| To: | Venus et Fleur, LLC (wconnelly@mlgiplaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88601964 - VEF005TD/1-2 |
| Sent: | December 18, 2019 11:51:07 AM |
| Sent As: | ecom103@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
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. 88601964
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Correspondence Address: |
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Applicant: Venus et Fleur, LLC
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Reference/Docket No. VEF005TD/1-2
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 18, 2019
Introduction:
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:
Sections 1, 2, and 45 Refusal – Generic 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 evidence shows that the applied-for packaging is common or basic in the industry for such packaging and consumers are accustomed to seeing similar packaging from a variety of providers. The trademark examining attorney has attached Internet evidence showing the common basic shape used by competitors for their own flowers. Specifically:
Thus, is incapable of indicating applicant as the source of these particular cut flower goods.
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).
Refusal in the Alternative – Non-distinct Product Packaging:
In the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then registration is refused because the applied-for mark consists of a non-distinctive configuration of packaging for the goods. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127.
The following factors are considered when determining the inherent distinctiveness of configuration marks comprising product packaging:
1) Whether the applied-for mark is a “common” basic shape or design;
2) Whether the applied-for mark is unique or unusual in the field in which it is used;
3) Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; and
4) Whether the applied-for mark is incapable of creating a commercial impression distinct from the accompanying words
In re Pacer Tech., 338 F.3d 1348, 1350, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003) (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977)); TMEP §1202.02(b)(ii). Any one of these factors, by itself, may be determinative as to whether the mark is inherently distinctive. See In re Chippendales USA, Inc., 622 F.3d 1346, 1355, 96 USPQ2d 1681, 1687 (Fed. Cir. 2010); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2028 (TTAB 2010).
The generic refusal section above and the attached evidence shows that the mark sought to be registered consists of a non-distinctive configuration of packaging for the goods. Thus, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then registration is refused because the applied-for mark consists of a non-distinctive configuration of packaging for the goods
In addition, applicant’s claim of acquired distinctiveness in the application is a concession that the mark sought to be registered consists of a non-distinctive configuration of packaging for the goods. 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); 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)).
Acquired Distinctiveness Evidence Insufficient:
Applicant asserted in the application a claim of acquired distinctiveness under Section 2(f). See 15 U.S.C. §1052(f). The following evidence was provided in support of such claim: expenditures in promoting and advertising its goods and related entities and unsolicited media coverage. See 37 C.F.R. §2.41.
If the applied-for mark is ultimately determined to be merely descriptive and not generic, the Section 2(f) evidence is insufficient to show acquired distinctiveness. Specifically, applicant made a claim of acquired distinctiveness based on expenditures in promoting and advertising its goods. Applicant provided evidence of high sales figures and significant advertising expenditures for applicant’s goods to support the claim that the applied-for mark acquired distinctiveness under Trademark Act Section 2(f); however, this evidence is not dispositive of applicant’s claim. See 15 U.S.C. §1052(f). Applicant’s extensive sales and promotion may demonstrate the commercial success of applicant’s goods, but not that relevant consumers view the matter as a mark for these goods. See In re Boston Beer Co., 198 F.3d 1370, 1371-73, 53 USPQ2d 1056, 1057-58 (Fed. Cir. 1999); In re Busch Entm’t Corp., 60 USPQ2d 1130, 1132-34 (TTAB 2000).
Similarly, applicant’s advertising expenditures are merely indicative of its efforts to develop distinctiveness; not evidence that the mark has acquired distinctiveness. See In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1757-58 (TTAB 1991).
Additionally, applicant made a claim of acquired distinctiveness based on unsolicited media coverage. However, the evidence applicant has submitted to support a claim of acquired distinctiveness is insufficient because the unsolicited media coverage does not show that the relevant public views the packaging as distinct but, instead, shows that the underlying cut flowers are the focal point of these articles.
Furthermore, applicant’s claim is based on “substantially exclusive” and continuous use in commerce. However, as the attached evidence referenced in the above generic refusal demonstrates, there are multiple third parties using similar product packaging for cut flowers. See attached Internet evidence. This significant amount of third party use is evidence that applicant does not have substantially exclusive use of the applied-for product packaging. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1403, 222 USPQ 939, 940-41 (Fed. Cir. 1984) ("When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances."); Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d, 1844, 1853 (TTAB 2017) (finding that "the nature and number of third-party descriptive uses in the record indicate that use by applicant [of MEDICAL EXTRUSION TECHNOLOGIES] has not been ‘substantially exclusive’ as is required for a showing of acquired distinctiveness under Section 2(f)").
The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2030 (TTAB 2010); TMEP §1212.01. An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence. Royal Crown Co. v. Coca-Cola Co., 892 F.3d at 1365, 127 USPQ2d at 1045 (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).
For the foregoing reasons, applicant’s claim of acquired distinctiveness is insufficient.
Amended Drawing and Mark Description Required:
Specifically, the following features are non-distinctive and incapable of functioning as a mark: the pictorial depiction of the cut flowers. These features are non-distinctive and do not function as a mark because such elements are the pictorial depiction of the underlying applied-for goods, cut flowers.
Therefore, applicant must provide (1) a new drawing of the mark showing the non-distinctive 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 product packaging comprising a cube shaped box having a lid on the bottom. The broken lines depicting the underlying goods of cut flowers and the strap ends indicate placement of the mark on the goods and are not part of the mark.
See TMEP §1202.02(c)(ii).
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.
Assistance or Response Options:
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.
/Anna Oakes/
Anna J. Oakes
Examining Attorney
Law Office 103
(571) 272-2569
aoakes1@uspto.gov
RESPONSE GUIDANCE
