ANGIE OLSEN DBA ANGIE’S GREENHOUSE, PLANT CARE AND FLORAL DESIGN REGISTERS 3D TRUCK DESIGN

Angie’s Greenhouse applied for a 3D truck design described as a “truck with the hood slightly raised and painting on the side of the truck bearing the words ‘Angie’s Greenhouse’, numbers ‘752-2888’ and a floral design. By the door of the truck is a wooden barrel and half barrel planter.”

“The broken lines (above) show the ground around the truck, the area under the hood, and various planters or decor where plantings and decorations are placed on a seasonal basis and because they vary are not being claimed as part of the mark.” Below is a picture of the truck with various plantings.

Angie’s Greenhouse also provided 4 additional photographs that show the 3D truck design in use. “The first photo shows the truck planted with a variety of flowers visible to highway traffic. The second photo shows a front view of the truck and a store location directly behind the truck. The third photo shows a closer view of the truck with plantings from another season. The fourth photo shows the truck in yet another season. The final photo shows another front view of the truck in another season.” Below are the photographs from left to right, first row, second row).

Interestingly, the row of bricks outlining the flowers on the side of the back wheel (in the drawing at the top of the Blog) is not described in the mark description nor shown in the specimen (first photograph above) but is shown in one of the 4 photographs provided (immediately above, second row, left).

The USPTO, using the Design Code Search Manual captured the design elements as follows:

05.05.25 – Daffodils; Iris (flower); Other flowers
18.05.05 – Armored trucks; Cabs, tractor-trailer; Garbage trucks; Pickup trucks; Tanker trucks; Tow trucks; Trucks, heavy hauling; Trucks, pick-up; Trucks, tanker; Vans
19.05.01 – Barrels; Drums (barrels)
19.07.20 – Flower pots, Without plants or flowers; Hangers, plant; Plant hangers; Pots, flower, not containing plants
26.17.09 – Bands, curved; Bars, curved; Curved line(s), band(s) or bar(s); Lines, curved

More interesting is the examining attorney did not issue an office action only an Examiner’s Amendment requesting a disclaimer of the word “greenhouse.” Certainly, Angie’s Greenhouse and floral design is a trademark in the traditional sense but adding the 3D truck design for retail services could have elicited an objection based on a failure to function as a mark. However, with the set up of the drawing to protect only the continuous features of the 3D truck design (and not the seasonal flowers and plants) along with the 4 photographs demonstrating that the 3D truck design is an identifier of source, i.e., the 3D truck design is seen from the highway and is in front of the store location, the 3D truck design easily fits in as an identifier of source.

The disclaimer request was accepted and the application proceeded to registration (U.S. Reg. No. 4884944) on January 12, 2016.

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

MARUCCI BAT COMPANY (MBC) REGISTERS 3D CIRCULAR BAND DESIGN AT BARREL END OF BAT

MBC (formed by Jack Marucci, head athletic trainer at LSU, Kurt Ainsworth, former Major League player and Joe Lawrence) filed to protect its 3D Circular Band design (drawing above left, and photograph on the right submitted as evidence of use of the mark).

The 3D Circular Band design is described as a “circular design of a band which is located near the barrel end of a bat. The band passes around the circumference of the bat. The broken lines depicting the bat indicate placement of the mark on the goods and are not part of the mark” (the original description also included reference to “a ring which is burned or painted near the barrel end of a bat”; the Examining Attorney issued an office action stating that the nature of the mark must be concisely described and suggested the new description).

Based on the 3D Circular Band design description and the four corners of the application, the USPTO assigned Design Search Codes from the USPTO Design Search Code Manual. For this design, the USPTO assigned Code: 21.03.03 for baseball bats, bats, cricket bats and Code: 26.01.02 for circles, plain single line, (for more information on searching by Design Search Codes go to Aversano IP Law, September 2015 Newsletter). A search of baseball bats and circles using these codes revealed 67 marks. Some examples are:

The Examining Attorney issued a second office action refusing registration of the 3D Circular Band design “because the applied-for mark as used on the specimen of record [photograph top right] (1) is merely a decorative or ornamental feature of the goods; and (2) does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.”

