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:  March 23, 2021

 

 

This Office Action is in response to applicant’s correspondence dated 3/1/21.

 

The following requirement(s) have been satisfied and are now withdrawn: 1) Configuration Mark Description, and 2) Requirement for Information.

TMEP §714.04.

 

Applicant should note the following:

 

New Issue – Claim of Acquired Distinctiveness Not Acceptable

 

The evidence submitted by applicant to support its claim of acquired distinctiveness is insufficient.

 

An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f).  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01.  “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422. 

 

Allegations of sales and advertising expenditures do not per se establish that a term has acquired significance as a mark.  See TMEP §1212.06(b).  An applicant must also provide the actual advertising material so that the examining attorney may determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers.  TMEP §1212.06(b); see In re Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).

 

The ultimate test in determining acquisition of distinctiveness under Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source.  Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1856 (TTAB 2017) (citing In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985); In re LC Trademarks, Inc., 121 USPQ2d 1197, 1208 (TTAB 2016); In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1760-61 (TTAB 1991)); TMEP §1212.06(b).

 

Applicant provided evidence of high sales figures and significant advertising expenditures for applicant’s goods and/or services 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 and/or services, but not that relevant consumers view the matter as a mark for these goods and/or services.  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).  Furthermore, the evidence of its sales and advertising does not appear to be for the vehicle grilles, and instead, appears to be for the Ford Escape vehicle as a whole. 

 

Similarly, applicant’s length of use appears to be for the Ford Escape vehicle as a whole, not for a component part in the nature of an automobile grille.  Also, evidence of five years’ use considered alone is generally not sufficient to show acquired distinctiveness for nondistinctive product design marks.  E.g., In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984); In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017).

 

None of the evidence that applicant has provided points to or calls out the shape and pattern of the grille that applicant is claiming has acquired distinctiveness.  The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success in educating the public to associate the proposed mark with a single source.  In the present case, applicant has failed to provide any evidence enticing consumers to “look for” its product design.  See In re Chevron Intellectual Prop. Group LLC, 96 USPQ2d 2026, 2031 (TTAB 2010) (finding evidence of acquired distinctiveness deficient in part because of the lack of advertisements promoting recognition of pole spanner design as a service mark); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding absence of "look for" advertisements damaging to attempt to demonstrate acquired distinctiveness of proposed configuration mark); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1408 (TTAB 2009) (sustaining opposition on the ground that sound mark had not acquired distinctiveness in part because applicant failed to provide evidence corroborating that the mark was used in advertisements in such a way that it would be recognized as a source identifier for cellular telephones); In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008) (affirming refusal to register product configuration for spectacles and sunglasses, as the applicant had failed to prove acquired distinctiveness chiefly because of the "absence of evidence of the advertising and/or promotion by the applicant of the earpiece design as a trademark").  

 

Additionally, the attached evidence shows that the honeycomb grille pattern is common in the industry, and applicant does not have substantially exclusive use of this pattern. For instance, German Car Accessories markets a honeycomb grille for Audi vehicles.  Uyoyous marks a honeycomb mesh grille for vehicles.  Black Forest Industries features a honeycomb grille for VW vehicles.  300 Industries sells a honeycomb grille for Toyota vehicles.  Farrish Subaru markets honeycomb grilles for Subaru vehicles. Stohlman Subaru markets honeycomb grilles for Subaru vehicles.  LeithCars.com sells Toyota Tundra trucks with a honeycomb grille and center portion featuring the logo.  Based on the prevalence of this product design in the industry, applicant has not provided sufficient evidence to demonstrate that consumers would perceive its mark as a distinct product design.  For the foregoing reasons, the applicant’s claim of acquired distinctiveness is unacceptable. 

 

New Issue – Requirement for Information

 

To permit proper examination of the application, applicant must provide all the following information:

 

1)         Applicant notes that it has sales in the billions of dollars.  What is the sales number for the grilles specifically, apart from the vehicle as a whole?

 

2)         Applicant notes that it has spent tens of millions of dollars on advertising.  What is the advertising amount spent for the grilles specifically, apart from the vehicle as a whole?

 

3)         Applicant notes that it has sold over 1.1 million units bearing the mark.  What is the amount sold for the grilles specifically, apart from the vehicle as a whole?

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

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.

 

Nondistinctive Product Design

 

This refusal is continued.

 

 

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

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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 March 23, 2021 for

U.S. Trademark Application Serial No. 88939780

 

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. 

 

 

/Tejbir Singh/

Trademark Attorney

Law Office 106

571-272-5878

571-273-9106 (fax)

Tejbir.Singh@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 March 23, 2021, 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.”