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:  November 13, 2019

 

 

 

 

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.  

 

 

 

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.

 

NO CONFLICTING 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).

 

FUNCTIONALITY REFUSAL:

 

Registration is refused because the applied-for mark, which consists of a three-dimensional configuration of the goods, appears to be a functional design for such goods.  Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5); see TMEP §1202.02(a)-(a)(ii).  A feature is functional 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) (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995)); Inwood Labs., Inc., v. Ives Labs., Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982); TMEP §1202.02(a)(iii)(A).

 

Determining functionality normally involves consideration of one or more of the following factors, commonly known as the “Morton-Norwich factors”:

 

(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).

 

Applicant’s mark is the following:

 

• “The mark consists of a three-dimensional configuration of the outer portion of a wound suction apparatus with an overall cylindrical shape. The apparatus also features a suction cup tip with squared edges on one end, with two rounded protrusions and a movable pump at the other end. The pump widens towards the far end.”

 

Applicant’s own advertising that extols specific utilitarian advantages of the applied-for product design or product packaging is strong evidence that the matter sought to be registered is functional.  TMEP §1202.02(a)(v)(B); see, e.g., In re Becton, Dickinson & Co., 675 F.3d 1368, 1375-76, 102 USPQ2d 1372, 1377-78 (Fed. Cir. 2012); In re Heatcon, Inc., 116 USPQ2d 1366, 1373 (TTAB 2015).

 

Please note the following statements from applicant’s website:

 

1. “The double chamber vacuum pump action is designed to provide powerful suction for the extraction of venoms and poisons without the need for scalpel blades or knives used in other kits.”

 

2. “Because it’s a pump — not a syringe — it’s easy to use with one hand.”

 

3. “Select which of the four plastic cups best covers the bitten area, attach it to the pump, then simply push the plunger with your thumb.”

 

4. “The ONLY suction device proven to remove snake venom”. 

 

5. “An easy to use suction pump which can safely and quickly remove significant quantities of venom (poison) or irritants from bites or stings.”

 

6. “Best results occur when applying the pump quickly before the fluids enter the circulatory system.”

 

7. “Sawyer Extractor pump”

 

8. “Lightweight, small and reusable vacuum pump draws venom from below your skin in 1 quick motion, meaning the pump is really easy to use with 1 hand”

 

9. “We’ve included 4 different sized plastic cups for use and effective suction on a variety of sting or bite sizes”

 

See attachments from <http://sawyer.com/products/extractor-pump-kit/>.

 

Applicant’s online video states the following:

 

1. “. . . the pu[m]p acts as a vacuum which provides the most powerful suction available to remove venom from the body by sucking it out the same cavity through which it was injected . . . .”

 

2. “. . . select the suitable size suction cup pull the trigger to its full extent and place a suction cup over the bite of the stain using your thumb press the plunger all the way in until you feel the suction and let the pump remove the poison this should take 60 to 90 seconds for insect bites pull the plunger out to gently release a vacuum”

 

Id. 

 

An online video states the following about applicant’s product:

 

1. “. . . actually use it with just one hand by opening up that plunger and applying that pressure . . . .” 

 

2. “. . . pick the appropriately sized cup apply that cup to the nose of the extractor . . . .” 

 

3. “. . . put it down on the appropriate area and push . . . .”

 

4. “. . . once you push that plunger down it will draw suction out pulling out any poisons . . . .”

 

See attachments from <http://www.youtube.com/watch?v=n2B6bbEtnEc>.

 

Another online video states:

 

1. “. . . a vacuum pump that draws venom from below the skin in one quick motion”

 

2. “. . . cups for use and effective suction on a variety of stings”

 

See attachments from <http://www.youtube.com/watch?v=Dq0ioI9nQW8>.

 

A third online video states:

 

1. “. . . you literally just go like this just push it in . . . .”

 

See attachments from <http://www.youtube.com/watch?v=hrPeGDFEsd8>.

 

The above evidence clearly shows that the applied-for mark is functional. 

 

The plunger is functional because it is used to expel gas to create a vacuum. 

 

The flange is functional because it allows the user’s index and middle finger to stabilize the apparatus and create leverage to push down the plunger with the thumb. 

 

The barrel/cylindrical body is functional because it allows the plunger to move smoothly and efficiently to expel gas and create a vacuum. 

 

The tip is functional because it allows a cup to be securely attached or easily removed from the apparatus. 

 

The cup is functional because it is placed over the bite site and creates a vacuum in that targeted area. 

 

RESPONSE:

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

INFORMATION REQUEST:

 

Applicant must provide the following information and documentation regarding the applied-for three-dimensional configuration 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)       Please submit the instruction materials that are sold with the Sawyer Extrator Pump Kit. 

 

(6)    Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.

 

            (7)     What is the function of applicant’s plunger?  Please explain.

 

            (8)     What is the function of applicant’s flange?  Please explain.

 

            (9)     What is the function of applicant’s barrel/cylindrical body?  Please explain.

 

            (10)   Why is the barrel shaped like a cylinder?  Please explain.

 

            (11)   What is the function of the tip?   Please explain.

 

            (12)  What is the function of the cup?  Please explain.   

 

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.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Simon Teng/

Simon Teng

Trademark Examining Attorney

Law Office 105

(571) 272-4930

simon.teng@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 November 13, 2019 for

U.S. Trademark Application Serial No. 88603599

 

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. 

 

 

/Simon Teng/

Simon Teng

Trademark Examining Attorney

Law Office 105

(571) 272-4930

simon.teng@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 November 13, 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.”