CROCS REGISTERS 3D CONFIGURATION OF UPPER SHOE DESIGN

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:

CROCS design 1

Green tree CROC

CROCS beach

CROCS cloud

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:

 

Mark Image                   Mark Image           Mark Image

 

Mark Image                                             Mark Image

 

Mark Image                                    Mark Image

 

Mark Image                      Mark Image                        Mark Image

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):

 

Mark Image  Mark Image    Mark ImageMark Image

 

CROCS design is above, left.

(ii) 09.07.06 (Other women’s shoes):

 

Mark Image  Mark Image Mark Image

 

Mark Image  Mark Image

 

(iii) 09.07.08 (Parts of footwear):

 

Mark Image       Mark Image   Mark Image

 

And (iv) 09.07.25 (Other stylized footwear):

Mark Image    Mark Image

 

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.

Blog by: Mary B. Aversano
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RODDENBERRY ENTERTAINMENT INC. (REI) REGISTERS BRIGHT LIGHT MOTION MARK

REI applied for a mark that consists of “a motion mark, in which a bright light appears and grows larger and brighter until it morphs into the logo of a stylized letter ‘R’ within a circle. The term RODDENBERRY then appears underneath, with each letter rotating until it comes into place. The word ENTERTAINMENT then fades in underneath” for “production and distribution of television programs and motion pictures.” The mark is shown in still frames as the following:

According to the USPTO, a mark featuring “a repetitive motion of short duration,” can be depicted in a drawing that “depicts a single point in the movement, or … a square drawing that contains up to …[5] freeze frames showing various points in the movement.”

To demonstrate use of the mark in connection with the goods/services, the USPTO also accepts .wav, .wmv, .wma, .mp3, .mpg, or .avi format (“[a]lthough the drawing for a motion mark may depict a single point in the movement, or up to five freeze frames showing various points in the movement, an acceptable specimen [evidence of use] should show the entire repetitive motion in order to depict the commercial impression conveyed by the mark (e.g. , a video clip, a series of still photos, or a series of screen shots).)” REI submitted the following WMV file for the mark.

The USPTO assigned the mark the following design codes:

01.03.02 – Other constellations
01.07.01 – Globes with outlines of continents

A search of 01.03.02 reveals marks like:

 

Mark Image  Mark Image  Mark Image

A search of 01.07.01 reveals marks like:

 

Mark Image  Mark Image   Mark Image

The Examining Attorney searched the word mark Roddenberry, 01.03.02 and 01.03.03 (stars in shapes), the latter reveals such marks as:

 

Mark Image   Mark Image

The Examining Attorney issued an Examiners Amendment / Priority Action with two points: (i) the drawing cannot exceed 5 frames; and (ii) addition to the mark description that includes a new sentence, “[t]he black rectangles surrounding each frame in the motion mark is not claimed as a feature of the mark, and is intended to show background only.” The drawing was reduced to 5 frames and the mark description updated.

Trademark image

With these changes, the application was approved and a registration (U.S. Reg. No. 5140450) issued February 14, 2017.

Blog by: Mary B. Aversano
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USA NUTRACEUTICALS GROUP, INC. (USA NG) REGISTERS THE COLOR BLUE – PANTONE 306 C FOR DIETARY AND NUTRITIONAL SUPPLEMENTS

It is common to register trademarks containing colors and applications for these marks do not normally require rigorous examination. But, attempting to register a mark that consists solely of a color does require rigorous examination and evidence. Color, by itself, is not considered to be inherently distinctive and, therefore, evidence of acquired distinctiveness – including a demonstration that customers view the color as an identifier of source – must be demonstrated. Below is an application that met the stringent criteria and was successfully registered for the color “blue.”

Application

USA NG applied for the color “blue” as a trademark, describing it as “the color blue Pantone 306 C as a background for advertising, promotional materials, signage, labels, and packaging” for use in connection with “[d]ietary and nutritional supplements.” The drawing of the mark is a “blue” swatch (below left) and as in use (below right):

blue-swatch    blue-packaging

Design Codes

The USPTO coded the mark as follows: 26.09.21 – Squares that are completely or partially shaded and 29.04.03 – Blue (single color used on packaging, labels or signs). A search of the color blue on packaging, labels or signs (29.04.03) reveals the following marks:

blue-search-results-1

The first mark on the above left, is also a USA NG mark.

A search of the color “blue” for the entire goods/services (29.02.03) reveals additional color marks as follows:

blue-search-2

And multiple colors (29.07.03) containing the color blue are below:

blue-search-3

The Examining Attorney also searched marks claiming the “green” color and shapes (bottles, jars or flasks, cases and soap dispenser and bags etc.).

