PTO Form 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 05/31/2014)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`85900729
`
`LAW OFFICE
`ASSIGNED
`
`LAW OFFICE 113
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`     I.
`
`      Introduction
`
`In the Final Office Action which issued on February 5, 2014, the
`
`Examining Attorney has continued his refusal to register the applied-
`
`for mark based upon his finding that the applied-for mark consists of
`
`a non-distinctive product design or non-distinctive features of a
`
`product design that is not registrable on the Principal Register
`
`without sufficient proof of acquired distinctiveness.  Applicant
`
`respectfully disagrees with the Examining Attorney’s refusal and
`
`requests the Examining Attorney to reconsider his refusal for the
`
`following reasons.
`     II.
`    Argument
`
`A.  
`
`The Product Design is Distinctive.     
`
`The configuration of the bicycle frame that is the subject of
`
`this Application is distinctive in the bicycle industry.  Applicant’s
`
`amended description of the mark, which is being submitted with this
`
`Office Action Response, describes a “three-dimensional configuration
`
`of a bicycle frame that includes an elongated polygon shape sitting
`
`on top of the crossbar nearest to the seat post and another polygon
`
`

`

`shape set in-between the seat stay and the chain stay.  The crossbar
`
`fuses together with the down tube before it joins the head tube
`
`(emphasis added).” Unlike traditional bicycle frames, which have gaps
`
`between the crossbar and down tube and between the seat stay and the
`
`chain stay, Applicant’s bicycle frame fills in these gaps with
`
`distinctive polygon-shaped designs.  This distinctive design is
`
`significantly different from the usual bicycle frame, as is apparent
`
`from the examples of bicycles produced by other manufacturers, which
`
`are attached to Applicant’s first Office Action Response. 
`
`Additionally, the use of the polygon-shape configuration is neither
`
`functional nor conventional.      
`
`Applicant’s product configuration (the “Jet Design”) is
`
`inherently distinctive when considering the relevant and well-
`
`established “Seabrook” factors, that is, whether the Jet Design is
`    
`(1)  a “common” basic shape or design;
`    
`(2)  unique or unusual in the field in which it is used;
`
`(3)  a mere refinement of a commonly-adopted and well-known form
`of ornamentation for a particular class of goods viewed by the
`public as a dress or ornamentation for the goods;   
`(4)  capable of creating a commercial impression distinct from
`the accompanying words.
`Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344,
`196 USPQ 289, 291 (CCPA 1977).
`
`    
`
`It is clear that the Jet Design is uncommon.  Where the majority
`
`of bicycles have a gap between the crossbar and the down tube, the
`
`Jet Design fuses these tubes long before they join the head tube. 
`
`The addition of the distinctive polygon shapes on top of the crossbar
`
`and in-between the seat stay and the chain stay also present a
`
`distinctly uncommon product design that is unique to the bicycle
`
`industry.  Additionally, other bicycles do not include this type of
`
`ornamentation.
`
`    
`
`If, however, the Examining Attorney continues to maintain that
`
`the Jet Design is not distinctive, then the following factors should
`
`

`

`be considered to determine if the applied-for mark has acquired
`
`distinctiveness:  copying, extent of advertising and advertising
`
`expenditures, sales success, length and exclusivity of use and
`
`unsolicited media coverage.  See, In re Steelbuilding.com, 415 F.3d
`
`1293, 1300 (Fed. Cir. 2005), citing Cicena Ltd. v. Columbia Telecomms
`
`Group, 900 F.2d 1546, 1551 (Fed. Cir. 1990).  
`
`No single factor is
`
`determinative and a showing of secondary meaning need not consider
`
`each of these elements.  Id.
`B.  
`Applicant’s Trade Dress Has Acquired Secondary Meaning.
`
`     
`
`The following facts, which are supported by the Declaration of
`
`Matt O’Donnell (the “O’Donnell Declaration”, attached as Exhibit 1),
`
`demonstrate that the applied-for mark has acquired distinctiveness.
`
`Applicant’s Continuous and Exclusive Use of the
`1.  
`Jet Design Mark Demonstrates that the Mark Has
`Acquired Distinctiveness.
`
`    
`
`Applicant has continuously and exclusively used the Jet Design
`
`mark since at least as early as September 5, 2007.  See, O’Donnell
`
`Declaration #3.  This use of the Jet Design mark for almost seven
`
`years is prima facie evidence that the mark has become distinctive,
`
`as used on or in connection with Applicant’s products in commerce,
`
`pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). 
`
`Consequently, Applicant’s Jet Design mark has become distinctive and
`
`operates as a clear source identifier for Applicant’s products.
`
`Applicant’s Extensive Promotion of the Jet Design
`2.  
`Mark and Significant Product Sales Show that the Mark
`Has Acquired Distinctiveness.
`
` Applicant continues to aggressively advertise and promote its Jet
`
`Design mark through dealer materials, online marketing via websites
`
`owned by Applicant and its dealers, and trade-show exhibitions using
`
`the product configuration.  See, O’Donnell Declaration #6. 
`
`Representative copies of advertising and promotional materials for
`
`

