Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  April 21, 2020

 

 RECONSIDERATION ON REMAND – NEW ISSUE PRESENTED; NOTICE OF APPEAL FILED

 

Trademark Trial and Appeal Board (Board) instituted and suspended appeal; remanded application for review of request for reconsideration.  See TBMP §1204; TMEP §715.04.  On March 23, 2020, applicant filed a notice of appeal to the Board and a request for reconsideration of a final Office action that issued on September 23, 2019.  On March 23, 2020, the Board instituted and then suspended the appeal proceeding, remanding the application to the trademark examining attorney for review of the request for reconsideration. 

 

Jurisdiction of application with trademark examining attorney.  Therefore, applicant must file a response to this Office action directed to the trademark examining attorney, not the Board.  TMEP §715.04(b). 

 

Applicant’s request for reconsideration raises a new issue.  This nonfinal Office action is being issued to address this new issue and supersedes the previous final Office action.  Id.  If applicant’s response to this nonfinal Office action does not resolve all the issues, the Board will be notified to resume the appeal.  Id. 

 

The following refusal from the final Office action remains outstanding:  Sections 1, 2, and 45 refusal – Ornamental. 

 

New issue: Section 2(f) claim is denied.

 

In its March 23, 2020 Request for Reconsideration (“Request”), applicant maintains its previously-made arguments that the applied-for mark shown on the specimen is not ornamental, and in the alternative asserts a claim under Section 2(f) of acquired distinctiveness based upon: (1) evidence, (2) ownership on the Principal Register of the same mark (U.S. Registration Nos. 1861882 and 1353939) for sufficiently similar goods as those in the present application, and (3) a verified statement as to applicant’s substantially exclusive and continuous use of the mark in commerce for at least five years prior to the date of the claim statement.

 

Applicant’s Section 2(f) claim is denied as follows.

 

Applicant has not met the burden of proving distinctiveness of the applied-for mark.

 

An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f).  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01.  “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422. 

 

Allegations of sales and advertising expenditures do not per se establish that a term has acquired significance as a mark.  See TMEP §1212.06(b).  An applicant must also provide the actual advertising material so that the examining attorney may determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers.  TMEP §1212.06(b); see In re Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).

 

The ultimate test in determining acquisition of distinctiveness under Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source.  Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1856 (TTAB 2017) (citing In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985); In re LC Trademarks, Inc., 121 USPQ2d 1197, 1208 (TTAB 2016); In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1760-61 (TTAB 1991)); TMEP §1212.06(b).

 

(1)   The evidence in support of the Section 2(f) claim is insufficient.

 

Applicant has not provided sufficient evidence to show that the relevant public would understand the primary significance of the mark as being a source identifier of applicant’s goods.  Applicant did not provide evidence as to sales of goods bearing the mark; applicant did not provide evidence as to advertising related to the mark; applicant did not provide evidence of unsolicited media coverage of the mark; applicant did not provide consumer surveys regarding the mark and distinctiveness.

 

Applicant provided a single declaration from an officer of applicant to support applicant’s claim that the applied-for mark acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f).  Although consumer affidavits and declarations that assert recognition of a mark as an indicator of source are relevant in establishing acquired distinctiveness, affidavits and declarations of an applicant’s employees, officers, and attorneys are usually self-serving and entitled to little weight.  See In re David Crystal, Inc., 296 F.2d 771, 773, 132 USPQ 1, 2 (C.C.P.A. 1961); In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB 1987); In re Cent. Counties Bank, 209 USPQ 884, 888 (TTAB 1981); TMEP §1212.06(c).

 

Here, the assertion in the declaration that the applied-for mark has been in use for over 30 years and is well-known to consumers as an indicator of source is insufficient on its own to support the Section 2(f) claim. 

 

(2)   The U.S. Registrations offered in support of the Section 2(f) claim are not for the same mark.

 

Applicant has asserted a claim of acquired distinctiveness based on ownership of prior registrations for the mark.  The applied-for mark is comprised of the stylized term “VANS” atop a design of six stacked trapezoid shapes.  As explained below, the marks in the prior registrations do not support applicant’s claim of acquired distinctiveness because they are not the same mark.

 

A claim of acquired distinctiveness may be based on an applicant’s ownership of one or more active prior registrations of the same mark on the Principal Register.  37 C.F.R. §2.41(a)(1); TMEP §1212.04.  An applied-for mark is considered the same mark if it is the legal equivalent of the previously-registered mark.  In re Highlights for Children, Inc., 118 USPQ2d 1268, 1273-74 (TTAB 2016) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1212.04(b). 

 

To be legal equivalents, the applied-for mark must be indistinguishable from the previously-registered mark or create the same, continuing commercial impression such that the consumer would consider them both to be the same mark.  In re Highlights for Children, Inc., 118 USPQ2d at 1274, 1275 n.18 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d at 1347, 57 USPQ2d at 1812)); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547 (TTAB 2010); TMEP §1212.04(b). 

 

In the present case, the applied-for mark and the mark in the prior registrations are not the same mark, and thus are not legal equivalents, because the marks on the prior registrations feature only the stylized term “VANS” and do not include the trapezoid design elements.

 

Therefore, the prior registrations do not support applicant’s claim of acquired distinctiveness and the claim is not accepted. 

 

(3)   The five years’ use statement in support of the Section 2(f) claim is insufficient to counter an ornamental refusal.

 

Although applicant asserts dates of use for the applied-for mark in excess of thirty years, and although applicant has submitted a verified statement indicating that “The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.”, nonetheless, this statement is insufficient to support a Section 2(f) claim to overcome an ornamental refusal. 

 

TMEP §1202.03(d) “Evidence of Distinctiveness” states in relevant part:

 

Generally, evidence of five years’ use alone is not sufficient to show acquired distinctiveness of a mark that is mere ornamentation. Concrete evidence that the proposed mark is perceived as a mark for the relevant goods or services is required to establish distinctiveness. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).

 

TMEP §1212.05(a) “Sufficiency of Claim Vis-à-vis Nature of the Mark” states in relevant part (emphasis added):

 

For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product container shapes, overall color of a product, mere ornamentation, and sounds for goods that make the sound in their normal course of operation), evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods or services would be required to establish distinctiveness. See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant’s fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1401 (TTAB 2009) (noting that "the evidence required is in proportion to the degree of nondistinctiveness of the mark at issue" in relation to a sound mark emitted by cellular telephones in their normal course of operation); In re ic! berlin brillen GmbH, 85 USPQ2d 2021 (TTAB 2008) (configuration of an earpiece for frames for sunglasses and spectacles comprised of three "fingers" near the hinge); In re The Black & Decker Corp., 81 USPQ2d 1841, 1844 (TTAB 2006) (finding applicant successfully established acquired distinctiveness for the design of a key head for key blanks and various metal door hardware, where evidence submitted in support thereof included twenty-four years of use in commerce and significant evidence regarding industry practice, such that the evidence showed that "it is common for manufacturers of door hardware to use key head designs as source indicators."); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress (white circle surrounded by blue border) for ear plugs); In re Star Pharm., Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791 (TTAB 1984) (configuration of halter square for horse halters).

 

For the foregoing reasons, the Section 2(f) claim is unacceptable, and the ornamental refusal is maintained and continued.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

ADVISORY: APPLICATION REASSIGNED

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 21, 2020 for

U.S. Trademark Application Serial No. 88202504

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 21, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”