HM Electronics applied for a 3D Headset Design described as, “a portion of a headset. The broken lines depicting elements of the headset indicate placement of the mark on the goods, but are not part of the mark as shown” and submitted the drawing and specimen below:
The USPTO assigned the design code – 16.01.07 – which covers headphones, headsets, microphones. A search under this design code reveals:
The Examining Attorney issued an office action with several objections: (i) non-distinctive product design and (ii) functionality; as well as drawing and description clarification. HM Electronics responded and the non-distinctive product design was withdrawn but the other issues remained and a second office action issued. The remaining issues were resolved and the application was approved for publication.
The mark description was modified to read: “[t]he elements of the mark are the button overlay, including the overlay shape, button openings and button opening layout, the casing shape, including the generally circular case and the curved upper part and the boom connector, including the rounded disk and cylindrical protrusion. The broken lines depicting the over-the-head band, the ear cushion, the buttons, and the boom microphone indicate placement of the mark on the goods and are not part of the mark.” Along with a revised drawing:
However, the application was withdrawn from publication on the grounds that the acquired distinctiveness claim was less than 5 years. This seems to be a new trend with the USPTO. In the past, the 5 year prima facie rule could be bypassed with additional evidence. That is, an applicant could show acquired distinctiveness in <5 years with an abundance of evidence. But recently, applications with < 5 years, are being returned to the Examining Attorney for further analysis.
In this case two more office actions issued with the Examining Attorney stating, “[i]n the present case, applicant’s evidence consists of the following nearly 5 years use, declarations, sales and advertising figures, advertising materials and consumer recognition reports. This evidence is insufficient to show acquired distinctiveness of the proposed mark because of the limited amount of years in use (less than five years). Additionally, the marketing and advertising does not specifically point to or reference the ‘distinctive’ flower design, nor does it feature ‘look for’ marketing evidence that touts the flower design. Additionally, the consumer recognition evidence only consists of 1 affidavit from an actual customer (McDonald’s Manager), which is not sufficient to show consumer recognition to establish acquired distinctiveness.”
HM Electronics continued to provide additional declarations and information as requested from the Examining Attorney. In its last submission, several of the advertisements for the 3D Headset Design contained the requisite “look for” advertising at the bottom of the page, i.e., “EOS | HD = Look for the unique earpiece design”. In many applications and in this case, evidence of the “look for” advertisement can be the “key” tipping point for demonstrating that the “mark” does function as a source identifier.
After submission of the additional information, the application was approved for a second time and a registration (U.S. Reg. No. 5144104) issued February 21, 2017.