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:  July 10, 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).

 

SUMMARY OF ISSUES:

• Evidence does not Establish Acquired Distinctiveness
• Five Years' Use Insufficient to Establish Acquired Distinctiveness
• Section 2(e)(5) Refusal
• Amended Drawing and Mark Description Required

 

EVIDENCE DOES NOT ESTABLISH ACQUIRED DISTINCTIVENESS

 

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. 

 

Applicant provided an affidavit and declaration from applicant’s CEO 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).

 

Further, allegations of sales does 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).  “[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)).

 

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).

 

As such, applicant's claim of acquired distinctiveness based on evidence is insufficient.

 

FIVE YEARS' USE INSUFFICIENT TO ESTABLISH ACQUIRED DISTINCTIVENESS

 

The examining attorney notes that in addition to the evidence described above, applicant has asserted a claim of acquired distinctiveness based on five years of continuous and substantially exclusive use.  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).  In the present case, applicant's claim of acquired distinctiveness based on five years' use is insufficient.

 

Applicant should note the below grounds for refusal.

 

SECTION 2(e)(5) REFUSAL—APPLIED-FOR MARK IS FUNCTIONAL

 

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).

 

Determining functionality normally involves consideration of one or more of the following factors, commonly known as the “Morton-Norwich factors”:

 

(1)       The existence of a utility patent disclosing the utilitarian advantages of the design sought to be registered.

 

(2)       Advertising materials of the applicant that tout the design’s utilitarian advantages.

 

(3)       The availability to competitors of alternative designs.

 

(4)       Facts indicating that the design results in a comparatively simple or inexpensive method of manufacture.

 

In re Becton, Dickinson & Co., 675 F.3d 1368, 1374-75, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); 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).  It is not required that all four factors be proven in every case, nor do all four factors have to weigh in favor of functionality to support a functionality refusal.  Poly-America, LP v. Ill. Tool Works, Inc., 124 USPQ2d 1508, 1514 (TTAB 2017) (citing In re Change Wind Corp., 123 USPQ2d 1453, 1456 (TTAB 2017); In re Heatcon, Inc., 116 USPQ2d 1366, 1370 (TTAB 2015)); TMEP §1202.02(a)(v).

 

Existence of a Utility Patent

 

The examining attorney notes that the record does not establish that applicant has a utility patent disclosing the advantages of the design sought to be registered.  The examining attorney further notes that although a design patent is evidence of nonfunctionality under Morton-Norwich, such evidence does not in itself establish that a product feature is nonfunctional; thus this evidence may be outweighed by other evidence of functionality.  TMEP §1202.02(a)(v)(A); see In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1342 n.3, 213 USPQ 9, 17 n.3 (C.C.P.A. 1982).

 

Thus, although the design patent of record is evidence of nonfunctionality, this evidence is not dispositive and may be outweighed by other evidence of functionality.

 

Advertising Materials Touting the Design's Utilitarian Advantages

 

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).  The examining attorney notes that the record does not include evidence of applicant's advertising materials touting the utilitarian advantages of applicant's design. 

 

The examining attorney further notes, however, that competitors’ advertising and promotional materials that extol specific utilitarian advantages of the applied-for product design or product packaging are strong evidence that the matter sought to be registered is functional.  TMEP §1202.02(a)(v)(B); see, e.g., In re Heatcon, Inc., 116 USPQ2d 1366, 1374-75 (TTAB 2015); In re Van Valkenburgh, 97 USPQ2d 1757, 1763 (TTAB 2011).  The attached evidence from http://hingesandlatches-com.myshopify.com/collections/cam-latches-and-locks/products/49-2, http://www.southco.com/en-us/49 and http://www.mcmaster.com/#latches/=49878d1dbab34a0fbe6bbf281ffc23f5jvfr494z suggests that the arrow design in applicant's mark has the utilitarian advantage of serving as a clear indicator of a latch's position.

 

Availability to Competitors of Alternative Designs

 

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)).

 

Notwithstanding, the attached evidence from http://www.lexico.com/en/definition/arrow and http://books.google.com/books?id=HwSVn2PZCSAC&dq=dreyfuss+symbol+sourcebook&printsec=frontcover&source=bn&hl=en&ei=oYRpS93yHdOg8Ab9mczCBw&sa=X&oi=book_result&ct=result#v=onepage&q&f=false establishes that an arrow is used to show direction.  As such, applicant's use of a universal symbol for showing direction on a product where indicating the direction of the latch has a utilitarian purpose, i.e., to indicate whether the latch is in an opened or closed position, indicates that few, if any, adequate alternative designs for showing direction exist.  

 

Facts Indicating that the Design Results in a Comparatively Simple or Inexpensive Method of Manufacture

 

An applicant’s assertion that its design is more expensive or more difficult to make does not establish that the configuration is not functional.  AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d 1829, 1836 (TTAB 2013) (citing In re Dietrich, 91 USPQ2d 1622, 1637 (TTAB 2009) (“[E]ven at a higher manufacturing cost, applicant would have a competitive advantage for what is essentially . . . a superior quality wheel.”)); In re Pingel Enter. Inc., 46 USPQ2d 1811, 1821 (TTAB 1998) (“That applicant, despite the inherent advantages of a design which is simple and less expensive to manufacture than other petcocks, has, however, deliberately chosen a more complex and expensive manner in which to manufacture its product does not mean that the configuration thereof is not de jure functional.”); TMEP §1202.02(a)(v)(D).

 

In the present case, the record lacks evidence as to the comparative expense or simplicity of manufacture. Nevertheless, the universality of the arrow symbol, as established by the evidence of record suggests that the arrow design in applicant's mark presents a comparatively simple manufacturing solution to indicate direction.

 

Other Considerations

 

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).

 

Here, as discussed above, the arrow design featured in applicant's mark presents a utilitarian use and advantage vis-à-vis the applied-for goods.  Specifically, the evidence shows that an arrow is functional in the context of applicant's goods because it is a simple and efficient visual device to show the direction of the latch, and showing the direction of the latch indicates to users whether the latch is in an opened or closed position.

 

Thus, registration of the applied-for mark must be refused registration under Section 2(e)(5) of the Trademark Act.

 

Applicant is advised that 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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Applicant should note the below requirement.

 

NEW DRAWING AND MARK DESCRIPTION REQUIRED

 

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 mark cannot be adequately depicted in a single rendition, applicant must file a petition to the Director requesting that the requirement to provide a single rendition of the mark be waived.  TMEP §807.10.

 

In the present case, applicant has included portions of the design which appear to be functional and/or nondistinctive.  Specifically, the circular rim appears outside of the arrow portion of the design appears to be a common element in latches, as established by the attached evidence from http://www.eberhard.com, http://www.emka.com, http://www.jetpress.com, as well as by the evidence provided by the applicant featuring a variety of different latches with rounded rims.  

 

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). 

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

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.  

 

 

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

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@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 July 10, 2019 for

U.S. Trademark Application Serial No. 88309115

 

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. 

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@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 July 10, 2019, 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.”