Brief, page 4). Assuming the relevant portions of the marks are legal equivalents, this is not persuasive. Without additional evidence, ownership of one or more prior registrations in which the relevant wording is disclaimed is insufficient in this case to establish a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f); Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766, 1771 n.5 (TTAB 2007); In re Candy Bouquet Int’l Inc., 73 USPQ2d 1883, 1890 (TTAB 2004); In re Helena Rubinstein, Inc., 131 USPQ 152, 153 (TTAB 1961); TMEP §1212.04(a). 

 

Similarly, applicant contends that its’ prior U.S. Registration No. 4766120 for the mark DOOR-IN-DOOR on the Supplemental Register, for identical goods, establishes acquired distinctiveness of the terms DOOR-IN-DOOR because it demonstrates that the mark has been in continuous use since at least 2012 (Applicant’s Brief, page 4). This is not persuasive. An applicant may not base a claim of acquired distinctiveness under Trademark Act Section 2(f) on ownership of a registration on the Supplemental Register.  37 C.F.R. §2.41(a)(1); In re Canron, Inc., 219 USPQ 820, 822 n.2 (TTAB 1983); TMEP §1212.04(d).

 

 

C. EXTRINSIC EVIDENCE IS INSUFFICIENT TO ESTABLISH ACQUIRED DISCTINCTIVENESS

 

Applicant contends that extrinsic evidence consisting of consumer studies, examples of advertising materials and the amount of advertising expenditures for the goods establish that the mark has acquired distinctiveness under Trademark Act Section 2(f) (Applicant’s Brief, pages 5-6).  However, this evidence is insufficient to show acquired distinctiveness because the applied-for mark is so highly descriptive of applicant’s goods.  See In re MetPath Inc., 1 USPQ2d 1750, 1751-52 (TTAB 1986); TMEP §1212.06. 

 

First, applicant provided insufficient survey evidence to support the claim that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) (Applicant’s Brief page 5 and Exhibit 4). See 15 U.S.C. §1052(f).  An applicant may, in support of registrability, “submit . . . statements from the trade or public” to prove distinctiveness.  37 C.F.R. §2.41(a)(3); see TMEP §1212.06(d). 

 

This survey evidence consists of a two page excerpt from of a marketing study that appears to include statistical results for consumer reactions to three different types of advertisements, where the mark “door in door” appears in one of the advertisements in the study alongside dozens of other random terms and trademarks (Applicant’s Brief, page 6, EXHIBIT 4). However, to be probative, survey results must show that consumers view the applied-for mark as indicating the source of the relevant goods.  TMEP §1212.06(d) (citing Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1402-03 (TTAB 2009); Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 183, 28 USPQ2d 1778, 1784 (1st Cir. 1993)).  A survey must also be properly conducted to have probative value.  See Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1569-71 (TTAB 2009); In re Wilcher Corp., 40 USPQ2d 1929, 1934 (TTAB 1996) (citing Flowers Indus. Inc. v. Interstates Brands Corp., 5 USPQ2d 1580 (TTAB 1987)).  Thus, in addition to relevance, “how [the] survey was conducted, the number of participants surveyed, and the geographic scope of the survey” are assessed when determining the probative weight of the survey.  TMEP §1212.06(d).

 

In this case, applicant’s survey is unpersuasive due to the format and the method in which it was conducted, and thus has little or no probative value on the issue of acquired distinctiveness of the applied-for mark.  See Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d at 1569-71; TMEP §1212.06(d); J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§32:158, 32:170 (rev. 4th ed. Supp. 2016). 

 

Specifically, the survey materials do not indicate the number of actual participants. The format of the survey is not clearly explained, nor does it indicate whether the applied for mark is considered as a separate indictor of source as opposed to applicant’s other marks, such as LG or DID, which are contained in the submitted materials (See Applicant’s Brief, Exhibit 4).

 

Therefore, applicant’s survey fails to show that a substantial portion of the relevant consuming public associates the applied-for mark with applicant’s goods. It also fails to establish the number of actual consumers who viewed the applied-for mark as an indicator of source. Due to the nature of applicant’s survey, this evidence is not probative on the issue of applicant’s claim of acquired distinctiveness.

 

Second, applicant provided evidence of advertising expenditures of eighteen million dollars and examples of advertising materials for applicant’s goods to support the claim that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) (Applicant’s Brief, pages 5-6, EXHIBIT 4).  However, this evidence is not dispositive of applicant’s claim.  See 15 U.S.C. §1052(f). 

 

Specifically, applicant submitted advertisements examples from three third-party retail websites showing applicant’s goods with the applied-for mark highlighted by applicant in the description of the goods, and one of applicant’s advertisements with the DOOR-IN-DOOR wording highlighted by applicant in the advertisements’ description of the goods (Applicant’s Brief pages 5, Exhibit 3). This evidence is insufficient to show acquired distinctiveness of the applied-for mark because it only demonstrates that applicant has advertised the goods with the proposed trademark, which is a common business practice of all original equipment manufacturers for any types of goods. Establishing acquired distinctiveness by actual evidence was explained as follows in In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985).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 this case, applicant has not provided sufficient evidence to show that the advertisements have caused the purchasing public to identify the mark with the source of the goods. The mere existence of advertising is insufficient. Applicant’s advertising expenditures and advertising are merely indicative of its efforts to develop distinctiveness; not evidence that the mark has acquired distinctiveness.  See In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1757-58 (TTAB 1991).

 

 

SUMMARY

 

Because the applied for mark is highly descriptive of the goods, and applicant’s evidence of acquired distinctiveness is insufficient, applicant’s claim of acquired distinctiveness is not accepted and the mark must be refused under Trademark Act Section 2(e)(1).

 

CONCLUSION

 

For the foregoing reasons, the refusal to register under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), and under Trademark Act Section 2(f), 15 U.S.C. §1052(f), should be affirmed.

 

 

 

 

                                                                      Respectfully submitted,

 

 

Anthony Rinker

/Anthony Rinker/

Trademark Examining Attorney

Law Office 102

Ph. 571-272-5491

anthony.rinker@uspto.gov 

             

 

 

Mitchell Front

Managing Attorney

Law Office 102

571-272-9382

Mitchell.Front@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Examining attorney’s appeal brief has issued

on May 08, 2020 for

U.S. Trademark Application Serial No. 88055289

 

Please follow the steps below.

 

(1)  Read the appeal brief.

 

(2)  Direct questions about the appeal proceeding to the Trademark Trial and Appeal Board at 571-272-8500 or TTABInfo@upsto.gov. 

 

(3)  Submit reply brief within 20 days of May 08, 2020, if you wish to do so.  A reply brief must be submitted using the Electronic System for Trademark Trials and Appeals (ESTTA) and received by the USPTO before midnight Eastern Time of the last day of the reply period.