To overcome the refusals, the Examining Attorney provided several suggestions including providing “proof that applicant’s extensive use and promotion of the mark has allowed consumers now directly to associate the mark with applicant as the source of the goods.” MBC provided a new specimen – an excerpt of a web page (for purposes of this blog only the two bats with the 3D Circular Band design are shown below):

MBC also provided an interesting exchange between Kurt Ainsworth and Major League Baseball (MLB) Operations. MLB noticed use of the 3D Circular Band design at a game (see cropped photograph below) and sent an email stating “one of the … players [was] using a Marucci bat with a blank ring at the end of the barrel” in violation of MLB regulations to only use one mark per placement.

In the same email, MLB wrote “[t]he placement of … [MBC’s] ring does provide an opportunity to easily identify … [MBC’s] product on-field in contrast to many others who rely on their name brand.”

MBC in its response to the Examining Attorney used these statements as evidence that its 3D Circular Band design is recognized as a mark (“[t]his evidence demonstrates that, as of at least 2008, MLB recognized … [MBC’s] mark as a source identifier (and … demanded removal of the mark per MLB bat regulations allowing only one mark per MLB bat)).”

After submission of the new specimen and statements by MLB, the Examining Attorney approved the application and a registration (U.S. Reg. No. 4872667) issued December 22, 2015.

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

 

H2W REGISTERS MUSTACHE SUNGLASSES

Worldwide Dynasty, Inc. (later changed to H2W dba Sunstaches) filed for two different versions of mustache sunglasses (shown above) each described as a 3D configuration of “a plastic mustache hanging from two vertical chains. These chains are affixed to the bottom portion of a pair of eyeglasses. The area depicted in dotted lines [sunglasses] is depicted to show placement of the mark only.”

The two versions of the mustache sunglasses, from left to right below, are the Fu Manchu and The Handlebar:

 

The Examining Attorney initially issued an office action refusing registration of the marks (i) as functional because the first version of the drawings included the sunglasses (i.e., no dotted lines on the sunglasses which meant H2W claimed the sunglasses as part of the mark. However, functional matter is not registrable); and (ii) the marks consist of non-distinctive product design.

In response, H2W amended the drawings to include dotted lines on the sunglasses and provided information that the mustache designs have acquired distinctiveness.

The Examining Attorney accepted the new drawings but did not accept the acquired distinctiveness claim stating, “[a]lthough the evidence indicates that … [H2W’s] novelty glasses are popular, there is no evidence establishing that source indication is ascribed to the configuration of the goods themselves. … Nothing on … [its] website or social media page illustrates that the very shape of the goods has trademark significance.” (As noted in my previous Blogs and in my  July 2015 Newsletter, this is a common issue for non-traditional marks, i.e., how does the trademark owner prove that the unconventional design, while interesting, is also a source identifier).

Despite several office actions on the same distinctiveness issue, H2W did not give up and continued to provide further information. In its Request for Reconsideration (after the issuance of the Final office action), H2W provided numerous third party articles about the products such as the article at Outblush about The Original Mustached Sunglasses:

This additional information tipped the scales and the Examining Attorney accepted the applications. Registrations (U.S. Reg. Nos. 4853492 and 4853493) issued on November 17, 2015.

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

 

 

 

 

 

YAMAHA CORPORATION REGISTERS “SILENT STRING” VIOLIN DESIGN

Yamaha Corporation filed an application for a 3D “portion of a violin frame …  shown in solid lines in the drawing … [with an] outline of the violin depicted in broken lines … show[ing] the placement of the mark” for “violins, electric violins and electronic violins” based on acquired distinctiveness. The drawing of the mark is shown above left and a photograph of the violin on the right.

The examining attorney issued an office action noting that product design is never inherently distinctive and Yamaha’s claim of acquired distinctiveness based on five years of continuous use was not sufficient to overcome the distinctiveness criteria. Also, the description of the mark required further clarification.

In response, Yamaha updated the description to note that the frame – the mark- is shown in solid lines along with a hollow portion and broken lines showing the remaining structural parts of the violin, (i.e., “a thin outer outline of the right side of the violin frame; the area between this outer outline of the frame and the outline of the violin which is depicted in broken lines is hollow; the broken lines showing the remaining structural parts the violin are … are intended to show the placement of the mark).”

