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: 1/2/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

REFUSAL TO REGISTER – PRODUCT DESIGN FAILS TO FUNCTION AS A TRADEMARK

 

Registration is refused because the applied-for mark, which consists of a three-dimensional configuration of the goods, appears to be a functional design for such goods.  Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5); see TMEP §1202.02(a)-(a)(ii).  A feature is functional 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) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995)); Inwood Labs., Inc., v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982); TMEP §1202.02(a)(iii)(A).

 

A mark that consists of a three-dimensional configuration of a product or its packaging is functional, and thus unregistrable, when the evidence shows that the design provides identifiable utilitarian advantages to the user; i.e., the product or container “has a particular shape because it works better in [that] shape.”  Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002) (internal punctuation and citation omitted); see TMEP §1202.02(a)(iii)(A).

 

The evidence need not establish that the configuration at issue is the very best design for the particular product or product packaging.  A configuration can be held functional when the evidence shows that it provides a specific utilitarian advantage that makes it one of a few superior designs available.  See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (holding shape of a loudspeaker system enclosure functional because it conforms to the shape of the sound matrix and is thereby an efficient and superior design); In re Dietrich, 91 USPQ2d 1622 (TTAB 2009) (holding particular spoke arrangement of a bicycle wheel functional because it is more stable and provides better performance than wheels with other spoke arrangements featuring the same or greater number of spokes); In re Am. Nat’l Can Co., 41 USPQ2d 1841 (TTAB 1997) (holding metal beverage containers with vertical fluting functional because vertical fluting is one of a limited number of ways to strengthen can sidewalls and it allows for an easier way to grip and hold the can); TMEP §1202.02(a)(v), (a)(v)(C).

 

On the other hand, where the evidence shows that the specific product or container configuration at issue provides no real utilitarian advantages to the user, but is one of many equally feasible, efficient and competitive designs, then it may be registrable.  See In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9 (C.C.P.A. 1982).  However, a product configuration cannot be registered on the Principal Register without a showing of acquired distinctiveness.  See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000); TMEP §1202.02(b)-(b)(i).

 

In this case, the specimen of use submitted by applicant advertises that applicant’s product is designed for faster, easier and more flexible installation.  Further, the specimen of use advertises that applicant’s product has additional advantages no other SCD line offers.  Also, the specimen advertises that because there are fewer sharp edges, there is a less chance of damaging wallboards and cabinets and that the goods, unlike other SCDs, are designed to be installed directly alongside studs.

 

Applicant’s own advertising that extols specific utilitarian advantages of the applied-for product design or product packaging is strong evidence that the matter sought to be registered is functional.  TMEP §1202.02(a)(v)(B); see, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1375-76, 102 USPQ2d 1372, 1377-78 (Fed. Cir. 2012); In re Heatcon, Inc., 116 USPQ2d 1366, 1373 (TTAB 2015).

 

A few arbitrary or otherwise nonfunctional features included within a product or packaging configuration mark do not affect a functionality determination where the evidence shows the overall design to be functional.  See Textron, Inc. v. U.S. Int’l Trade Comm’n, 753 F.2d 1019, 1024-27, 224 USPQ 625, 628-30 (Fed. Cir. 1985); In re Vico Prods. Mfg. Co., 229 USPQ 364, 368 (TTAB 1985); TMEP §1202.02(a)(v).  Specifically, an applied-for mark possessed of significant functional features should not qualify for registration where insignificant elements of the design are non-functional.  In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376.

 

When functionality is found based on other considerations, there is “no need to consider the [third Morton-Norwich factor regarding] availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available.”  In re Becton, Dickinson & Co., 675 F.3d 1368, 1376, 102 USPQ2d 1372, 1378 (Fed. Cir. 2012) (quoting Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002)); TMEP §1202.02(a)(v)(C).  “The availability of alternative designs does not convert a functional design into a non-functional design.”  Kohler Co. v. Honda Giken Kogyo KK, 125 USPQ2d 1468, 1502 (TTAB 2017) (quoting Kistner Concrete Prods. Inc. v. Contech Arch Techs. Inc., 97 USPQ2d 1912 (TTAB 2011)).