`

`the Jet Design products are attached to the O’Donnell Declaration at
`
`Exhibit A, as well as to Applicant’s first Office Action Response. 
`
`As these advertising and promotional samples demonstrate, Applicant
`
`consistently advertises the Jet Design products using terms such as
`
`“ready for takeoff”, “cool looks”, and “moto styling”, which draw the
`
`consumer’s attention to the products’ distinctive design and promote
`
`the product configuration as an indicator or source.  Additionally,
`
`Applicant has enjoyed commercial success through the sale of its Jet
`
`Design products.  Since the products were first introduced to the
`
`market, Applicant’s sales have been in excess of $26.3 million
`
`(through the third quarter of 2013).   See, O’Donnell Declaration #8.
`
`Given Applicant’s significant marketing expenditures as presented in
`
`its first Office Action Response, its widespread advertising and
`
`promotional activities and considerable amount of sales as set forth
`
`the O’Donnell Declaration, there should be no question that
`
`Applicant’s Jet Design mark has acquired distinctiveness.
`
`Deliberate Copying by Competitors Support
`3.  
`Applicant’s Claim that the Jet Design Mark Has
`Acquired Secondary Meaning.
`
` Applicant has diligently policed copying of the Jet Design mark in
`
`the marketplace.  Having discovered that a competitor was selling a
`
`bicycle with a confusingly similar configuration to the Jet Design
`
`mark, Applicant contacted the competitor and negotiated a settlement
`
`in which the competitor agreed to stop manufacturing and selling the
`
`bicycle at issue.  See, O’Donnell Declaration #10.  Clearly, the
`
`competitor thought that Applicant’s trade dress had acquired
`
`secondary meaning and, by adopting confusingly similar trade dress
`
`for its own brand, hoped to benefit from consumer confusion as to the
`
`source of its bicycle. 
`
`Proof of intentional copying is probative evidence of secondary
`
`

`

`meaning.   Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604,
`
`611 (7th Cir. 1986); Nautilus Group, Inc. v. ICON Health and Fitness,
`
`Inc., 372 F.3d 1330, 1340 n.7 (Fed. Cir. 2004) (Secondary meaning can
`
`be established through . . . proof of intentional copying . . . “). 
`
`Consequently, the fact that a competitor copied the Jet Design mark,
`
`considered together with the evidence of Applicant’s continuing and
`
`exclusive use of the mark, significant marketing expenditures and
`
`considerable sales of its Jet Design products, demonstrate that the
`
`Jet Design mark has acquired secondary meaning.
`
`The Examining Attorney’s Specific Conclusions as to
`C.  
`Why the Applied-for Mark Is Not Distinctive Are Not
`Supported by the Facts at Hand.
`
` Applicant has overcome its burden of proving secondary meaning by
`
`applying the argument and facts above to counter the Examining
`
`Attorney’s specific conclusions on the issue of distinctiveness. 
`
`Applicant outlines this as follows.   
`
`1.   Applicant’s marketing, promotional and advertising activities
`
`have been extensive and long-term given that the Jet Design bicycle
`
`for boys is one of Trek’s most popular and widely sold lines of
`
`bicycles for kids. See O’Donnell Declaration #3, #6, #9.  Applicant
`
`has spent roughly $1,153,000 over the last three years alone
`
`marketing not just bicycles but kid’s bicycles.  Although Applicant
`
`does not track marketing expenditures by model designation, it is
`
`reasonable to assume that a substantial portion of the marketing
`
`expenditures for kid’s bikes is spent on the highly successful Jet
`
`Design product; this is particularly true, as Applicant has explained
`
`in the first Office Action Response that, in 2007, there were over
`
`$3.7 million in sales of Jet Design product and sales have increased
`
`to $4.0 million or more annually during successive years. Contrary to
`
`the Examining Attorney’s conclusion, Applicant’s marketing and
`
`

