To: | Vans, Inc. (trademarks@sandsip.com) |
Subject: | U.S. Trademark Application Serial No. 88590279 - 990.434.11 |
Sent: | October 29, 2019 10:16:11 AM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88590279
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Correspondence Address: |
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Applicant: Vans, Inc.
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Reference/Docket No. 990.434.11
Correspondence Email Address: |
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THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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: October 29, 2019
The referenced application has been reviewed by the assigned trademark examining attorney.
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).
However, applicant should note the following issues with this application:
(1) Registration is refused on the ground that the applied-for mark is being used in a merely ornamental manner and not a trademark manner;
(2) A new drawing of the mark with all unregistrable elements dotted out is required; and
(3) The description of the mark must be amended to accurately reflect the mark sought to be registered.
Applicant must respond timely and completely to these three issues. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTIONS 1, 2 & 45 – ORNAMENTAL USE IS NOT TRADEMARK USE
The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d at 1687 (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).
In this case, the submitted specimen shows a checkerboard pattern covering a side panel of a sneaker. Sneakers with decorative side panels are common in the footwear industry, as the attached internet evidence demonstrates. Moreover, as the attached registrations owned by applicant demonstrate, use of checkerboard patterns on footwear is not inherently distinctive because all of applicant’s prior registrations were registered only upon a showing of acquired distinctiveness under Trademark Act Section 2(f). See In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994); see Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Therefore, consumers would view the applied-for mark as a decorative or ornamental feature of the goods, rather than as a trademark to indicate the source of applicant’s goods and to distinguish them from others. As such, registration must be refused under Trademark Act Sections 1, 2, and 45 on the ground that the applied-for mark is not inherently distinctive.
Applicant may overcome this refusal by satisfying one of the following options:
(1) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(2) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
Please note that years of use alone is not sufficient to demonstrate acquired distinctiveness when the mark is being used in a merely ornamental manner. Concrete evidence that the proposed mark is perceived as a mark for the relevant goods is required to establish distinctiveness. TMEP §1202.03(d); see In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985).
(3) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
Please note that amending to an intent-to-use basis under Trademark Act Section 1(b) will not overcome this refusal because the ornamental nature of the goods is clearly apparent from the drawing and description of the mark. TMEP §1202.03(e).
NEW DRAWING REQUIRED
Here, the side panel of the sneaker upon which the mark is displayed is shown in a solid line, which indicates that applicant is claiming the configuration of the sneaker side panel as part of the mark. However, as the previously cited evidence of other sneakers demonstrated, the side panel itself is nondistinctive and incapable of functioning as a mark because this element is the same or substantially similar to the designs of competitors’ products. As such, applicant must submit a new drawing that clearly shows the outline of the upper in broken or dotted lines.
While applicant must make this change to the drawing, applicant may not make any other changes or amendments that would materially alter the applied-for mark on the drawing. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. For more information about changes to the mark in the drawing after the application filing date, see the Drawing webpage.
DESCRIPTION OF MARK AMENDMENT REQUIRED
The following description is suggested, if accurate:
The mark consists of a checkerboard pattern applied to the side panel of a high top sneaker. The matter shown in broken or dotted lines is not claimed as part of the mark and serves only to indicate placement of the mark on the goods.
RESPONSE REQUIRED
For this application to proceed, applicant must:
(1) Respond to the Sections 1, 2, and 45 refusal;
(2) Submit a new drawing of the mark with the panel shown in a dotted outline; and
(3) Amend the description of the mark.
Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Click to file a response to this non-final Office action
/Andrew Leaser/
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@uspto.gov
RESPONSE GUIDANCE
Missing the response deadline to this letter will cause the application to abandon. A response must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.
Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.
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.