To: | Thermo King Corporation (mail@iphorgan.com) |
Subject: | U.S. Trademark Application Serial No. 88647949 - THERMO KING TK - IRC 9332 US |
Sent: | January 13, 2020 06:13:25 AM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88647949
Mark: THERMO KING TK
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Correspondence Address: 195 ARLINGTON HEIGHTS RD, STE 125
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Applicant: Thermo King Corporation
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Reference/Docket No. IRC 9332 US
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: 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:
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.
AMENDED MARK DESCRIPTION REQUIRED
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.
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