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 18, 2020

 

This Office action follows applicant’s communication filed on March 13, 2020.  

 

Based on information in applicant’s response, the trademark examining attorney now issues the following new issue: Section 2(f) Claim of Acquired Distinctiveness Not Accepted.  See TMEP §§706, 711.02.

 

In a previous Office action, dated November 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Sections 1, 2, and 45 – Nondistinctive Product Design Refusal and Unacceptable Specimen.  The trademark examining attorney also required a Request for Information Regarding Functionality, Amended Identification of Goods Requirement, and Amended Mark Description Required. 

 

The examining attorney notes that Specimen Refusal has been withdrawn, and that the request for information regarding functionality, and amended mark description requirement have been satisfied. See TMEP §§713.02, 714.04.

 

Further, the trademark examining attorney notes that additional information is now required in the amended identification of goods requirement. 

 

SUMMARY OF ISSUES that applicant must address:

 

·         NEW ISSUE: Section 2(f) Claim of Acquired Distinctiveness Not Accepted

·         NEW ISSUE: Supplemental Register Available

·         Nondistinctive Product Design Refusal – Maintained

·         NEW ISSUE: Amended Identification of Goods Required

 

SECTION 2(f) CLAIM OF ACQUIRED DISTINCTIVENESS NOT ACCEPTED

 

Registration was initially refused on the basis that 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). In response, applicant amended the application to add a claim of acquired distinctiveness under Section 2(f).  15 U.S.C. §1052(f).

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. 

Three types of evidence may be used to establish a claim of acquired distinctiveness under Trademark Act Section 2(f):

 

(1)        Prior Registrations:  A claim of ownership of one or more active prior registrations on the Principal Register of the same mark for goods and/or services that are sufficiently similar to those named in the pending application.  37 C.F.R. §2.41(a)(1); see TMEP §§1212.04 et seq.;

 

(2)        Five Years’ Use:  A verified statement that the mark has become distinctive of applicant’s goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for the five years before the date when the claim of distinctiveness is made.  37 C.F.R. §2.41(a)(2); see TMEP §§1212.05 et seq.; or

 

(3)        Other Evidence:  Such evidence may include verified statements of long term use, advertising and sales expenditures, examples of typical advertisements, affidavits and declarations of consumers, customer surveys.  See 37 C.F.R. §2.41(a)(3); TMEP §§1212.06 et seq.  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 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005); 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.  “The 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 1453, 1467 (TTAB 2017) (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982)).   

TMEP §1212; see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a).

Applicant may provide one or any combination of these types of evidence.  TMEP §1212.  Depending on the nature of the mark and the facts in the record, however, a claim of ownership of a prior registration or a claim of five years’ substantially exclusive and continuous use in commerce may be insufficient to establish a prima facie case of acquired distinctiveness.  TMEP §1212; see TMEP §§1212.01, 1212.04(a), 1212.05(a).  Other actual evidence of acquired distinctiveness may be provided regardless of the length of time the mark has been used.  TMEP §1212.01; see Ex parte Fox River Paper Corp., 99 USPQ 173, 173-74 (Comm’r Pats. 1953).

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).

Here, applicant claimed Acquired Distinctiveness based on five years use in commerce. However, 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).

 

Additionally, Applicant submitted evidence that consisted of a declaration by Jason Christopher Gavin, an owner of Aqua Paradise, in which he states that he recognizes applicant’s applied-for mark as source-indicative.  This affidavit does not prove that consumers as a whole recognize applicant’s applied-for mark as source-indicative. No customer surveys were submitted linking the name to the source.  Applicant also submitted an affidavit from its VP of Marketing. 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).

 

Moreover, advertising materials and web site screenshots that show pictures of the products do not prove that the public has come to associate this shape with Applicant because it does not show any measure of how the public understands that the applied-for mark identifies Applicant’s goods.

 

Further, Applicant did not provide information in relation to the amount of the amount of advertising, sales and number of customers, intentional copying, and unsolicited media coverage.

 

Applicant should note the following additional ground for refusal – Nontistinctive Product Design.

 

ADVISORY – SUPPLEMENTAL REGISTER AVAILABLE

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

NONDISTINCTIVE PRODUCT DESIGN

 

Refusal of registration because the mark consists of nondistinctive product design is maintained and continued for the reasons specified in the previous Office Action.

 

If applicant responds to these refusals, applicant must also respond to the requirement set forth below.

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

Applicant has applied for the following goods in International Class 11: Fitted Bezel cover for jet nozzles for whirlpool jets, spa jets and hot tub jets.

 

Here, the goods are indefinite and must be clarified to specify the common commercial or generic name of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  Specifically, applicant must specify that it is sold as a component of hot tubs. See TMEP 1402.05(a).

 

Applicant may adopt the following identification of goods, if accurate:

 

Class 11: Fitted Bezel cover for jet nozzles for whirlpool jets, spa jets and hot tub jets, sold as a component of hot tubs

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See TMEP §1402.07(e).

 

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

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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

 

 

/James McNamara/

James McNamara

Examining Attorney

Law Office 127

571-272-0923

james.mcnamara@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 18, 2020 for

U.S. Trademark Application Serial No. 88217276

 

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. 

 

 

/James McNamara/

James McNamara

Examining Attorney

Law Office 127

571-272-0923

james.mcnamara@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 18, 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.”