First Office Action

After the search, the Examining Attorney issued an office action citing refusals to registration based on Trademark Act Sections 1, 2 and 45. Specifically, the Examining Attorney stated, “[r]egistration is refused because the applied-for color mark, consisting of one or more colors used on some or all of the surfaces of a product or product packaging, is not inherently distinctive” and “the evidence of record shows that consumers of dietary and/or nutritional supplements often purchase such goods in opaque solid colored pouches and do not necessarily associate such packaging as an indication of source.” As examples, the Examining Attorney provided pictures of the packaging below:

sample-packages-blue-color

More importantly, the Examining Attorney stated, “[t]he burden of proving that a color mark has acquired distinctiveness is substantial. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (holding the color pink used on fibrous glass residential insulation to have acquired distinctiveness based on evidence of twenty-nine years’ use, extensive affidavit and documentary evidence, surveys, and extensive media advertising expenditures.)”

The Examining Attorney also asked a number of questions including whether there is a purpose to the blue color, whether it is a natural by-product of the manufacturing process, or whether there is any significance in the industry for the blue color.

First Reply

In reply, USA NG stated that its “color mark is distinctive, non-functional, and has acquired secondary meaning in the relevant industry.” The answer to the above questions was no purpose to the color, the color is not a by-product of manufacturing and no significance to the color in the industry.

To demonstrate that its mark is distinctive and non-functional, USA NG provided the statement, “[a]s the following response will show … [USA NG’s] use of blue Pantone 306 C on its goods is recognizable across the sports supplement industry as … [USA NG’s] signature ‘trademark look.’ While it may seem like just a background in isolation, a review of … [USA NG’s] wide product line and promotional materials reveals that this ‘background’ is found on virtually all things associated with … [USA NG].” See examples below:

blue-ad-1

blue-ad-2

blue-ad-3

blue-ad-4

Whereas other companies use different styles and colors:

blue-ad-5

blue-ad-6

Second Office Action

After submission of this response, the only remaining issue was the drawing (“[f]or marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, namely, the application of color, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that … [USA NG] claims as its mark”).

Second Reply

The old description was: “the color blue Pantone 306 C as a background for advertising, promotional materials, signage, labels, and packaging” and the new description is “the color Pantone 306 C and is presented as a three-dimensional design feature applied to the packaging of the claimed goods, namely, the body of the packaging of the claimed goods. The dotted lines outlining the packaging only indicate the placement of the mark on the claimed goods and are not part of the mark. The shape of the packaging is not claimed as part of the mark.” The initial drawing is shown below on the left and to the right is the revised drawing:

blue-design-1

Third Office Action

The application was approved but later withdrawn from publication on the grounds that the acquired distinctiveness claim could not be accepted because the “use dates show that the mark has only been in use for three years, [and, therefore,] the breadth of evidence provided is insufficient.” That is, “[b]ecause marks comprised solely of color are never considered inherently distinctive, and … [the] dates of use show that the mark has been in use only three years, the claim of acquired distinctiveness cannot be accepted at this time.” Note: According to the TMEP (1212.05(a)), a prima facie case for acquired distinctiveness is usually five years, however, for overall color of a product, “evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods/services/classes would be required to establish distinctiveness.” (emphasis added)

Third Reply

USA NG replied with additional actual evidence of use of the mark, stating, “[w]hile the Examiner does not believe that this three year use is sufficient to accept that … [the] mark has acquired distinctiveness, … [USA NG’s] use has been exclusive; there are no other similar-looking packages in the dietary and sports supplement industry. To the extent … [USA NG] is aware of any sports nutrition products using a similar look … [USA NG] has opposed, or is in the process of opposing such use. … [USA NG’s] applied-for mark is widely known by consumers and the industry at large as evidenced by the awards issued to … [USA NG] for the recognition of its brand and growing presence in the marketplace … Furthermore, … [USA NG’s] packaging bearing the applied-for mark has been recognized by Graphic Design USA as one of the outstanding designs of 2014 in the Sports, Games and Toys division of its American Package Design Awards … [USA NG’s] long and exclusive use supports the finding that its packaging trade dress has acquired distinctiveness and serves as an indicator of source.”

After this submission of additional actual evidence, the application was approved and a registration (U.S. Reg. No. 5102729) issued on December 16, 2016.

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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.

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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.

Blog by: Mary B. Aversano
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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.

Blog by: Mary B. Aversano
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