BAUER PRODUCTS, INC. (BAUER) REGISTERS TWO 3D “KEY” DESIGNS

Bauer applied for two 3D key designs, one of “an oval-shaped key bow with an offset key shank extending from one side of the key bow and a hole through the opposite side of the key bow” as shown below:

   

 

And another described as a “plastic, oval-shaped key bow overlayment of a slightly inclined and elongated oval key bow of a metal key with a slightly offset key shank extending from the key bow and an elongated hole at one end of the oval key bow” as shown below:

     

 

To both applications, the USPTO assigned the Design Code: 14.11.01 – “Keys with heads of circular, oval or lobed shape.” A search of the USPTO records under this design code revealed other key designs including another Bauer design (number 3 from the left):

Mark Image  Mark Image  Mark Image Mark Image

The Examining Attorney also searched under Design Code 14.11.02 – “Keys of some other shape” that revealed still additional key designs such as:

Mark Image Mark Image Mark Image Mark Image

 

After conducting the searches, the Examining Attorney issued office actions with three objections: (i) overall functionality; (ii) key hole is functional (“[t]he hole is used for allowing keychains or hooks to hold the key”); and (iii) non-distinctive product design (which is never inherently distinctive). Bauer first responded with a number of examples of its advertising showing the designs such as:

The overall functionality refusal was eventually withdrawn, based on arguments that Bauer is not claiming trademark rights to the overall design of a key but rather is claiming rights to a particular set of design features. (“[t]he issue is not whether a product is functional, but whether this particular shape and form of product which is claimed as trade dress is functional”). The non-distinctive product design objection was obviated by the submission of a 2(f) acquired distinctiveness claim.

But the key hole functionality refusal was maintained. After amendment to the drawings to show the key hole in dotted lines:

  

and changes to the mark description from “an oval-shaped key bow with an offset key shank extending from one side of the key bow and a hole through the opposite side of the key bow” and

“plastic, oval-shaped key bow overlayment of a slightly inclined and elongated oval key bow of a metal key with a slightly offset key shank extending from the key bow and an elongated hole at one end of the oval key bow”

to

“three-dimensional configuration of an oval-shaped key bow with an offset key blade extending from one side of the key bow and a hole through the opposite side of the key bow. The hole appears in the upper right portion of the key bow. The broken lines depicting the key blade, shoulder, cuts, tips, and hole indicate placement of the mark on the goods and are not part of the mark” and

“three-dimensional configuration of a plastic oval-shaped key bow featuring a slightly inclined and elongated smaller oval in the center. The oval-shaped key bow has a slightly offset key shank extending from the key bow and an elongated hole at the top right portion of the oval key bow. The broken lines depicting the key blade, shoulder, cuts, tip, and hole indicate placement of the mark on the goods and are not part of the mark”

the applications were approved. Registrations (U.S. Reg. Nos. 5,107,381 and 5,107,382) issued on December 27, 2016.

Blog by: Mary B. Aversano
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FENF OBTAINS REGISTRATION FOR 3D GEM DESIGN FOR TOE STRETCHER

            

FenF applied for a 3D mark consisting of a, “unique gem-like design for a toe stretcher. Color is not claimed as a feature of the mark. The matter shown by the broken lines is not a part of the mark” (3D Gem Design) in use since 2010.

The Design Codes assigned to this design are as follows:

10.05.25 – Eye patches; Tooth picks; Shoe horns; Polisher/buffers, nail; Bathroom articles, soap dishes; Cotton balls; Cotton swabs; Dental floss; Emery boards; Vibrators, massage; Feminine hygiene products; Files (nail); Floss, dental; Nail clippers; Nail files
26.07.12 – Diamonds with bars, bands and lines

A search of 10.05.25 in the relevant class (10) reveals the following designs:

Mark Image   Mark Image              Mark Image  Mark Image and

26.07.12:

Mark Image      Mark Image     Mark Image

The Examining Attorney added a further design code: 17.03.01 – Stones, gems; Nuggets of precious metals; Diamonds, jewelry which reveals:

Mark ImageMark Image     Mark Image

Still other designs:

Mark Image  Mark Image    Mark Image   Mark Image

After conducting the design search, the Examining Attorney issued an office action with several objections for functionality (advertising and utility patent) and non-distinctive product design.  FenF replied with a response that the utility patent does not mention the “gem-like” design and provided alternative designs for toe stretchers such as:

toe-design-1   toe-design-2 toe-design-3

Regarding the non-distinctive product design, FenF replied with evidence that its advertising emphasizes the “gem” designs as shown below with both the picture of the “gems” and the phrase, YogaToes GEMS:

yoga-toes

The description of the 3D Gem Design was amended to read: “[t]he mark consists of a …[3D] gem-like configuration of a toe stretcher. The four gems at the top of the toe stretcher constitute the mark and are claimed as part of the mark. The matter shown in dotted lines is not part of the mark and serves only to show the position or placement of the mark.”

After providing the above information and amending the mark description, the application was approved for registration. A registration (U.S. Reg. No. 5098981) issued December 13, 2016.

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FUSION GOURMET REGISTERS 3D RECTANGULAR COOKIE DESIGN WITH HELICAL STRIPES

Fusion Gourmet applied for a cookie design (3D cookie design) as follows:

      

described as a 3D “rectangular pillow shaped filled cookie with a distinct pattern on its outer shell that includes a helical line formed along the entire shape.”

Next, the USPTO applied the design codes: 080105 (cookies) and 261706 (helical stripes) to the application. A recent search using both these codes revealed the following marks:

Mark Image  Mark Image

Mark Image Mark Image

and cookies (080105), by itself displayed the following:

Trademark image  Mark Image

Mark Image

Mark ImageMark Image

The examining attorney issued an office action stating that registration was denied for non-distinctive product design (which is never considered inherently distinctive and without evidence of distinctiveness must be denied).

In return, Fusion Gourmet provided evidence including, sales figures, advertisements, and distributor declarations. The application for the 3D Cookie Design was approved and a registration (U.S. Reg. No. 5067161) issued October 25, 2016.

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GLOVE GUARD REGISTERS 3D GLOVE CLIP DESIGN

Glove Guard applied to register the 3D Glove Clip Design (3D Design) described as a 3D “garment clip comprising two similarly shaped clips of substantially different sizes connected by a short tether so as to face away from each other” in Class 25 for “[b]reakaway non-metal clips for attaching articles to belts or clothing.” The drawing and picture of the mark are shown below:

Trademark image

The USPTO assigned the following design code to the 3D Design:

14.03.04 – Clamps, hardware
14.03.04 – Connectors (clamps, collars)
14.03.04 – Rings, hardware

Next, the Examining Attorney conducted a search using the above Design Code. A recent search using this Code revealed marks such as:

Mark Image                  Mark Image              Mark Image Mark Image             Mark Image           Mark Image Mark Image                          Mark Image                    Mark Image

After conducting the search, the Examining Attorney issued an office action with four issues:

  • Functionality inquiry
  • Nondistinctive product design refusal
  • Amend identification
  • Amend classification

Specifically, the Examining Attorney required further information on whether the 3D Design is functional (functional designs are not registrable) and whether it had acquired distinctiveness (as discussed in other Blog posts, product design is not considered inherently distinctive). The other two issues were technical, i.e., re-classifying the mark to: “[b]reakaway non-metal glove clips for attaching gloves to belts or clothing in International Class 26” instead of Class 25. Class 25 covers “clothing, footwear, headgear” whereas Class 26 covers items like “slide fasteners.”

Glove Guard accepted the re-classification and replied with evidence against functionality and in favor of acquired distinctiveness. For the functionality inquiry, Glove Guard was asked to answer a variety of questions including whether any patents were filed/issued, advertising and promotion of the design features and whether there are alternative designs for the same function.

