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:  September 06, 2019

 

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

 

SEARCH RESULTS – NO CONFLICTING MARKS FOUND

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

 

(1)               Refusal – Non-Distinctive Product Packaging

(2)               Amendment of Mark Description and Mark Drawing Required

(3)               Clarification Required Regarding Whether the Applied-for Mark is Two-Dimensional or Three-Dimensional

(4)               Amendment of the Identification of Goods Required

 

 

REFUSAL – NON-DISTINCTIVE PRODUCT PACKAGING

 

Registration is refused because the applied-for product packaging mark is common or basic in the industry; thus, it 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 Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1554-55, 1567 (TTAB 2009) (noting that a product design may be deemed incapable where it is, “at a minimum, so common in the industry that it cannot be said to identify a particular source”); TMEP §1202.02(b)(ii); see also Nora Beverages Inc. v. Perrier Grp. of Am. Inc., 269 F.3d 114, 119-20, 60 USPQ2d 1038, 1041 (2d Cir. 2001) (affirming the district court’s finding that the water bottle manufactured and sold by Nora was generic because “it was used, with minor variations, throughout the entire market of similar products”); Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 583-84, 27 USP2d 1189, 1193 (2d Cir. 1993) (stating that “where it is the custom of an industry to package products in a particular manner, a trade dress in that style would be generic and therefore not inherently distinctive,” such as packaging lime-flavored soda in green twelve-ounce cans, a practice that is common in the soft drink industry).

 

In this case, the applied-for mark fails to function as a trademark because it is basic packaging for a smoke and/or carbon monoxide alarm/detector consisting primarily of a flat surface with a protruding transparent piece, commonly known as “blister pack,” which holds the smoke and/or carbon monoxide alarm/detector. Per the dictionary definition attached hereto as a screenshot from Merriam-Webster.com, a blister pack is “a package holding and displaying merchandise in a clear plastic case sealed to a sheet of cardboard.” 

 

The attached Internet evidence consisting of screenshots from US.LetGo.com, Frys.com, eBay.com,  and HomeDepot.com, shows that packaging for  smoke and/or carbon monoxide alarm/detector and related goods commonly consists of similar packaging (specifically, packaging consisting of a flat surface with a transparent blister pack attached thereto for displaying the product).

 

The evidence of record establishes that the applied-for mark consists of product packaging that is common or basic in the industry. Thus, the applied-for mark fails to function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.

 

Further, applicant may not overcome this refusal by claiming acquired distinctiveness or amending the application to the Supplemental Register.  See TMEP §1202.02(b)(ii).

 

AMENDMENT OF MARK DESCRIPTION AND MARK DRAWING REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Moreover, applicant must amend the mark drawing to indicate by means of dotted lines those parts of the design that are not claimed as part of the mark. Here, the area around the hanger hole, the outside border of the packaging, and the polygon with curved side (which appears in the specimen as cardboard/paper raised above and securing the product) should not be claimed as part of the mark due to their functional nature. Therefore, the mark drawing must be amended to include dotted lines in these areas.

 

The drawing of applicant’s applied-for mark is not acceptable because it includes functional elements depicted in solid lines rather than broken or dotted lines.  See TMEP §1202.02(c)(i)(A).  Elements of a mark that are functional are required to be shown in broken or dotted lines.  See 37 C.F.R. §2.52(b)(4); In re Water Gremlin Co., 635 F.2d 841, 844, 208 USPQ 89, 91 (C.C.P.A. 1980); In re Heatcon, Inc., 116 USPQ2d 1366, 1379-80 (TTAB 2015); TMEP §1202.02(c)(i)(A). 

 

“Functional matter cannot be protected as a trademark.”  TMEP §1202.02(a)(iii)(A); see 15 U.S.C. §§1052(e)(5), (f), 1091(c), 1064(3), 1115(b)(8).  A feature is functional as a matter of law 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); TMEP §1202.02(a)(iii)(A).

