To: | TXS Industrial Design, Inc. (dallastrademarks@dfw.conleyrose.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88221519 - 4684-02500 |
Sent: | 3/18/2019 7:53:59 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88221519
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: TXS Industrial Design, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/18/2019
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).
SECTIONS 1, 2, AND 45 REFUSAL—NONDISTINCTIVE PRODUCT DESIGN
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).
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).
AMENDED DRAWING AND MARK DESCRIPTION REQUIRED
In this case, the drawing and specimen clearly show the design of a product, however the description states that the applied-for mark consists of “product packaging”. Applicant must clarify this discrepancy. Further, the drawing shows (1) a series of partial horizontal lines on the front face and sides of the product, (2) incomplete vertical lines on the front corners of the product, and (3) diagonal lines in front of the clockface. It is unclear what these lines are meant to represent and such lines do not appear in the specimen of record, nor the description of the mark included in the application. As a result, Applicant must clarify what is intended by these lines or submit a new drawing which does not contain these lines.
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).
In this case, the description submitted with the application (1) refers to the mark as “product packaging” rather than product design, (2) describes matter not in the mark, and (3) does not specify all elements that are not part of the mark.
The following mark description format is suggested, if accurate:
The mark consists of a three-dimensional configuration of an alarm clock and integrated battery charger in a frutopyramidal shape. The broken lines depicting the knob, buttons, clock-face, and USB inputs are not part of the mark.
See TMEP §1202.02(c)(ii).
Applicant should note the following related requirement.
REQUEST FOR INFORMATION
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement. Further, Applicant must clarify what Applicant intended to convey with the (1) series of partial horizontal lines on the front face and sides of the product, (2) incomplete vertical lines on the front corners of the product, and (3) diagonal lines in front of the clock face. Finally, Applicant must provide evidence to establish how these goods are packaged and sold.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant should note the following additional requirement.
IDENTIFICATION OF GOODS AMENDMENT REQUIRED
Applicant may substitute the following wording, if accurate:
Class 9: battery chargers incorporating alarm clocks
Class 14: to remain as is
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.
RESPONSE GUIDELINES
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 Riso/
Mark Riso
Trademark Examining Attorney
Office 108
Phone (571)272-0167
mark.riso@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.