United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88103628
Mark: HERSHEY'S COCOA
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Correspondence Address: |
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Applicant: Hershey Chocolate & Confectionery Corpor ETC.
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Reference/Docket No. 22375
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 25, 2019
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 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 or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
This Office action is in response to applicant’s communication filed on June 26, 2019. Applicant’s disclaimer of the wording “Cocoa” apart from the mark as shown is accepted. Applicant’s arguments have been considered and found unpersuasive; for the reason(s) set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2, and 45 for failure to function as a trademark. See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.63(b). In addition, the following requirement is now made FINAL: provide a substitute drawing with the shape of the container and lid portion of the mark depicted in dotted or broken lines. See 37 C.F.R. §2.63(b).
Final refusal-Non-Distinctive Configuration Of Packaging
Registration is refused as final because the applied-for mark consists of a nondistinctive configuration of packaging for the goods that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Mogen David Wine Corp., 372 F.2d 539, 540-42, 152 USPQ 593, 594-96 (C.C.P.A. 1967); In re J. Kinderman & Sons, Inc., 46 USPQ2d 1253, 1254-55 (TTAB 1998); TMEP §1202.02(b)(ii).
The following factors are considered when determining the inherent distinctiveness of configuration marks comprising product packaging:
(1) Whether the applied-for mark is a “common” basic shape or design; here, the evidence shows the shape of the container and lid is one of a few common and basic product packaging shapes and/or types used for the goods;
(2) Whether the applied-for mark is unique or unusual in the field in which it is used; here, the attached evidence shows the shape of the container and lid is neither unique nor unusual for the goods;
(3) Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; here. The attached evidence supports concluding that the shape of the container and lid portion of the applied-for mark is at best a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; and
(4) Whether the applied-for mark is incapable of creating a commercial impression distinct from the accompanying words; here, it does not appear that the shape of the container and lid portion of the applied-for mark is capable of creating a commercial impression distinct from the accompanying words and design features.
In re Pacer Tech., 338 F.3d 1348, 1350, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003) (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977)); TMEP §1202.02(b)(ii). Any one of these factors, by itself, may be determinative as to whether the mark is inherently distinctive. See In re Chippendales USA, Inc., 622 F.3d 1346, 1355, 96 USPQ2d 1681, 1687 (Fed. Cir. 2010); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2028 (TTAB 2010).
Applicant argues that the refusal of registration dissects the mark. However, refusal in this instance does not dissect the mark but rather offers a factual appraisal of the elements comprising the mark based upon the proper legal standards. The refusal of registration in this instance recognizes all features or elements of the applied-for mark which in this case includes wording, color, label design elements and the entire shape of the packaging container and lid for the goods.
As stated, applicant claims its mark includes trade dress, namely, the shape of the container and lid and that this feature or portion of the mark is an arbitrary shape. However, the evidence shows that the shape of the container and lid is not arbitrary. The attached evidence shows that the shape of the container of applicant’s goods as depicted in the drawing is a basic shape or design for packaging for the goods. The attached evidence also shows that there are several types of packaging containers and/or packaging shapes that are commonly used for cocoa products. This feature the applied-for mark, namely the convex shape of the container and lid, is not unique or unusual in the field in which it is used as it is used by other competitive sources of the goods. Therefore, the evidence shows this portion of the mark is not arbitrary and that there is a competitive need by others in the same field to use the same or highly shaped convex containers and lids as depicted in the applied-for mark.
Shape Of Container Portion Of Mark Not Inherently Distinctive
Applicant argues that its mark is entirely inherently distinctive, including the convex shape of the container and lid of the packaging for the goods as claimed in the application. However, “a mark is inherently distinctive if [its] intrinsic nature serves to identify a particular source.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000) (internal quotations omitted) (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 23 USPQ2d 1081, 1083 (1992)); TMEP 1202.02(b)(ii). The intrinsic nature of the convex shape of the container and lid does not, in this instance, serve to identify a particular source as shown by the evidence.
The evidence supports the conclusion that average consumers would not immediately recognize the source of the goods from only the shape of the product packaging but would need something more in order to know what the goods are, such as the wording or other design features of the mark, including color and logo. Without the Hershey’s word mark and ornamental design of color and shape portions of the applied-for mark, the shape of the container and lid would not independently on its own provide purchasers with sufficient information to discern the nature or type of the goods or their source. The attached evidence shows that although applicant presents evidence of non-similar product packaging shapes for cocoa, this is not a complete showing of product containers commonly used for cocoa.
Here, the applied-for mark as a whole is not inherently distinctive because the shape of the container claimed as a feature of the mark does not by its intrinsic nature serve to identify the source of the goods. It is not arbitrary as shown by the attached evidence consisting of web pages that show various cocoa products offered for sale to the public with the same and highly similar container shapes, as well as several different product packaging shapes. The evidence shows that there are several common geometric shapes and types of packaging used for cocoa that includes the same or highly similar convex container shapes as employed in applicant’s mark. Therefore, the applied-for mark as a whole is not inherently distinctive.
Product Design vs. Product Packaging
Unlike product design, product packaging may be inherently distinctive and registrable on the Principal Register without a showing of acquired distinctiveness. TMEP §1202.02(b)(ii); see In re Proctor & Gamble Co., 105 USPQ2d 1119, 1123, 1126 (TTAB 2012). However, in close cases in which it is difficult to determine whether the trade dress at issue is product packaging or product design, “courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. at 215, 54 USPQ2d at 1070; In re Slokevage, 441 F.3d at 962, 78 USPQ2d at 1399; TMEP §1202.02(b)(ii).
Here, a significant portion of the drawing and the mark as stated in the description of the mark is the shape of the container and lid of the goods. The shape of a container that is product packaging in this case must be also be analyzed under the legal standards set out by the U.S. Supreme Court in Wal-Mart. A determination of whether the shape of the container and lid of the goods is, as trade dress, either product packaging or product design in this instance must be based upon the evidence. In this case, the evidence supports that this determination be made in favor of product design and require secondary meaning for registration on the Principal Register.
Secondary Meaning
In response to this refusal, applicant may assert a claim that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f). To support this claim of acquired distinctiveness, applicant may submit evidence of “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. However, “[t]he evidence must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.” In re Change Wind Corp., 123 USPQ2d at 1467 (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982)).
To establish acquired distinctiveness, an applicant may rely only on use in commerce that may be regulated by the U.S. Congress. See 15 U.S.C. §§1052(f), 1127. Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States. TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999).
As an alternative to submitting evidence of acquired distinctiveness, applicant may amend the application to the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a); TMEP §§816, 1202.02(b)(ii).
If applicant responds to the refusal(s), applicant must also respond to the final requirement(s) set forth below.
Substitute Drawing Required-Final Requirement
In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following:
(1) Indicates the mark is a three-dimensional configuration of the goods or packaging or of a specific design feature of the goods or packaging.
(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.
(3) Specifies any elements that are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.
See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii).
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
Ferraiuolo, Dominic
/DominicJFerraiuolo/
Examining Attorney, U.S.P.T.O.
Law Office 102
tel: 571-272-9156
fax: 571-273-9102
email: dominic.ferraiuolo@uspto.gov
RESPONSE GUIDANCE