Yamaha also provided many declarations and examples showing use of the mark as an identifier of source of the violins (also see the USPTO TSDR page of June 17, 2015). Based on this additional information, the examining attorney approved the application and a registration (U.S. Reg. No. 4853946) issued on November 17, 2015.

For more examples of use of the mark, see the Yamaha Silent String Quartet – Don’t Stop Believin’ on YouTube and pictures from the Yamaha website (also shown below):

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

 

 

 

 

USPTO INSTITUTES PILOT PROGRAM TO ADDRESS CHANGES IN TECHNOLOGY

There have been protests in the trademark community that trademark owners must unnecessarily relinquish registrations or parts of registrations if the manner or medium of the goods/services (collectively “goods”) changed because of technology. An example is a mark originally registered for use in connection with 8-track tapes. Because of changes to technology, the mark owner is now stuck with an outmoded registration for goods no longer offered in the marketplace. Requesting an update to the evolved technology, e.g., DVDs, is considered to be an unacceptable addition or outside the “scope” of the registration (U.S. law only accepts narrowing of the goods in a registration).

Under the pilot program, trademark owners will be allowed to petition the director for a waiver of the “scope” rule for the specific purpose of updating the goods because of changes in technology. Amendments permitted under current trademark practice are not affected by this program. (See www.uspto.gov/sites/default/files/documents/Technology_Evolution_Pilot_Program.docx).

Since the program is in its infancy, no actual data is yet available. Updates will be provided when the first set of proposed amendments are published on the USPTO website in the next coming weeks. Therefore to be continued …

Pilot Program Details

Starting September 1, 2015, a trademark owner is allowed to petition to change the goods and/or classes in a registration if the change is due to evolving technology.

Important notes:

• Replacement of old goods with new evolved goods: Amendments are permitted when the trademark owner can show use in connection with the new evolved goods.
• Amendment to goods and classes may be permitted: Changes to classification of goods and changes from goods to services (or the reverse) will be considered.
• Declaration of Incontestability for original goods does not carryover to new goods: Trademark owner must not file a Declaration of Incontestability until 5 years after the accepted amendment.
• Registrations based on international registration (Madrid): Acceptability of an amendment may be affected if the underlying registration is less than 5 years old.
• Scope of foreign registration not a factor: Registrations under §44(e) exist separate from a foreign registration and are therefore not affected by the scope of a foreign registration.
• Proposed amendment published for 30 days to allow for objection: Interested parties will have 30 days to explain a potential 3^rd party harm if an amendment is accepted by sending an explanation and evidence to TMTechEvolutionComments@uspto.gov.
• Publication of proposed amendments will be on a rolling basis: According to a staff attorney at the USPTO, proposed amendments will be published on the website as petitions are received with the publication cycle depending on the response to the pilot. The USPTO is beginning to receive petitions and anticipates publication of the first proposed amendments in the next coming weeks.
• Accepted amendments to be published: Once an amendment is accepted, it will be published in the Official Gazette along with the other amendments.

Examples of Acceptable Amendments

From	To
Phonograph records featuring music	Musical sound recordings
Prerecorded video cassettes in the field of mathematics instruction	Video recordings featuring mathematics instruction
Floppy discs for computers for word processing	Providing on-line downloadable software for word processing
Downloadable software for use in database management	Software as a service (SAAS) services featuring software for use in database management
Printed books in the field of art history	Downloadable electronic books in the field of art history
Telephone banking services	On-line banking services
Entertainment services, namely, an ongoing comedy series provided through cable television	Entertainment services, namely, an ongoing comedy series broadcast via the Internet

Examples of Unacceptable Amendments

From	To	Reason
Downloadable software for use as a spreadsheet in the field of accounting	Providing on-line non-downloadable software for use as a spreadsheet in the field of business management	Subject matter changed from accounting to business management
Printed Magazines in the field of finance	Printed magazines in the field of finance; and providing on-line magazines in the field of finance	Still using goods in original form
Phonograph records featuring music	Streaming of audio material in the nature of music	Moving from one medium to a separate data transmission activity
Video game tape cassettes and video game cartridges	Video game discs and video game cartridges	Still using with video game cartridges

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

ICHIMONKAI CO., LTD. REGISTERS 3D CONFIGURATION OF A MAN STANDING WITH CROSSED ARMS

ICHIMONKAI initially described the mark as, “[a] black bearded man whose face is flesh color; he is wearing a black cap, a white jacket, brown slacks and purple shoes; an ocher plate saying ‘Don’t dip it in a sauce twice’ is suspended from his neck; he is crossing his arms and holding ocher KUSHIKATSU (deep-fried breaded meat or vegetables on skewers) in his each hand” for “[s]erving food and drinks.”

