United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88599659
Mark: USA
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Correspondence Address: 12526 HIGH BLUFF DRIVE, SUITE 300
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Applicant: TRUE POSITION TOOLS, LLC
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Reference/Docket No. 3674-02
Correspondence Email Address: |
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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: December 13, 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).
Refusal Under Section 2(e)(5) – Functionality
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).
(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).
The proposed mark is the configuration of a “jig” or “drill guide”. The described feature of this mark, namely, a “T-Square” with center bushing and sliding drill guides, is functional for the goods because it consists of utilitarian elements that allow for the precise drilling of holes.
On its website, applicant touts the utilitarian advantages of this drill guide that it “is calibrated to +/- 0.001” square” for precision and includes a “large stop”, “center notch on front/back for drawer fronts”, “sliding end stop”, “sliding drill guide”, “hardened aluminum T-Square”, “English/Metric ruler”, as well as a thumb screw and steel bushings” all to “eliminate drilling mistakes”. See screenshots of applicant’s and retailer’s websites attached.
Further, the examining attorney has attached a copy of a utility patent related to the applicant and of the mark at issue. See attached copy from http://patentimages.storage.googleapis.com/f5/22/e0/de80a6cfdf6f16/US5807036.pdf.
In this case, the utility patent claims the design features at issue. Accordingly, the trademark examining attorney has established a prima facie case that the applied-for mark is functional and the burden of proof now shifts to applicant to show nonfunctionality. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. at 29-30, 58 USPQ2d at 1005; In re Howard Leight Indus., LLC, 80 USPQ2d 1507, 1515 (TTAB 2006); see TMEP §1202.02(a)(iv), (a)(v)(A). Applicant must meet this burden by providing “competent evidence” of the applied-for mark’s nonfunctionality. See In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1376; In re R.M. Smith, Inc., 734 F.2d 1482, 1484, 222 USPQ 1, 3 (Fed. Cir. 1984); TMEP §1202.02(a)(iv). The “competent evidence” standard requires proof by a preponderance of the evidence. In re Becton, Dickinson & Co., 675 F.3d at 1374, 102 USPQ2d at 1377.
Accordingly, registration is properly refused under Section 2(e)(5) of the Trademark Act because the propose mark appears to be functional for the identified goods.
Applicant should note the following additional ground for refusal.
Refusal Under Section 1, 2, 45 – Nondistinctive Configuration of Product DESIGN
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 this case, the applied-for mark is not inherently distinctive because the product design is a common basic shape or design of a drill guide and is not unique or unusual in the field in which it is used. See the screenshots attached from the following websites showing similar drill guides for sale.
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)).
Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s goods for five years prior to the date on which the claim is made. See 15 U.S.C. §1052(f). However, as the attached evidence demonstrates, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is a common product design in applicant’s industry. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013); TMEP §1212.05(a). Applicant may respond by providing additional evidence of acquired distinctiveness.
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).
Requirement for Information About the Mark
(1) A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications. Applicant must also provide copies of the patent and/or patent application documentation.
(2) Advertising, promotional, and/or explanatory materials concerning the applied-for configuration mark, particularly materials specifically related to the design feature(s) embodied in the applied-for mark.
(3) A written explanation and any evidence as to whether there are alternative designs available for the feature(s) embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive. Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.
(4) A written statement as to whether the product design or packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container. Applicant must also provide information regarding the method and/or cost of manufacture relating to applicant’s goods.
(5) Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.
See 37 C.F.R. §2.61(b); 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) et seq.
Any document filed with the USPTO becomes part of the official public application record and will not be returned or removed. TMEP §§404, 814. If any of the information requested above is confidential or applicant does not want such information to become part of the public record for a valid reason, applicant should submit an explanation of those circumstances or redact confidential portions prior to submission. See TMEP §814. Applicants are not required to submit confidential information into the record; a written explanation or summary of that information may suffice. Id.
Regarding the requirement for this information, the Trademark Trial and Appeal Board and its appeals court have recognized that the necessary technical information for ex parte determinations as to functionality is usually more readily available to an applicant, and thus an applicant is normally the source of most of the evidence in these cases. In re Teledyne Indus. Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); see In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (holding registration was properly refused where applicant failed to comply with trademark examining attorney’s request for copies of patent applications and other patent information); TMEP §1202.02(a)(v).
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
Requirement for Acceptable Drawing and Mark Description
The drawing of applicant’s applied-for product design mark is not acceptable because it depicts in solid lines nondistinctive elements that are incapable of functioning as a mark. See TMEP §1202.02(c)(i)(B); cf. TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983). Generally, nondistinctive elements of a product design mark that are incapable of functioning as a mark are unregistrable and thus are required to be shown in broken or dotted lines on the drawing. See 15 U.S.C. §§1051-1052, 1127; 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); TMEP §1202.02(c)(i)(B).
Specifically, the following features are nondistinctive and incapable of functioning as a mark: all outlines of the jig itself. These features are nondistinctive and do not function as a mark because such elements are the same or substantially similar to the designs of competitors’ products.
Therefore, applicant must provide (1) a new drawing of the mark showing the nondistinctive 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)(B), (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)(B).
Applicant may submit the following mark description, if accurate:
The mark consists of a three-dimensional configuration of a drill guide having a T-square with a center notch with one adjustable stop on the center notch, one adjustable end stop and two adjustable drill guides on the perpendicular bar. The broken lines depicting all of the T-square as well as the adjustable end stops and guides indicate placement of the mark on the goods and are not part of the mark.
See TMEP §1202.02(c)(ii).
Here, applicant has dotted out stylized letters “TP” next to the wording “True Position Tools Hardware”. It is unclear if applicant intends to claim this capable wording.
Requirement for Disclaimer
In this case, applicant must disclaim the wording “Position Tools Hardware” and “USA” because it is not inherently distinctive. These unregistrable term(s) are at best merely descriptive and primarily geographically descriptive of applicant’s goods.
The nondistinctive wording “POSITION TOOLS HARDWARE” merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012).
The attached evidence from Merriam-Webster shows the wording POSITION to mean “an act of placing or arranging”, the wording TOOL to refer to “a handheld device that aids in accomplishing a task”, and the wording HARDWARE being commonly used in connection with similar goods to mean “major items of equipment or their components used for a particular purpose”. Therefore, this wording merely describes a piece of equipment that is handheld and used for the act of placing or arranging.
In addition, the nondistinctive wording “USA” is primarily geographically descriptive of the origin of applicant’s goods. See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).
The attached evidence from Merriam-Webster shows that USA is a generally known geographic place or location. See TMEP §§1210.02 et seq. The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address. See TMEP §1210.03. Because the goods originate in this place or location, a public association of the goods with the place is presumed. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “POSITION TOOLS HARDWARE” and “USA” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Jeanie H. Lee/
Examining Attorney
Law Office 105
571-272-6110
jeanie.lee@uspto.gov
RESPONSE GUIDANCE