`

`advertising expenditures for the JET Design bicycle have been great.
`
`2.      Also important to acknowledge is that marketing and advertising no
`
`longer need to be done exclusively in magazines or newspapers or on
`
`product billboards.  Today, online Internet and social media
`
`marketing and promotion constitute a huge portion of the marketing
`
`and promotional strategies for small and large businesses alike.  As
`
`the countless examples of promotional marketing and advertising of
`
`the JET Design product, which are attached to the first Office Action
`
`Response and at Exhibit A to the O’Donnell Declaration, indicate,
`
`Applicant widely markets and advertises its Jet Design product via
`
`the Internet.  Internet and social media marketing in the current
`
`digital era reduce the cost of marketing and promotion compared to
`
`the traditional print-ad form of marketing.  The expenditures of many
`
`businesses, including Applicant, are not a complete measure of
`
`marketing and promotional success for a product.  Additionally, there
`
`are approximately 1,700 TREK dealers across North America authorized
`
`to sell Jet Design product, all of whom have websites that market and
`
`promote the Jet Design product.  Contrary to the Examining Attorney’s
`
`conclusion, the extent of Applicant’s advertising, marketing and
`
`promotion of the Jet Design bicycle has been great.
`
`3.      There are many online reviews and critiques of the Jet Design
`
`product by both consumers and non-consumer sources alike.  
`
`Many of
`
`these reviews and critiques can be found at Exhibit 2, attached. The
`
`non-consumer sources include Momentum Mag, BikePedia and Bicycling
`
`Magazine.  The Examining Attorney asserts that “nowhere on any of
`
`Applicant’s bicycle advertisements is the mark identified, singled
`
`out, or even referenced as a source identifier for bicycles.”  Yet,
`
`it is not necessary for Applicant to identify or single out or
`
`reference with words the Jet Design as a source identifier for
`
`Applicant’s bicycles.  The design in and of itself serves as a source
`
`

`

`identifier without the need to name the mark or single it out in
`
`marketing materials. Similar to the Coca-Cola® bottle and many other
`
`distinctive product configurations, the Jet Design is distinctive at
`
`sight and need not be specifically identified in product literature
`
`in order for it to function as a mark.   The Coca-Cola Company does
`
`not specifically identify with words in marketing literature that the
`
`Coca-Cola® bottle shape is a trademark.  For example, it is unlikely
`
`that one would ever read “look for the bottle shape” when reviewing
`
`marketing materials for Coca-Cola®.  Through exclusive and continuous
`
`use and extensive marketing for many years of the Coca-Cola® bottle
`
`shape, it has come to function as a mark.   Through exclusive and
`
`continuous use and extensive marketing of the Jet Design trade dress
`
`for Applicant’s bike for boys, the Jet Design has come to function as
`
`a source identifier for Applicant. 
`
`III. Conclusion
`
`    
`
`Based upon the above arguments and the facts set forth,
`
`including those in the O’Donnell Declaration, Applicant asserts that
`
`the Jet Design mark, if not inherently distinctive, has acquired
`
`distinctiveness.  It serves as a source identifier for Applicant’s
`
`Jet Design products.  Consequently, Applicant respectfully requests
`
`that the Examining Attorney withdraw his refusal to register the Jet
`
`Design mark and approve the mark for publication on the Principal
`
`Register.
`
`      
`