The examining attorney issued an office action with several technical issues to be addressed such as the drawing (two views of the figure were originally provided when only one is allowed) and whether the portrait of the man in the mark identifies a particular living individual. If it does identify a living individual, consent by that individual must be provided.

Also, this application originates from a Madrid application filed in Japan with a designation to the United States. This type of application does not require evidence of use before registration. Therefore, reviewing the mark by itself without any context (see above left), led the examining attorney to ask several questions, i.e., “is the applied-for mark displayed as a figurine in applicant’s restaurant? Is the applied-for mark a nutcracker or a container for sauces? Please submit photographs showing how the applied-for mark is used.”

ICHIMONKAI responded with a photograph of the mark as shown in front of the restaurant (see below) with the statement that, “[t]he applied-for mark is a figurine placed in front of the Applicant’s restaurant. The eyes and mouth are made to pop[] out and [he says] … ‘IRASSHAI~ SOSU NO NIDOZUKEWA KINSHIYADE’ and this means ‘HELLO! Don’t dip it in a sauce twice’ in English.”

After providing the photograph and explanation of the use of the mark, updating the description of the mark, providing consent from Katsuya Ueyama and other technical issues, the examining attorney approved the application and a registration (U.S. Reg. No. 4824379) issued on October 6, 2015.

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

 

IS IT A PUMPKIN OR JACK-O-LANTERN?

One of the more challenging aspects of clearing a design mark in the United States is finding similar marks that have already been registered with the United States Patent and Trademark Office (“PTO”).  Unlike searching words or phrases, designs are given codes (“coded”) based on 29 Categories found in the PTO’s Design Search Code Manual. (See http://tess2.uspto.gov/tmdb/dscm/index.htm).

Design Categories:  For example, Category 4 covers supernatural beings, mythological or legendary beings, fantastical beings or unidentifiable beings that includes devils, angels, leprechauns, witches and super heroes. Also found in Category 4 are plants, objects or geometrical figures that represent humans or animals.  Each Category is divided into many sub-categories that further categorize the designs.  For example, there is a sub-category for mythological beings, superbeings, ghosts and aliens (04.01.07), sphinx (half human, half lion) (04.03.02) and plants, parts of plants, or combinations of plants representing a person (04.07.01). See below:

04.01.07    Mythological beings, superbeings, ghosts, aliens

04.03.02    Sphinx (half human, half lion)

04.07.01    Plants, parts of plants, or combinations of plants representing a person

 

Conducting a Design Search:  To search the PTO website for designs coded, for example, as mythological beings, superbeings, ghosts and aliens (collectively “mythological beings”) go to the Trademark Electronic Search System (TESS) at the USPTO and select Word and/or Design Mark Search (Free Form). Enter the design code 04.01.07 (removing the dots “.”) and add the design search code [dc] (i.e., 040107[dc], also shown below). Click Submit Query.

All records that contain this design code will be disclosed in the search results. In this case there are 3,579 records that contain design code 04.01.07. An excerpt of the search results is below:

Click on “image list” and each record is displayed by the design:

Undoubtedly, searching 3000+ records is too daunting. The search can be narrowed by other criteria such as a key word in the mark description [de] or by international class [ic]. For example, enter 040107[dc] and ghost[de]. The search results are narrowed to 134 marks that contain ghost designs. Examples below:

Or the search can be limited to a certain class such as toys (Class 28) (040107[dc] and “028”[ic]). The search results change to 344 marks of mythological beings for toys.  Examples below:

Key Word Searches:  But what if the design does not exactly fit into one of the 24 categories? For example, a mark is described as a “jack-o-lantern” but there is not a design code for jack-o-lanterns.  It could be described as a pumpkin:

05.09.12    Pumpkins

But if the design is not an actual pumpkin, what other design codes can be used to describe the design?  For the purposes of this discussion, two “jack-o-lantern” designs are analyzed.