 

A determination that an applied-for configuration mark is functional constitutes an absolute bar to registration on the Principal or Supplemental Registers, regardless of any evidence of acquired distinctiveness.  Trademark Act Sections 2(e)(5) and 23(c), 15 U.S.C. §§1052(e)(5), 1091(c); see TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29, 58 USPQ2d 1001, 1006 (2001); In re Controls Corp. of Am., 46 USPQ2d 1308, 1311 (TTAB 1998); TMEP §1202.02(a)(iii)(A).

 

REQUEST FOR INFORMATION

 

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

 

(1)       A written statement as to whether the applied-for mark, or any feature(s) 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 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 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 product design or 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.

 

ALTERNATIVE REFUSAL TO REGISTER – NON-DISTINCTIVE PRODUCT DESIGN

 

In the alternative, if applicant’s mark is determined capable of functioning as a trademark, registration is refused because the applied-for mark consists of a nondistinctive product design or nondistinctive features of a product design 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; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 213-14, 54 USPQ2d 1065, 1068-69 (2000); In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006); see TMEP §1202.02(b)(i).

 

A product design can never be inherently distinctive as a matter of law; consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source.  See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. at 212-13, 54 USPQ2d at 1068-69; In re Slokevage, 441 F.3d at 962, 78 USPQ2d at 1399.  Thus, consumer predisposition to equate a product design with its source does not exist.  Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. at 213, 54 USPQ2d at 1069.

 

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).

 

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. 

 

The amount and type of evidence necessary to prove acquired distinctiveness depends on the facts of each case and the nature of the mark sought to be registered.  TMEP §1212.01; see In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985).

 

Applicants face a heavy burden in establishing distinctiveness in an application to register trade dress. Stuart Spector Designs , Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) ; see also Duraco Prods., Inc. v. Joy Plastic Enters., Ltd., 40 F.3d 1431, 1453, 32 USPQ2d 1724, 1742 (3d Cir. 1994) ("secondary meaning in a product configuration case will generally not be easy to establish").

 

Evidence of five years’ use considered alone is generally not sufficient to show acquired distinctiveness for nondistinctive product design marks.  E.g., In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984); In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017).

 

“[M]ere [sales volume] figures demonstrating successful product sales are not probative of purchaser recognition of a configuration as an indication of source.”  In re Koninklijke Philips Elecs. N.V., 112 USPQ2d 1177, 1187 (TTAB 2014) (quoting Stuart Spector Designs Ltd. v. Fender Musical Instruments, 94 USPQ2d 1549, 1572 (TTAB 2009)).

 

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)(i).

 

DESCRIPTION OF THE MARK MUST BE AMENDED

 

Applicant must amend the description of the mark to sufficiently indicate what is being claimed as the mark.  In this case, applicant merely states that the solid lines show the positioning of the mark on the goods.  Instead, applicant must actually provide a literal description of the features of the goods that are being claimed as the mark.  Further, the term “Applicant” must be deleted from the description of the mark, as, if and when the application becomes a registration, “Applicant” would not be an accurate term.

 

For marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that applicant claims as its mark.  See 37 C.F.R. §2.52(b)(2); TMEP §§807.10, 1202.02(c)(iv); In re Minn. Mining & Mfg. Co., 335 F.2d 836, 839, 142 USPQ 366, 368-69 (C.C.P.A. 1964). 

 

If the drawing of the mark includes additional matter not claimed as part of the mark (e.g., matter that shows the position or placement of the mark), applicant must depict such matter using broken or dotted lines.  37 C.F.R. §2.52(b)(4); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1488 (TTAB 2017) (quoting In re Heatcon, Inc., 116 USPQ2d 1366, 1379 (TTAB 2015)); TMEP §§807.08, 1202.02(c)(i); see In re Water Gremlin Co., 605 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980).

 

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 their 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). 

 

IDENTIFICATION OF GOODS MUST BE AMENDED

 

The wording “self contained electrical wiring device” in the identification of goods is indefinite and must be clarified because it does not sufficiently indicate the specific wiring devices.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

self contained electrical wiring device, namely, electrical wall outlets

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

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.  

 

 

 

/Mark Sparacino/

Trademark Attorney

US Patent and Trademark Office

Law Office 103

571-272-9708

Mark.Sparacino@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 1/2/2019 FOR U.S. APPLICATION SERIAL NO. 88205726

 

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 1/2/2019 (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.