`

`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF
`FILE
`
`       CONVERTED PDF
`FILE(S)
`       (14 pages)
`
`       ORIGINAL PDF
`FILE
`
`       CONVERTED PDF
`FILE(S)
`       (5 pages)
`
`       ORIGINAL PDF
`FILE
`
`       CONVERTED PDF
`FILE(S)
`       (20 pages)
`
`evi_1-7091254145-162150629_._23892.Exhibit_1_to_Argument__Part_1_.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0002.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0003.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0004.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0005.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0006.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0007.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0008.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0009.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0010.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0011.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0012.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0013.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0014.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0015.JPG
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`evi_1-7091254145-162150629_._23892.Exhibit_1_to_Argument__Part_2_.pdf
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0016.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0017.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0018.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0019.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0020.JPG
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`evi_1-7091254145-162150629_._23892.Exhibit_2_to_Argument.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0021.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0022.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0023.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0024.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0025.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0026.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0027.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0028.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0029.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0030.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0031.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0032.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0035.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0036.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0037.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0038.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\859\007\85900729\xml11\RFR0040.JPG
`
`Exhibit 1, which includes a Declaration along with examples of marketing and
`advertising materials and a copy of a warning letter sent to a competitor and
`Exhibit 2, which includes samples of online reviews and critiques of the JET
`Design product
`
`DESCRIPTION OF
`EVIDENCE FILE
`
`ADDITIONAL STATEMENTS SECTION
`
`DESCRIPTION OF THE
`MARK
`(and Color Location, if
`applicable)
`
`The mark consists of a three-dimensional configuration of a bicycle frame that
`includes an elongated polygon shape sitting on top of the crossbar nearest to the
`seat post and another polygon shape set in-between the seat stay and the chain
`stay. The crossbar fuses together with the down tube before it joins the head
`tube. The portion of the drawing in dotted lines is not part of the mark; it
`merely shows the position of the mark on the goods.
`
`SIGNATURE SECTION
`
`RESPONSE
`SIGNATURE
`
`/Mary Catherine Merz/
`
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`SIGNATORY'S NAME Mary Catherine Merz
`
`SIGNATORY'S
`POSITION
`
`Attorney of record, Illinois bar member
`
`SIGNATORY'S PHONE
`NUMBER
`
`708-383-8801
`
`DATE SIGNED
`
`AUTHORIZED
`SIGNATORY
`
`CONCURRENT
`APPEAL NOTICE
`FILED
`
`08/05/2014
`
`YES
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Tue Aug 05 17:50:20 EDT 2014
`
`TEAS STAMP
`
`USPTO/RFR-70.91.254.145-2
`0140805175020759229-85900
`729-5009a52cbc43c651ddb3a
`59b3b2831ae2e8e92f1d6b2b1
`4ab5fe7f78cd6549091-N/A-N
`/A-20140805162150629609
`
`PTO Form 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 05/31/2014)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 85900729 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`     I.
`
`      Introduction
`
`In the Final Office Action which issued on February 5, 2014, the
`
`Examining Attorney has continued his refusal to register the applied-
`
`for mark based upon his finding that the applied-for mark consists of a
`
`non-distinctive product design or non-distinctive features of a product
`
`design that is not registrable on the Principal Register without
`
`

`

`sufficient proof of acquired distinctiveness.  Applicant respectfully
`
`disagrees with the Examining Attorney’s refusal and requests the
`
`Examining Attorney to reconsider his refusal for the following reasons.
`     II.
`    Argument
`
`A.  
`
`The Product Design is Distinctive.     
`
`The configuration of the bicycle frame that is the subject of this
`
`Application is distinctive in the bicycle industry.  Applicant’s
`
`amended description of the mark, which is being submitted with this
`
`Office Action Response, describes a “three-dimensional configuration of
`
`a bicycle frame that includes an elongated polygon shape sitting on top
`
`of the crossbar nearest to the seat post and another polygon shape set
`
`in-between the seat stay and the chain stay.  The crossbar fuses
`
`together with the down tube before it joins the head tube (emphasis
`
`added).” Unlike traditional bicycle frames, which have gaps between the
`
`crossbar and down tube and between the seat stay and the chain stay,
`
`Applicant’s bicycle frame fills in these gaps with distinctive polygon-
`
`shaped designs.  This distinctive design is significantly different
`
`from the usual bicycle frame, as is apparent from the examples of
`
`bicycles produced by other manufacturers, which are attached to
`
`Applicant’s first Office Action Response.  Additionally, the use of the
`
`polygon-shape configuration is neither functional nor conventional.      
`
`Applicant’s product configuration (the “Jet Design”) is inherently
`
`distinctive when considering the relevant and well-established
`
`“Seabrook” factors, that is, whether the Jet Design is
`    
`(1)  a “common” basic shape or design;
`    
`(2)  unique or unusual in the field in which it is used;
`
`(3)  a mere refinement of a commonly-adopted and well-known form
`of ornamentation for a particular class of goods viewed by the
`public as a dress or ornamentation for the goods;   
`(4)  capable of creating a commercial impression distinct from the
`accompanying words.
`Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196
`
`

