To: | Vans, Inc. (trademarks@sandsip.com) |
Subject: | U.S. Trademark Application Serial No. 90326832 - VANS - 990.448.11 |
Sent: | March 22, 2021 03:00:14 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90326832
Mark: VANS
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Correspondence Address: |
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Applicant: Vans, Inc.
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Reference/Docket No. 990.448.11
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.
INTRODUCTION
SEARCH OF USPTO DATABASE OF MARKS
SECTIONS 1, 2, AND 45 REFUSAL – NON-DISTINCTIVE FEATURES OF PRODUCT DESIGN
Registration is refused because the applied-for mark consists of a non-distinctive product design or non-distinctive 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), (d).
Specifically, applicant applied to register the mark "VANS" & Design as a three-dimensional product label, which is part of the product design. A product design can never be inherently distinctive as a matter of law; consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. at 212-13, 54 USPQ2d at 1068-69; In re Slokevage, 441 F.3d at 962, 78 USPQ2d at 1399. Thus, consumer predisposition to equate a product design with its source does not exist. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. at 213, 54 USPQ2d at 1069.
In response to this refusal, applicant may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use if applicant can establish that, as a result of applicant’s use of the same mark on other goods, the mark has become distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a).
The following two requirements must be satisfied to claim acquired distinctiveness for a mark in an intent-to-use application:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods; and
(2) Applicant must show sufficient relatedness of the goods in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
As an alternative to claiming acquired distinctiveness, applicant may amend the application to the Supplemental Register after timely filing an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88. Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§1102.03, 1202.02(b)(i). When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for an amendment to allege use or 37 C.F.R. §2.88(c) for a statement of use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.
RESPONSE GUIDELINES
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
If applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.
Matthew Howell
/Matthew Howell/
Examining Attorney
Trademark Law Office 123
(571)270-0992
matthew.howell@uspto.gov
RESPONSE GUIDANCE