Glove Guard provided information including the existence of both a utility and design patent; advertisement of the design features, e.g., see above advertisement that accentuates the design and states, “Look for the distinctive shape Glove Guard LP’s glove clips shown here!”; and alternative designs – Glove Guard provided a survey demonstrating that consumers recognize Glove Guard’s 3D Design (“B” below) from other designs:

gg-designs

The Examining Attorney accepted the change in classification and goods description but maintained the functionality and non-descriptive product design refusals. In particular, the Examining Attorney stated, “[i]n this case, the utility patent claims the design features at issue.  Accordingly, … [there is] a prima facie case that the … mark is functional and the burden of proof now shifts to … [Glove Guard] to show nonfunctionality” and Glove Guard’s “own advertising … extols specific utilitarian advantages of the applied-for product design or product packaging [which] is strong evidence … of functional[ity].”

Glove Guard responded to the functionality inquiry with a discussion of the utility patent and its non-relevance to the design features claimed in the trademark application. Similarly, Glove Guard replied with further declarations providing photographs of the “look for” advertisement as shown below:

gg-multiple-views

and at trade shows, magazines and the like as shown below:

gg-booth

After providing the additional information about the utility patent and providing additional advertisements containing the “look for” advertising in magazines, trade shows and the like, the application was approved and a registration (U.S. Reg. No. 5047725) issued on September 17, 2016.

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GILEAD SCIENCES REGISTERS THREE 3D TABLET COLOR & NUMBER/WORD MARKS

It is well established that tablet shapes consisting of common geometric shapes (e.g., diamonds, oblongs, squares etc.) are not registrable as trademarks because the shapes are common and must be available for all to use. So, how does a pharmaceutical company distinguish its tablets from others?

In the case of Gilead, it is by color & number/word. Gilead recently obtained registrations for 3 different tablet marks of different color & number/word mark combinations as follows:

Trademark image      Trademark image  Trademark image

Mark Descriptions

For the “7977” mark, the mark is described as a 3D “design of an oval-shaped tablet which is light-yellow in color with the numbers 7977.” The “light-yellow [color]  is claimed as a feature of the mark.” At the same time, “[n]o claim is made to the exclusive right to use the design of the tablet apart from the mark as shown.”

Similarly, the “7985” tablet mark is described as a 3D “design of a diamond-shaped tablet which is light-orange in color with the numbers 7985. The “light-orange [color] is claimed as a feature of the mark.” And similarly, “[n]o claim is made to the exclusive right to use the design of the tablet apart from the mark as shown.”

Last, the “GILEAD” tablet mark is described as a 3D blue tablet with “placement of the word GILEAD debossed on the front of a …[3D] blue tablet, which is a regular-oblong tablet with convex faces and flat sides.” Color is claimed and described as:”Pantone color number 283 C.” Along with a disclaimer, “[n]o claim is made to the exclusive right to use tablet shape, alone, apart from the mark as shown.”

Assigned Design Codes

For the two “number” marks, the marks were assigned design code 10.09.01 for Capsules, medicinal/nonmedicinal, Pills, Tablets, medicines and Tablets, nonmedical products in tablet form. In addition, the 7977 mark was coded as “oval” whereas the 7985 mark was coded for its orange color. The GILEAD mark is coded only for the tablet – 10.09.01.

Prosecution of Applications

No office action issued for either the 7977 or 7985 marks and both proceeded to registration (U.S. Reg. Nos. 5018106 and 5018105) on August 9, 2016.

The GILEAD tablet mark was displayed differently with dotted lines for the outline of the tablet along with a disclaimer of the tablet design which is duplicative. The examining attorney requested clarification to which Gilead responded: “Applicant withdraws the written disclaimer from the record, which is duplicate of the dotted line disclaimer within the mark drawing and enters the following written description of the mark:

The mark consists of the placement of the word “GILEAD” in blue, debossed on the front of a three-dimensional configuration of an oblong tablet, also in blue. The broken lines depicting the tablet indicate placement of the mark on the goods and the tablet shape depicted in broken lines, alone, is not part of the mark.”

After this amendment the GILEAD mark proceeded to registration (U.S. Reg. No. 5030567) on August 30, 2016.