1) The first design is described as: “a profile view of a jack-o-lantern with carved human facial features and sunglasses and having a wheat hair Mohawk with an ivy vine interspersed” for “beer” in Class 32.  The design was coded for several design elements including:  04.07.01 – person formed by plants; plants forming a person; plants or combinations of plants representing a person; plants representing a person and also 05.09.12 – pumpkins.  A search of either of these design codes would disclose this design.

     

2)  The second design is described as a 3D “configuration of the packaging for the goods, namely, a beverage container featuring a globular bottle shape resembling a jack-o-lantern” for “sports drinks” in Class 32. This design is coded as:  04.07.02 – objects forming a person; person formed by objects and 19.09.02 – bottles, jars or flasks with bulging, protruding or rounded sides; flasks with bulging or protruding sides; jars with bulging or protruding sides.

 

In these two jack-o-lantern examples, searching the individual design codes would not reveal both marks but searching by the key word, “jack-o-lantern” would disclose both marks. A search of “jack-o-lantern” in class 32 discloses only these two results. However, a search by the key word “pumpkin” in class 32 reveals a total of 18 marks. Some of which are also pumpkin head designs shown below:

Conclusion:  As shown above, there is not one way to clear a design mark.  It requires use of all the tools – design codes, key words, class designations and the like – in various combinations depending on the design.  Design codes can designate the (i) form of the design, e.g., pumpkin or persons or objects formed by plants and; (ii) function (the second jack-o-lantern mark was also coded as a bottle).  Key words can include a variety of terms and in the case above, both “jack-o-lantern” and “pumpkin” revealed different and relevant results.

On the applicant side, it is important to thoroughly describe the mark as this is one of the criteria used by the PTO to code the design. Also, once the codes are entered into the record, applicant can request that additional codes be included in the record. This could improve the ability to uncover more relevant marks that in turn would increase the chances of avoiding a potential conflict and reduce unnecessary costs associated with such a conflict.

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

AZUL IMPORTS EXPORTS (AZUL) REGISTERS 3D SKELETON BOTTLE DESIGN

Azul applied for the 3D “design for a beverage bottle in the shape of a partial skeleton” for tequila. The drawing for the mark is shown above left and a photograph of the bottle on the right.

This will be the shortest Blog post ever. No office action issued for this 3D design. Applicant described the 3D Skeleton design as product packaging and therefore no evidence of distinctiveness required (if product design, acquired distinctiveness evidence would be required). Nor were there any issues with the drawing or specimen.

Consequently, the application filed on January 29, 2015 registered (U.S. Reg. No. 4790619) on August 11, 2015 just under 7 months from filing.

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

GUITAR MANIA!! USPTO RECENTLY ISSUED FOUR 3D GUITAR TRADEMARK REGISTRATIONS

In the last few weeks, (1) the overall design of a guitar (Rickenbacker Reg. No. 4774991), (2) a tuning assembly/peg box of the guitar (Bruce Alfred Wright Reg. No. 4767088), (3) configuration of a peg head for a stringed musical instrument (Gibson Reg. No. 4758471) and (4) oval-shaped hole in the body of a guitar (HG Reg. No. 4775227) registered with the U.S.P.T.O. In each application, the applicant was asked to demonstrate acquired distinctiveness because a 3D product design is never inherently distinctive. This means that each applicant had to demonstrate through sales, advertising and recognition that the industry and consumers view these designs as an identifier of source. Below are more details on the trademark registration process.

1) Rickenbacker International Corporation (Rickenbacker) applied to protect its guitar as a 3D “configuration design of a guitar” (shown below left is the guitar, on the right a drawing of the mark) with a claim to 3 prior guitar design trademark registrations (U.S. Reg. Nos. 2513845, 2749116, and 2703395. Under the trademark rules, the Examining Attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by one or more active prior registrations of the same mark on the Principal Register.)

The Examining Attorney refused registration based on (i) functionality, stating, “many of the claimed features [from the drawing of the mark] … have a functional purpose, e.g., the guitar pick-ups are used to convert sound, the neck is used to hold the guitar strings and provide background resistance”; and (ii) lack of distinctiveness, i.e., the mark “consists of a nondistinctive product design or nondistinctive features.” Rickenbacker responded with a claim of acquired distinctiveness and an additional claim of a prior guitar design registration (U.S. Reg. No. 2696920).

