APPLICANT: Total Repair Express, L.L.C.
MARK: TRE LOGO
SERIAL NO.:
76/399968
EXAMINING ATTORNEY: John T. Lincoski, Esq., LAW OFFICE 113
MAILING DATE OF OFFICE ACTION: 23 April 2003
FILING DATE OF APPLICATION: 25 April 2002
ADDRESS/TELEPHONE: CATHRYN A. MITCHELL,
ESQ.
MillerMitchell PC
863 STATE ROAD
PRINCETON, NJ
08540
609-921-3322
PAPER NO.: 1
ACTION NO.: 2
Applicant responds to Action No. 02 with respect to the referenced application as follows:
1. The “REPAIR MANAGEMENT” Portion of the Mark is Not Descriptive
Applicant respectfully contends that the “REPAIR MANAGEMENT” portion of the mark in connection with computer software for the purpose of management of medical and surgical instrument and equipment
inspection, maintenance, repair and refurbishment; sales and marketing of medical supplies and surgical instruments; financial analysis, automated invoice generation, repair tracking, cost and sales
analysis and commission reporting; and proactive preventative inspection and maintenance of surgical instruments@ is, at most, suggestive of the services at issue and not descriptive.
In this particular application, Applicant is seeking to register the REPAIR MANAGEMENT portion of the mark for a very specific type of goods, namely, to computer software in the field of medical and
surgical instrument and equipment inspection, maintenance, repair and refurbishment. While the mark may suggest that applicant, in some way, provides “management” services regarding “repair,”
it does not describe the particular goods sold by applicant. For example, there is no indication in the mark as to what goods to which the “REPAIR MANAGEMENT” portion of the mark are applied.
Are they refrigerators? Washing machines? Clothing? The mark does not tell us, and therefore is not descriptive of the very specialized goods involved.
The following are examples of marks which Applicant respectfully contends are more descriptive than Applicant=s mark and yet have been held to be valid trademarks:
Mark
Product or Service Cite
AEQUINE TECHNOLOGIES@ Horse hoof care products Equine Technologies, Inc. v.
Equitechnology, Inc., 68 F. 3d 542 (1st
Cir. 1995).
AACTION SLACKS@
Pants Levi
Strauss & Co. v. R.
Josephs Sportswear, Inc., 28 U.S.P.Q.2d
1464 (T.T.A.B. 1993), recons. denied,
36 U.S.P.Q.2d 1328 (T.T.A.B 1994)
AARTYPE@
Cut-out letters for artists Artype, Inc. v. Zappulla, 228 F.2d 695
(2d Cir.1956)
AAUDIO FIDELITY@ Phonograph
records Audio Fidelity, Inc. v. London Records,
Inc., 332 F.2d 577 (C.C.P.A. 1964)
ACITIBANK@
Urban Bank Citibank, N.A. v. Citibanc Group, Inc.,
724 F.2d 1540 (11th Cir. 1984),
rehearing denied, 731 F.2d 891 (11th Cir.
1984)
ACLASSIC COLA@ Soft
drink In re Classic Beverage, Inc., 6
U.S.P.Q.2d 1383 (T.T.A.B. 1988)
ADIAL-A-MATTRESS@ Mattress
sales Dial-A-Mattress Operating Corp. v
Mattress Madness, Inc., 841 F. Supp.
1339 (E.D.N.Y. 1994) recons. denied,
847 F. Supp. 18 (E.D.N.Y. 1994), (ops.
combined at 33 U.S.P.Q.2d 1961, 1966
(E.D.N.Y. 1994))
2. In the alternative – Section 2 f
In the alternative, Applicant requests registration of the referenced portion of the mark pursuant to §2(f) of the Lanham Act, on the grounds that the “REPAIR MANAGEMENT” portion of the mark has
acquired distinctiveness as a result of the Applicant’s exclusive and continuous use of the portion mark. Applicant has used the portion of the mark in commerce for nearly five (5) years in
connection with the goods contained in application.
Applicant respectfully requests reconsideration of its application in light of the above, and the fact that the within portion of the mark is suggestive and not descriptive of the goods in
question.
DECLARATION
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001 and that such willful false statements
may jeopardize the validity of the application or any resulting registration, declares that he is properly authorized to execute this Response to a Second Office Action on behalf of the Applicant and
that all statements made of his own knowledge are true and that all statements made on information and belief are believed to be true.
Dated: 31 October
2003
Total Repair Express, L.L.C., Applicant
By: /Christian E. Mills/
Christian E. Mills, President
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