Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 08, 2020

 

 

 

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.  

 

 

 

INTRODUCTION:

 

The Office is in receipt of applicant’s incoming communication dated Dec. 17, 2019. 

 

The request for more information requirement is partially satisfied.  Applicant did not answer questions 7-12 individually.     

 

The refusal under Trademark Act Section 2(e)(5) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(5); 37 C.F.R. §2.63(b). 

 

In addition, the following requirements are now made FINAL: applicant must answer questions 7-12 individually in the request for more information requirement (which are now renumbered in this Final Office Action).  See 37 C.F.R. §2.63(b).

 

FUNCTIONALITY FINAL 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 prior office action 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 prior office action 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 prior office action 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 prior office action 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. 

 

Applicant’s submitted third party registrations do not overcome this refusal.  Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).  Moreover, none of the third party registrations are for pump and suction-like products. 

 

A utility patent claiming the design features at issue is strong evidence that those features are functional.  TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001); In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); see TMEP §1202.02(a)(iv), (a)(v)(A). 

 

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.

 

A utility patent claiming the design features at issue is strong evidence that those features are functional.  TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30, 58 USPQ2d 1001, 1005 (2001); In re Becton, Dickinson & Co., 675 F.3d 1368, 1375, 102 USPQ2d 1372, 1377 (Fed. Cir. 2012); see TMEP §1202.02(a)(iv), (a)(v)(A).  However, a patent need not claim the exact configuration for which trademark protection is sought to prove functionality.  See In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377 (citing TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. at 32-33, 34-35, 58 USPQ2d at 1005).  “[S]tatements in a patent’s specification illuminating the purpose served by a design may constitute equally strong evidence of functionality.”  In re Loggerhead Tools, LLC, 119 USPQ2d 1429, 1432 (TTAB 2016) (quoting In re Becton, Dickinson & Co., 675 F.3d at 1375, 102 USPQ2d at 1377).

 

Statements in a utility patent application, the prosecution history of that application, or an expired patent which refer to utilitarian advantages of the design features at issue are persuasive evidence of functionality.  See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29-30, 32, 58 USPQ2d 1001, 1005-06 (2001); Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1279, 61 USPQ2d 1422, 1429 (Fed. Cir. 2002); Poly-America, LP v. Ill. Tool Works, Inc., 124 USPQ2d 1508, 1517-19 (TTAB 2017); TMEP §1202.02(a)(v)(A).  The evidentiary significance of such statements is not affected by whether the patent application is pending or abandoned, whether a utility patent issued from the application, or whether the resulting patent has expired.  See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. at 29-30, 58 USPQ2d at 1005; Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d at 1279, 61 USPQ2d at 1429.

 

When functionality is found based on other considerations, there is “no need to consider the [third Morton-Norwich factor regarding] availability of alternative designs, because the feature cannot be given trade dress protection merely because there are alternative designs available.”  In re Becton, Dickinson & Co., 675 F.3d 1368, 1376, 102 USPQ2d 1372, 1378 (Fed. Cir. 2012) (quoting Valu Eng’g Inc. v. Rexnord Corp., 278 F.3d 1268, 1276, 61 USPQ2d 1422, 1427 (Fed. Cir. 2002)); TMEP §1202.02(a)(v)(C).  “The availability of alternative designs does not convert a functional design into a non-functional design.”  Kohler Co. v. Honda Giken Kogyo KK, 125 USPQ2d 1468, 1502 (TTAB 2017) (quoting Kistner Concrete Prods. Inc. v. Contech Arch Techs. Inc., 97 USPQ2d 1912 (TTAB 2011)).

 

REQUEST FOR MORE INFORMATION – FINAL REQUIREMENT:

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  Specifically, applicant must answer the following questions individually:

 

1.     What is the function of applicant’s plunger?  Please explain.

 

2.     What is the function of applicant’s flange?  Please explain.

 

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

 

4.     Why is the barrel shaped like a cylinder?  Please explain.

 

5.     What is the function of the tip?   Please explain.

 

6.     What is the function of the cup?  Please explain.  

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/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 January 08, 2020 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 January 08, 2020, 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.”