Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88138306 VCP VEUVE CLICQUOT (Stylized and/or with Design, see http://uspto.report/TM/88138306/mark.png) has been amended as follows:

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

REMARKS

 

Functionality Refusal

 

The Office Action objected to the drawing on the ground that it includes functional elements depicted in solid lines.  Applicant respectfully disagrees and requests that this refusal and the requirement for an amended drawing and mark description be withdrawn.

 

Specifically, the Office Action asserts that “the outer edge of the silver framing of the container, the top and bottom edge of container, and the hinge” are functional.

 

The application seeks to protect the unique overall arrow shape of the packaging design.  The silver framing surrounding the top mirrors the arrow shape of the packaging design.  The Examiner accepts that the overall arrow-shaped container functions as a mark, and is non-functional.  But the silver framing is part of this mark.  Its arrow shape is also non-functional just like Applicant’s overall design which it is intrinsic with.

 

These elements – the outer edge of the silver framing of the container and the top and bottom edge of container – are therefore part of a unitary packaging design.  The silver framing is a further decorative feature that follows or outlines the overall shape of the packaging.  These elements should not be considered piecemeal as they are not separate from rest of the unitary packaging design.  As a whole, the design, including the silver framing, is non-functional.

 

The Office Action attaches several examples of containers from third-party websites, and asserts that these examples “all show that these elements (a four-sided box with top and bottom and a hinge opening) are functional because common use in the industry reflects that there are few alternative designs available.”

 

Applicant submits that its design mark is entirely distinguishable from these third-party examples.  All of the attached examples are traditional rectangular boxes with hinged lids. 

 

In contrast, Applicant’s mark consists of a three-dimensional packaging configuration in the overall shape of an arrow, with a pointed arrow head at the top and a divided base resembling the fletching of an arrow at the bottom.  Further, as the attached point-of-sale display shows, the lid is detachable.  Applicant’s mark is not simply “a four-sided box with top and bottom and a hinge opening.”

 

As the attached point-of-sale display shows, the arrow shape is a whimsical packaging design that is part of a creative marketing campaign surrounding the goods.  The arrow container is personalizable and can be customized with the name of a city, country, village or other place name or “dream destination.”  The customization will include the distance from the selected destination to Reims, France, the unofficial capital of the Champagne wine-growing region.  The entirety of the design and the associated marketing is suggestive of a journey.

 

The shape of an arrow does not cause the product to work better, and it is not essential to the use or purpose of the product. 

 

For the above reasons, Applicant submits that the elements of the design are not functional.  Applicant respectfully requests that this objection and the requirement for an amended drawing and mark description be withdrawn.

 

Refusal re Non-distinctive Incapable Elements of Product Design

 

The Office Action objected to the drawing on the ground it includes non-distinctive elements depicted in solid lines.  Applicant respectfully disagrees and requests that this refusal and the requirement for an amended drawing and mark description be withdrawn.

 

Specifically, the Office Action states that the outer edge of the silver framing of the container, the top and bottom edge of the container, and the hinge are non-distinctive and do not function as a mark “because such elements are the same or substantially similar to the designs of competitors’ products and consumers are accustomed to seeing such elements on similar products from a variety of providers.”

 

As noted above, the examples attached to the Office Action are traditional rectangular boxes with hinged lids.  The unique arrow shape of Applicant’s mark, with its detachable lid, is not “the same or substantially similar” to these designs at all.

 

Applicant’s arrow design is a very unique shape for a bottle container or case.  The Examiner accepts that the overall arrow-shaped container functions as a mark.  The outer edge of the silver framing of the container and the top and bottom edge of container are parts of this unitary packaging design.  These decorative features follow or outline the overall shape of the packaging, and these elements cannot be separated out from the rest of the unitary design.

 

For the above reasons, Applicant respectfully requests that this objection and the requirement for an amended drawing and mark description be withdrawn.

 

 

Multiple Renditions of Mark

 

The Office Action objected to the drawing on the ground that it shows more than one rendition of the mark.  Applicant has filed a Petition to the Director requesting that the requirement to provide a single rendition of the mark be waived.

 

 

Identification of Goods

 

The Office Action objected to the identification of goods as indefinite.  Applicant has entered an amendment responsive to this objection.

 

 

EVIDENCE
Evidence in the nature of Point-of-sale display screen shot has been attached.
Original PDF file:
evi_20671224226-20190717203517454719_._ICQUOT_and_Design_-_Attachment_for_Response__F3123789x96B9E_.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Insulated containers for bottles; portable cool boxes, non-electric; isothermic cases and boxes
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 4441861 registered 03/30/2018 with a renewal date of __________ and an expiration date of 03/29/2028 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Insulated containers for bottles; Insulated containers for bottles for domestic use; portable cool boxes, non-electric; isothermic cases and boxes; non-electric isothermic cases and boxesClass 021 for Insulated containers for bottles for domestic use; portable cool boxes, non-electric; non-electric isothermic cases and boxes
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 4441861 registered 03/30/2018 with a renewal date of __________ and an expiration date of 03/29/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Nancy DiConza/     Date: 07/17/2019
Signatory's Name: Nancy DiConza
Signatory's Position: Attorney of Record, New York State Bar Member

Signatory's Phone Number: 212-813-5900

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 88138306
Internet Transmission Date: Wed Jul 17 20:45:37 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201907172045378
00936-88138306-6203021fba08aef1ef3fab738
bf72b9f387edbb24c9cfec332b5c98897cd079f5
-N/A-N/A-20190717203517454719