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:  January 13, 2020

 

 

This Office action is supplemental to and supersedes the previous Office action issued on December 10, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a refusal of registration relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the applicant’s claim of five year’s use for acquired distinctiveness is insufficient.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issues raised in this Office action, in addition to the issues raised in the Office action dated December 10, 2019.  The issues raised in the previous December 10, 2019 Office action are as follow and are maintained:  amended mark description required. 

 

Further, the following requirement has been satisfied:  definite identification provided.  See TMEP §713.02.

 

The following is a SUMMARY OF ISSUES that applicant must address:

• NEW ISSUE:  Section 2(f) Claim of Acquired Distinctiveness Insufficient
• CONTINUED AND MAINTAINED: Amended Mark Description Required

 

Applicant must respond to all issues raised in this Office action and the previous December 10, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

Section 2(f) Claim of Acquired Distinctiveness Not Accepted

Registration is refused because the applied-for mark consists of a nondistinctive product design or nondistinctive features of a product design that is not registrable on the Principal Register without sufficient proof of acquired distinctiveness.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210, 213-14, 54 USPQ2d 1065, 1068-69 (2000); In re Slokevage, 441 F.3d 957, 961, 78 USPQ2d 1395, 1398 (Fed. Cir. 2006); see TMEP §1202.02(b)(i).

In this case, applicant has submitted evidence of advertising materials which extol specific utilitarian advantage of the applied-for product design.  Here, the first three, fifth, and sixth documents submitted as evidence are company-generated press releases.  However, applicant’s and competitor’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, 1373-75 (TTAB 2015); In re Van Valkenburgh, 97 USPQ2d 1757, 1763 (TTAB 2011).  Moreover, applicant has also provided three company-generated marketing materials describing the efficacy of the product.  However, this material also does not support an independently generated public association with the design of the goods and the mark in the application.  Additionally, annual reports and advertising materials that show pictures of the products do not prove that the public has come to associate this shape with Applicant because it does not show any measure of how the public understands that the shape identifies Applicant’s goods.

Accordingly, the evidence does not show that the relevant consumer understands the claimed ornamentation of the doors of Applicant’s product to indicate the source of Applicant’s goods. “[M]ere [sales volume] figures demonstrating successful product sales are not probative of purchaser recognition of a configuration as an indication of source.” In re Koninklijke Philips Elecs. N.V. , 112 USPQ2d 1177, 1187 (TTAB 2014) (quoting Stuart Spector Designs Ltd. v. Fender Musical Instruments , 94 USPQ2d 1549, 1572 (TTAB 2009)). Applicant’s extensive 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 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).

Evidence that Applicant has acquired distinctiveness could consist of affidavits from customers asserting recognition of the product configuration as the source identifier, consumer studies linking the configuration to the source, and survey evidence, market research and consumer reaction studies.

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

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

AMENDED MARK DESCRIPTION REQUIRED

 

Applicant must submit an amended description of the mark because the current one uses broad, vague language that does not accurately describe the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02.  In this case, the description is vague because it does not specify whether the images covered in dotted lines indicate placement of the mark on the goods and whether they are a part of the mark. 

 

The following description is suggested, if accurate:  The mark consists of 1) the U-design identified in solid lines on the drawing of the three dimensional THERMO KING unit, which originates from the side vents of the THERMO KING unit and traverses across the unit doors and 2) the placement of the “THERMO KING TK” mark and logo on the front center of the three dimensional THERMO KING unit. The dotted lines outlined in the drawing indicate placement of the mark on the goods and are not claimed as features of the mark for the purposes of this application.

 

Response guidelines.  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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.    

 

 

/Joseph P. McCarthy/

Trademark Examining Attorney

Law Office 127

Phone: (571) 272-0458

joseph.mccarthy@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 13, 2020 for

U.S. Trademark Application Serial No. 88647949

 

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. 

 

 

/Joseph P. McCarthy/

Trademark Examining Attorney

Law Office 127

Phone: (571) 272-0458

joseph.mccarthy@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 13, 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.”