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KENDRA SCOTT REGISTERS 3D EARRING AND 3D NECKLACE DESIGNS

Kendra Scott applied for a 3D Earring Design consisting of “a hand-drawn, oval-like shaped stone with six rounded points, surrounded by a rim of metal impressed with a double row of marquis-shaped indentations. The stone is set in place with four prongs.” Below is the submitted drawing (left) and evidence of use (right):

Trademark image                                         

Kendra also applied for a 3D Necklace Design consisting of “a pendant including a hand-drawn, oval-like shaped stone with six rounded points, surrounded by a rim of metal impressed with a double row of marquis-shaped indentations, with the stone set in place by four prongs. Hanging below is a round metal tassel with a spherical bead-textured metal top, and descending tiers of fine curb chain.” Below is the submitted drawing (left) and evidence of use (right):

Trademark image                                        

The USPTO applied design codes to the 3D Earring and 3D Necklace Designs (collectively, “3D Jewelry Designs”). The jewelry design code is (17.03$[dc]) with sub-codes of, inter alia, 17.03.02 (necklaces) and 17.03.25 (pendants & earrings). A recent search of the jewelry design codes revealed the following similar designs:

pendant design        

 

     Mark Image                Trademark image

 

The examining attorney conducted searches using the same jewelry design codes as well as applying the design codes for geometric figures and solids, crowns and ornamental borders. Ultimately, the searches did not find any conflicting marks.

In each application the examining attorney issued a non-distinctive product design refusal stating that non-distinctive product design is never inherently distinctive and registration is only available with a showing of acquired distinctiveness.

Kendra responded with a 2(f) claim of acquired distinctiveness along with evidence that the 3D Jewelry Designs are recognized as an identifier of source (“widespread consumer and trade recognition of … [the 3D Jewelry Designs], as reflected in …[Kendra]’s impressive sales of jewelry featuring the … [3D Jewelry Designs], substantial investment in advertising the … [3D Jewelry Designs], consistent media attention, particularly through celebrity demand for jewelry featuring the … [3D Jewelry Designs], and unsolicited third-party commentary”) and a showing that [Kendra]’s Design is ‘instantly identifiable,’ ‘iconic,’ and has acquired secondary meaning in the minds of consumers”).

After the 2(f) evidence was submitted and with minor adjustments to each application, the applications were approved and registrations (U.S. Reg. Nos. 4967469 and 4967470) issued May 31, 2016.

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MILLIANNA REGISTERS 3D JEWELRY DESIGN

Millianna originally applied for a 3D design consisting of a “snake skin pattern with circular openings along the top and a rectangular protrusion in the center.” Below is a sample of the design and underneath is the original drawing submitted in the application.

Four different design codes were applied to the 3D Jewelry Design:

25.03.25 – Backgrounds covered with other figurative elements or repetitive designs, words; repetitive designs, words, or letters as a background
26.01.31 – Circles – five or more; five or more circles
26.11.02 – Plain single line rectangles; Rectangles (single line)
26.11.20 – Rectangles inside one another

A search of “repetitive designs, words, or letters as a background” and Class 14 (jewelry) revealed several raised geometric designs such as:

Mark Image                                   Trademark image

and a geometric repeating pattern:

The examining attorney searched marks under these four design codes and concluded  that there were no conflicting marks but did issue an ornamental and functionality refusal, stating, “consumers are likely to view design elements on jewelry as attractive features and not indicating a source for the goods” and “the series of eight holes along the top portion of the mark … [appear to be] functional because the series of holes are used to connect strings of stones or beads.”

Millianna replied by providing an updated drawing showing the eight holes in dotted lines (i.e., not claiming them as part of the mark). This resolved the functionality objection but the ornamental/non-distinctive product design refusal and the 3D drawing requirement were continued.

In response, Millianna, submitted a 2(f) claim of acquired distinctiveness (product design is not considered to be inherently distinctive and can only be registered if acquired distinctiveness is shown), updated the mark description (“[3D] configuration of [a] bracelet clasp with a repeating snake skin pattern. In the center of [the] clasp is a raised rectangular area”) and submitted a new drawing of the mark:

 

 

Jewelry design

After this last submission, the application was approved and a registration (U.S. Reg. No. 5000902) issued July 19, 2016.

Blog by: Mary B. Aversano
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