Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  February 18, 2020

 

This Office action is in response to applicant’s communication filed on February 3, 2020.

 

In a previous Office action(s) dated August 1, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Failure to Function As A Mark. 

 

The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

FAILURE TO FUNCTION AS A TRADEMARK

In the previous Office Action, the examining attorney refused the mark as failing to function as a source identifier. In the response, the applicant argued against the refusal. The examining attorney has considered the argument carefully finding it unpersuasive. The refusal to register is maintained and made FINAL.

 

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP §§904.07(b); 1202 et seq.

 

The applied-for mark, as shown on the specimen, does not function as a trademark because it appears to be a common carrier of basic design used to frame wording. Consumers viewing the mark would not view the rectangle design separate from the wording, nor would they view it as source identifying.

 

Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the goods.  See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202.  The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark.  In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). 

 

Not every designation that appears on a product or its packaging functions as a trademark, even though it may have been adopted with the intent to do so.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1404 (TTAB 2018) (citing In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)).  A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the goods.  See In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)); TMEP §1202.

 

In the response, applicant argues that its box design does function as a mark. The crux of applicant’s argument is that its widespread use of “box” logos resulted in the mark becoming synonymous with applicant’s mark and their goods. Applicant argues that the design is a carton, or type of box, and is associated with the name CARTON BREWING. Applicant has adopted an “open box” and “closed box” logo and uses the logos for the goods associated.

 

Applicant further argues that a GOOGLE® search of “Carton Brewing” shows both its open and closed box designs, and as such this is evidence of the pervasiveness of the mark and that it is perceived as a trademark. Applicant argues that the design is also used as a mark on its web site and social media pages.

 

Lastly, applicant provides a variety of usages of the closed and open box designs, and argues that this demonstrates the mark does not fail to function as a trademark.

 

The examining attorney has considered all of this and disagrees. The present application is for what applicant would describes as the “closed box” design, not for the wording CARTON BREWING or the open box design-both of which are far more stylized, or have wording, on which trademark significance can be relied. As such, they have no informative value as to the present case. It does not matter if applicant’s other marks are viewed as trademarks, but whether the present design as applied for can.

 

Applicant’s GOOGLE® search results are not probative either. The fact that GOOGLE® can recognize a word mark and bring up associated images does not bear on whether a consumer, viewing the design in this picture would understanding it-on its own-as a trademark. A search results summary from an Internet search engine has limited probative value because such a list does not show the context in which the term or phrase is used on the listed web pages and may not include sufficient surrounding text to show the context within which the term or phrase is used.  TBMP §1208.03; see In re Bayer AG, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Star Belly Stitcher, Inc.,107 USPQ2d 2059, 2062 n.3 (TTAB 2013); TMEP §710.01(b).

 

None of the images provided by applicant as evidence are probative in that they either comprise of the “open box” design, which is far more fanciful and not informative on the present design, or feature the wording CARTON BREWING, in which case a consumer would view the wording, or wording and design, as the source identifying mark, not the design itself. Usage of the design with the wording is not probative or helpful in regards to whether the design itself is more than a common carrier.

 

Applicant’s mark, ultimately is two rectangles, one with a few vertical lines. It’s only use, in the entirety of the specimen of use and in applicant’s additional evidence, is to act as a carrier for the word mark CARTON BREWING. This is a mere combination of basic and common geometric shapes, and does not act as a source identifier. Most common geometric shapes, such as circles, ovals, triangles, diamonds, or stars, when used as a background for word or letter marks are not considered inherently distinctive.  See In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1216 (TTAB 1998).  As the Board explained,

 

The rationale . . . is that designs of this character have been so commonly employed as background devices for word marks that composite marks of this type create but a single commercial impression with the result that purchasers would normally utilize the word portions of the marks to identify and distinguish the goods sold thereunder . . . .

 

In re Wendy’s Int’l, Inc., 227 USPQ 884, 885 (TTAB 1985) (quoting Permatex Co. v. Cal. Tube Prods., Inc., 175 USPQ 764, 766 (TTAB 1972)).

 

The refusal to register is maintained and made FINAL.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

If the applicant has any questions or needs assistance regarding this action, please telephone the assigned examining attorney.

 

/FrankLattuca/

Frank Lattuca

Examiing Attorney

Law Office 109

(571) 270-1518

Frank.Lattuca@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 February 18, 2020 for

U.S. Trademark Application Serial No. 88430294

 

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. 

 

 

/FrankLattuca/

Frank Lattuca

Examiing Attorney

Law Office 109

(571) 270-1518

Frank.Lattuca@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 February 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.”