With a revised drawing eliminating its claim to several functional items (i.e., adding dotted lines to show those features not to be included as part of the mark (see the drawing below)), the functionality objection was dropped. However, the lack of distinctiveness claim was maintained.

Rickenbacker replied that the shape of its electric guitar has been in use since 1958, is “iconic” in the guitar industry and considered to be a luxury brand in the guitar world. This was followed up with statements from musicians (e.g., “’Rock n Roll Hall of Famer Tom Petty, a world famous guitarist synonymous for his work with … [Rickenbacker] guitars … [stated]: ‘[s]hape is an incredibly important factor, if not the most important, in identifying a brand of guitar. The shape itself acts as a[] symbol of … [Rickenbacker] and is certainly used more regularly than any word logo as a means to identify a guitar’s brand’”).

After the last response, the Examining Attorney approved the application and a registration (U.S. Reg. No. 4774991) issued on July 21, 2015. The final description of the mark is, “a … [3D] configuration of a guitar body. The broken lines depicting the pick guard, sound hole, tailpiece mounting bracket, neck, fret board, knobs, unornamented bar pickups, screws, switch, and strap locks indicate placement of the mark on the goods and are not part of the mark.”

2) Bruce Alfred Wright (BAW) applied to protect a 2D “product configuration for a guitar tuning assembly/peg box located under the bridge of the guitar. The dotted lines are not part of the mark and serve only to show the position or placement of the mark on the goods” and originally supplied the below drawing (left) and a photograph of the guitar (right).

The Examining Attorney refused registration on the grounds of (i) nondistinctiveness; and (ii) requested clarification on the drawing (above left), stating, “[t]he drawing shows a …[2D] image; however it is not clear from the record whether applicant is applying for (1) a …[2D] design mark that is not trade dress; or (2) a … [3D] mark that is trade dress for product design (i.e., the configuration or shape of the goods themselves).”

BAW provided clarification that its mark “consists of a fanciful and unique configuration for a tuning assembly … not commonly used in the musical instrument industry. A standard guitar tuning assembly is located at the top of the guitar’s neck on the guitar’s headstock … [but BAW’s] is located within the body of the guitar containing a smooth edged triangular cut out in center of the tuning assembly providing a modern feel to a common and historic design.”

BAW also submitted a claim of acquired distinctiveness based on its exclusive use of the mark since 2007, advertising (i.e., “focused its attention on a small ‘niche market’ for high-end and uniquely designed guitars”) and declarations indicating that BAW’s mark “is recognized by consumers and throughout the musical instrument industry as a trademark for … [BAW’s] goods.”

The Examining Attorney accepted the acquired distinctiveness claim but because the mark is considered to be“the configuration or shape of the goods themselves,” the mark is 3D not 2D and therefore, a 3D mark description and drawing must be submitted. BAW updated the description to a 3D guitar design “comprising a guitar tuning assembly/peg box located under the bridge of the guitar in the shape of a four-sided polygon with the top side longer than the bottom side and the left and right sides at a diagonal inward toward the bottom side. The dotted lines are not part of the mark and serve only to show the position or placement of the mark on the goods” with the following 3D drawing:

The application was subsequently approved and a registration (U.S. Reg. No. 4767088) issued July 7, 2015.

3) Gibson Brands, Inc. (Gibson) applied for “a fanciful configuration of a peg head for a stringed musical instrument, namely a guitar” with the “literal” element of GIBSON. The following drawing (left) and photograph of the guitar section (right) was provided:

The Examining Attorney issued an objection to registration based on (i) nondistinctiveness – product design is not registrable without a demonstration of acquired distinctiveness; and (ii) new drawing that disclaims the functional aspects like the knobs and guitar strings (in dotted lines).

In reply, Gibson provided evidence of acquired distinctiveness, i.e., the mark “consists of a design configuration for the headstock portion of a stringed musical instrument along with the inherently distinctive and famous stylized GIBSON® wordmark displayed on the truss-rod cover (‘Flying V Headstock Design’). Gibson’s Flying V Headstock Design is recognized by consumers as indicating Gibson as the source of the stringed instrument. The use of the headstock design as a trademark is extremely common in the stringed instrument industry.” Gibson also provided information on sales, advertising and recognition in the industry for over 60 years.