 

In the present case, the following elements are functional:  (1) the hanger hole, (2) the outside border of the packaging, and (3) the polygon with curved side (which appears in the specimen as cardboard/paper raised above and securing the product).  The attached Internet evidence shows that these elements are functional because they are commonly used in the packaging of goods classified in Class 9.  See 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).

 

Therefore, applicant must provide (1) a new drawing of the mark showing the functional elements in broken or dotted lines, and (2) an amended mark description that references the matter in broken or dotted lines and indicates such matter is not claimed as part of the mark.  See TMEP §1202.02(c)(i)(A), (c)(ii).  Applicant must provide the amended drawing regardless of whether the remaining portions of the mark are determined to be registrable.  TMEP §1202.02(c)(i)(A).

 

After applicant has amended the mark drawing as described above, the following description is suggested, if accurate: 

 

            The mark consists of a two-dimensional design shown on the front of the backer card portion of blister packaging, comprised of straight horizontal lines, straight vertical lines, a diagonal curved line, triangles with curved sides, quadrilaterals with curved sides, and polygons with curved sides. The dotted lines around the edge of the packaging, the hanger hole punched in the top of the packaging, and the polygon with curved side are provided to show placement of the mark and are not claimed as part of the mark.

 

See TMEP §1202.02(c)(ii).

 

CLARIFICATION REQUIRED REGARDING WHETHER THE APPLIED-FOR MARK IS TWO-DIMENSIONAL OR THREE-DIMENSIONAL

 

The drawing shows a two-dimensional image; however it is not clear from the record whether applicant is applying for (1) a two-dimensional design mark that is not trade dress; or (2) a three-dimensional mark that is trade dress for product design (i.e., the configuration or shape of the goods themselves), product packaging (i.e., the container in which the goods are sold), or a specific design feature of the product design or packaging.  Thus, applicant must clarify whether the applied-for mark is intended to be a two-dimensional design or a three-dimensional configuration mark.  See 37 C.F.R. §2.61(b); TMEP §1202.02(c)(i)-(c)(ii).

 

If applicant is applying for a two-dimensional design mark, applicant must clarify so for the record, and may amend the description accordingly.  See 37 C.F.R. §2.61(b); TMEP §1202.02(c)(i)-(c)(ii).

 

If applicant is applying for a three-dimensional configuration mark that is trade dress, applicant must amend the description to provide a clear and concise description of the mark that does the following:

 

(1)        Indicates the mark is a three-dimensional configuration of the product design or packaging, or of a specific design feature of the product design 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). 

 

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.

 

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).

 

AMENDMENT OF IDENTIFICATION OF GOODS REQUIRED

 

The identification of goods in International Class 9 must be clarified because the wording “Smoke alarms, carbon monoxide alarms, combination smoke and carbon monoxide alarms” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the goods is unclear. Although the wording “smoke alarms” is sufficiently definite, the wording “carbon monoxide alarms, combination smoke and carbon monoxide alarms” is not. Applicant must specify the common commercial name for these goods, such as safety sensors.

 

Specific guidance for all requirements has been provided below.

 

Applicant may adopt the following wording, if accurate:

 

Class 9 –         {Specify common commercial name for the goods, e.g., Safety sensors}, namely, smoke alarms, carbon monoxide alarms, and combination smoke and carbon monoxide alarms

 

Stylized wording indicates changes.

 

These suggestions are merely illustrative, not exhaustive of all the types of goods and proper classifications thereof which applicant might have intended to identify. These suggestions are based upon the examining attorney’s review of the application and determination of some of the goods applicant is most likely to offer. If applicant intended to identify goods other than those suggested above, applicant must so specify and classify these goods accordingly.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  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.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@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 September 06, 2019 for

U.S. Trademark Application Serial No. 88461923

 

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. 

 

 

/Dana Dickson/

Dana Dickson

Examining Attorney

Law Office 113

571.270.7552

Dana.Dickson@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 September 06, 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.”