`

`USPQ 289, 291 (CCPA 1977).
`
`    
`
`It is clear that the Jet Design is uncommon.  Where the majority
`
`of bicycles have a gap between the crossbar and the down tube, the Jet
`
`Design fuses these tubes long before they join the head tube.  The
`
`addition of the distinctive polygon shapes on top of the crossbar and
`
`in-between the seat stay and the chain stay also present a distinctly
`
`uncommon product design that is unique to the bicycle industry. 
`
`Additionally, other bicycles do not include this type of ornamentation.
`
`    
`
`If, however, the Examining Attorney continues to maintain that the
`
`Jet Design is not distinctive, then the following factors should be
`
`considered to determine if the applied-for mark has acquired
`
`distinctiveness:  copying, extent of advertising and advertising
`
`expenditures, sales success, length and exclusivity of use and
`
`unsolicited media coverage.  See, In re Steelbuilding.com, 415 F.3d
`
`1293, 1300 (Fed. Cir. 2005), citing Cicena Ltd. v. Columbia Telecomms
`
`Group, 900 F.2d 1546, 1551 (Fed. Cir. 1990).  
`
`No single factor is
`
`determinative and a showing of secondary meaning need not consider each
`
`of these elements.  Id.
`B.  
`Applicant’s Trade Dress Has Acquired Secondary Meaning.
`
`     
`
`The following facts, which are supported by the Declaration of
`
`Matt O’Donnell (the “O’Donnell Declaration”, attached as Exhibit 1),
`
`demonstrate that the applied-for mark has acquired distinctiveness.
`
`Applicant’s Continuous and Exclusive Use of the Jet
`1.  
`Design Mark Demonstrates that the Mark Has Acquired
`Distinctiveness.
`
`    
`
`Applicant has continuously and exclusively used the Jet Design
`
`mark since at least as early as September 5, 2007.  See, O’Donnell
`
`Declaration #3.  This use of the Jet Design mark for almost seven years
`
`is prima facie evidence that the mark has become distinctive, as used
`
`on or in connection with Applicant’s products in commerce, pursuant to
`
`

`

`Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).  Consequently,
`
`Applicant’s Jet Design mark has become distinctive and operates as a
`
`clear source identifier for Applicant’s products.
`
`Applicant’s Extensive Promotion of the Jet Design
`2.  
`Mark and Significant Product Sales Show that the Mark
`Has Acquired Distinctiveness.
`
` Applicant continues to aggressively advertise and promote its Jet
`
`Design mark through dealer materials, online marketing via websites
`
`owned by Applicant and its dealers, and trade-show exhibitions using
`
`the product configuration.  See, O’Donnell Declaration #6. 
`
`Representative copies of advertising and promotional materials for the
`
`Jet Design products are attached to the O’Donnell Declaration at
`
`Exhibit A, as well as to Applicant’s first Office Action Response. 
`
`As these advertising and promotional samples demonstrate, Applicant
`
`consistently advertises the Jet Design products using terms such as
`
`“ready for takeoff”, “cool looks”, and “moto styling”, which draw the
`
`consumer’s attention to the products’ distinctive design and promote
`
`the product configuration as an indicator or source.  Additionally,
`
`Applicant has enjoyed commercial success through the sale of its Jet
`
`Design products.  Since the products were first introduced to the
`
`market, Applicant’s sales have been in excess of $26.3 million (through
`
`the third quarter of 2013).   See, O’Donnell Declaration #8. Given
`
`Applicant’s significant marketing expenditures as presented in its
`
`first Office Action Response, its widespread advertising and
`
`promotional activities and considerable amount of sales as set forth
`
`the O’Donnell Declaration, there should be no question that Applicant’s
`
`Jet Design mark has acquired distinctiveness.
`
`Deliberate Copying by Competitors Support
`3.  
`Applicant’s Claim that the Jet Design Mark Has Acquired
`Secondary Meaning.
`
` Applicant has diligently policed copying of the Jet Design mark in the
`
`

