CROCS applied for a 3D Upper Shoe Design described as a 3D configuration of an “outside design of an upper for a shoe, the upper having a gentle curving outline, a ridge along the upper opening perimeter, a pattern of 13 round holes on the horizontal portion of the upper of the shoe, a first strip along the vertical portion of the upper having a pattern of 7 trapezoidal openings, and second strip paralleling the first strip and separated from it by a divider and ridge, the second strip circumnavigating the shoe and gently rising toward the heel, and the relative position of these elements to each other. The broken lines show the position of the mark and are not claimed as part of the mark” with a drawing as follows:
CROCS submitted 16 examples of the mark in .wav format. Several excerpts from the videos show the mark in different configurations such as:
The USPTO assigned the design code: “09.07.05 – Other men’s shoes” to the 3D Upper Shoe Design. A search for marks coded with this design code revealed the following shoe designs:
The Examining Attorney also searched under the above design code as well as 4 additional codes (i) 09.07.04 (Wooden shoes (clogs), sandals, shoes without heels, including bedroom slippers, moccasins, ballet shoes and rubbers):
CROCS design is above, left.
(ii) 09.07.06 (Other women’s shoes):
(iii) 09.07.08 (Parts of footwear):
And (iv) 09.07.25 (Other stylized footwear):
The Examining Attorney issued an office action with two technical requests: (i) amended drawing and; (ii) description of the mark, stating that, “the overall clog shape of the proposed configuration mark and the presence of a defined midsole and topline collar appear to represent generic elements commonly present in waterproof strap clogs. These features are nondistinctive and do not function as a mark because such elements are so common in the industry for such products and are the same or substantially similar to the designs of competitors’ products such that consumers are accustomed to seeing such elements on similar products. As such, applicant’s request to exclude other shoe manufacturers from employing such ubiquitous design elements cannot be granted.” With this in mind, the Examining Attorney suggested a revised description of the mark as follows:
“The mark consists of a … [3D] configuration of the outside design of an upper for a shoe comprising a pattern of 13 round holes on the horizontal portion of the upper of the shoe and a textured strip along the vertical portion of the upper having a pattern of 7 trapezoidal openings. The broken lines show the position of the mark and are not claimed as part of the mark.”
With updates to the drawing:
Original Drawing New Drawing
Once the description and drawing were updated, the application was approved and a registration (U.S. Reg. No. 5149328) issued February 28, 2017.