With the revised drawing (see below) and change in the mark description, (“[t]he mark consists of a … [3D] configuration of a fanciful configuration of a peg head for a stringed musical instrument, namely a guitar, with the word GIBSON appearing sidelong upon the head. The broken lines depicting the guitar knobs, strings and the start of the neck indicate placement of the mark on the goods and are not part of the mark”), the application was approved and a registration issued (U.S. Reg. No. 4758471) June 23, 2015.

4) HOSHINO GAKKI CO., LTD. (HG) applied to protect its guitar design, (“configuration of a somewhat oval-shaped hole in the body of a guitar, featuring a scalloped hand grip with four grooves on the long side of the hole closest to the edge of the guitar and a smooth surface on the other long side. The outline of the guitar, shown in broken lines, is not part of the mark and serves only to show the position of the mark on the goods”). The drawing (below left) and photograph of the mark (below right):

HG is the owner of a Supplemental Registration (indicating the mark can function as a mark but is not, at the time of registration, eligible for the Principal Register. Registration issued in 2008. After 5 years of registration, it may be registered on the Principal Register if acquired distinctiveness can be demonstrated).

In this new application, the Examining Attorney required information on acquired distinctiveness to which HG provided sales, advertising and Wikipedia information. The HG marks is featured on a Wikipedia entry for Ibanez JEM and the mark is noted for its being “originally incorporated into a guitar made for American guitarist, songwriter, and producer Steve Vai, who has played with Frank Zappa, recorded with Public Image Ltd., David Lee Roth, and Whitesnake.” After submission of the information, the application was approved and a registration (U.S. Reg. No. 4775227) issued July 21, 2015.

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380

Reprinted at IPBulgaria.BG  entitled “ФОРМА НА КИТАРА – 3D ТЪРГОВСКА МАРКА”.  For more information contact Aglika Ivanova, Attorney-at-Law & European Trademark Attorney at IP Consulting Ltd (aivanova@ipconsulting.eu).

DALE ALLEN HUNT ON BEHALF OF THE TACOPROPER COMPANY REGISTERS 3D TACO HOLDER

The applicant on behalf of the TacoProper Company (“TacoProper”) applied for the above 3D mark described as, “a rectangular base which – when viewed from the end – has a concave interior bottom on the inside, with ‘popped out’ stylized rectangular shapes on the outside on either side of the base, turning into sides that soar upwards and bow slightly outwards.”

Upon review of the application, the Examining Attorney objected to registration of the mark on two grounds, (i) functionality – “(a) the curved bottom of the device and the “U” angled-shape where the taco is laid seen from the narrow ends of the device”; and (b) the recessed rectangle shapes at the base of the bell shapes” are functional. “The non-functional elements are the two bell shapes viewed from the broad sides of the device”; and (ii) nondistinctiveness – the applied for mark is “nondistinctive product design or nondistinctive features of a product design … not registrable on the Principal Register without sufficient proof of acquired distinctiveness.”

TacoProper replied with evidence of acquired distinctiveness stating that, “Applicant has sold over a million units of the product embodying the mark” with advertisements on, for example, “ABC’s National Morning Show ‘The Chew’ and in syndicated program reruns.” The product was previously protected by a design patent (design patents protect the ornamental features of an article of manufacture for 14 years; trademarks offer continued protection for non-functional, distinctive identifiers of source). TacoProper  provided an updated drawing (shown below) disclaiming the “U” shape where the taco is placed.

Another office action issued maintaining the same objections of functionality and nondistinctiveness as well as an objection to the new drawing (“the proposed amendment would materially alter the mark in the initial application because the original drawing did not show or otherwise indicate the nature of the bottom of the taco propping device or that it featured bumps for the (purely functional) purpose of raising the device slightly off of the table.”)

In response, TacoProper provided further evidence of acquired distinctiveness (through several declarations) and an amended drawing:

With the additional evidence, new drawing and, after several further iterations, an updated description (“a food holding device featuring a bell-shaped side with a stylized rectangular inset featuring the wording ‘TACOPROPER’ therein. The dotted lines depicting the U-shape of the interior shape of the taco holder are not part of the mark”), the Examining Attorney approved the application and a registration (U.S. Reg. No. 4771181) issued on July 14, 2015.

Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380