`

`marketplace.  Having discovered that a competitor was selling a bicycle
`
`with a confusingly similar configuration to the Jet Design mark,
`
`Applicant contacted the competitor and negotiated a settlement in which
`
`the competitor agreed to stop manufacturing and selling the bicycle at
`
`issue.  See, O’Donnell Declaration #10.  Clearly, the competitor
`
`thought that Applicant’s trade dress had acquired secondary meaning
`
`and, by adopting confusingly similar trade dress for its own brand,
`
`hoped to benefit from consumer confusion as to the source of its
`
`bicycle. 
`
`Proof of intentional copying is probative evidence of secondary
`
`meaning.   Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 611
`
`(7th Cir. 1986); Nautilus Group, Inc. v. ICON Health and Fitness, Inc.,
`
`372 F.3d 1330, 1340 n.7 (Fed. Cir. 2004) (Secondary meaning can be
`
`established through . . . proof of intentional copying . . . “). 
`
`Consequently, the fact that a competitor copied the Jet Design mark,
`
`considered together with the evidence of Applicant’s continuing and
`
`exclusive use of the mark, significant marketing expenditures and
`
`considerable sales of its Jet Design products, demonstrate that the Jet
`
`Design mark has acquired secondary meaning.
`
`The Examining Attorney’s Specific Conclusions as to Why
`C.  
`the Applied-for Mark Is Not Distinctive Are Not Supported by
`the Facts at Hand.
`
` Applicant has overcome its burden of proving secondary meaning by
`
`applying the argument and facts above to counter the Examining
`
`Attorney’s specific conclusions on the issue of distinctiveness. 
`
`Applicant outlines this as follows.   
`
`1.   Applicant’s marketing, promotional and advertising activities have
`
`been extensive and long-term given that the Jet Design bicycle for boys
`
`is one of Trek’s most popular and widely sold lines of bicycles for
`
`kids. See O’Donnell Declaration #3, #6, #9.  Applicant has spent
`
`

`

`roughly $1,153,000 over the last three years alone marketing not just
`
`bicycles but kid’s bicycles.  Although Applicant does not track
`
`marketing expenditures by model designation, it is reasonable to assume
`
`that a substantial portion of the marketing expenditures for kid’s
`
`bikes is spent on the highly successful Jet Design product; this is
`
`particularly true, as Applicant has explained in the first Office
`
`Action Response that, in 2007, there were over $3.7 million in sales of
`
`Jet Design product and sales have increased to $4.0 million or more
`
`annually during successive years. Contrary to the Examining Attorney’s
`
`conclusion, Applicant’s marketing and advertising expenditures for the
`
`JET Design bicycle have been great.
`
`2.      Also important to acknowledge is that marketing and advertising no
`
`longer need to be done exclusively in magazines or newspapers or on
`
`product billboards.  Today, online Internet and social media marketing
`
`and promotion constitute a huge portion of the marketing and
`
`promotional strategies for small and large businesses alike.  As the
`
`countless examples of promotional marketing and advertising of the JET
`
`Design product, which are attached to the first Office Action Response
`
`and at Exhibit A to the O’Donnell Declaration, indicate, Applicant
`
`widely markets and advertises its Jet Design product via the Internet. 
`
`Internet and social media marketing in the current digital era reduce
`
`the cost of marketing and promotion compared to the traditional print-
`
`ad form of marketing.  The expenditures of many businesses, including
`
`Applicant, are not a complete measure of marketing and promotional
`
`success for a product.  Additionally, there are approximately 1,700
`
`TREK dealers across North America authorized to sell Jet Design
`
`product, all of whom have websites that market and promote the Jet
`
`Design product.  Contrary to the Examining Attorney’s conclusion, the
`
`extent of Applicant’s advertising, marketing and promotion of the Jet
`
`Design bicycle has been great.
`
`

`

`3.      There are many online reviews and critiques of the Jet Design
`
`product by both consumers and non-consumer sources alike.  
`
`Many of
`
`these reviews and critiques can be found at Exhibit 2, attached. The
`
`non-consumer sources include Momentum Mag, BikePedia and Bicycling
`
`Magazine.  The Examining Attorney asserts that “nowhere on any of
`
`Applicant’s bicycle advertisements is the mark identified, singled out,
`
`or even referenced as a source identifier for bicycles.”  Yet, it is
`
`not necessary for Applicant to identify or single out or reference with
`
`words the Jet Design as a source identifier for Applicant’s bicycles. 
`
`The design in and of itself serves as a source identifier without the
`
`need to name the mark or single it out in marketing materials. Similar
`
`to the Coca-Cola® bottle and many other distinctive product
`
`configurations, the Jet Design is distinctive at sight and need not be
`
`specifically identified in product literature in order for it to
`
`function as a mark.   The Coca-Cola Company does not specifically
`
`identify with words in marketing literature that the Coca-Cola® bottle
`
`shape is a trademark.  For example, it is unlikely that one would ever
`
`read “look for the bottle shape” when reviewing marketing materials for
`
`Coca-Cola®.  Through exclusive and continuous use and extensive
`
`marketing for many years of the Coca-Cola® bottle shape, it has come to
`
`function as a mark.   Through exclusive and continuous use and extensive
`
`marketing of the Jet Design trade dress for Applicant’s bike for boys,
`
`the Jet Design has come to function as a source identifier for
`
`Applicant. 
`
`III. Conclusion
`
`    
`
`Based upon the above arguments and the facts set forth, including
`
`those in the O’Donnell Declaration, Applicant asserts that the Jet
`
`Design mark, if not inherently distinctive, has acquired
`
`distinctiveness.  It serves as a source identifier for Applicant’s Jet
`
`

`

`Design products.  Consequently, Applicant respectfully requests that
`
`the Examining Attorney withdraw his refusal to register the Jet Design
`
`mark and approve the mark for publication on the Principal Register.
`
`EVIDENCE
`Evidence in the nature of Exhibit 1, which includes a Declaration along with examples of marketing and
`advertising materials and a copy of a warning letter sent to a competitor and Exhibit 2, which includes
`samples of online reviews and critiques of the JET Design product has been attached.
`Original PDF file:
`evi_1-7091254145-162150629_._23892.Exhibit_1_to_Argument__Part_1_.pdf
`Converted PDF file(s) (14 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Original PDF file:
`evi_1-7091254145-162150629_._23892.Exhibit_1_to_Argument__Part_2_.pdf
`Converted PDF file(s) (5 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`
`       
`

`

`Original PDF file:
`evi_1-7091254145-162150629_._23892.Exhibit_2_to_Argument.pdf
`Converted PDF file(s) (20 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Evidence-15
`Evidence-16
`Evidence-17
`Evidence-18
`Evidence-19
`Evidence-20
`
`ADDITIONAL STATEMENTS
`Description of mark
`The mark consists of a three-dimensional configuration of a bicycle frame that includes an elongated
`polygon shape sitting on top of the crossbar nearest to the seat post and another polygon shape set in-
`between the seat stay and the chain stay. The crossbar fuses together with the down tube before it joins the
`head tube. The portion of the drawing in dotted lines is not part of the mark; it merely shows the position
`of the mark on the goods.
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Mary Catherine Merz/     Date: 08/05/2014
`Signatory's Name: Mary Catherine Merz
`Signatory's Position: Attorney of record, Illinois bar member
`
`Signatory's Phone Number: 708-383-8801
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
`highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
`territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
`the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
`attorney/agent not currently associated with his/her company/firm previously represented the applicant in
`this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
`of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
`
`

`

`applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
`him/her as an associate attorn