| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76481830 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Refusal – Descriptiveness – Section 2(e)(1) – Class 6
The Examining Attorney has maintain his refusal to register the mark VAULTZ in connection with the goods identified in the instant application in International Class 6. In support of his refusal, the Examining Attorney argues that the proposed mark is simply a novel spelling of the term “vault” and that the term “vault” merely descriptive of the Class 6 goods in the instant application. For the following reasons, Applicant, however, avers that the refusal under Section 2(e)(1) is inappropriate and respectfully requests that it be withdrawn.
First, the mark VAULTZ is not simply a novel spelling of the term “vault” and there is no evidence in the record to suggest that consumers would recognize the proposed mark as a misspelled term rather than as a newly coined and distinctive word. Assuming that the mark VAULTZ would be understood by consumers to be a misspelled term, consumers would just as likely interpret it as a misspelling of the pluralized term “volts” as they would be to interpret it as a misspelling of the pluralized term “vaults”. It is axiomatic that there is no correct way to pronounce trademarks. Thus, the meaning of the mark VAULTZ is unclear at best. In no event would a consumer be likely to interpret the proposed mark to be a misspelling of the singular term “vault”. Applicant’s goods are marketed and packaged to be sold as individual units rather than as lots. Therefore, it would be imprecise to use a pluralized term to describe one of the Applicant’s goods. The use of a plural term where a singular term would be appropriate emphasizes the trademark nature of the mark.
Second, the term “vault” does not merely describe the identified Class 6 goods. Applicant’s goods are relatively small portable items. A “vault” is defined and readily understood to identify a room or secure compartment for the safekeeping of values. When people think of a “vault” they think of bank vaults. A “vault” differs from a safe by virtue of its size and dimensions. Thus, the identified Class 6 goods would not be described as vaults. Rather than acknowledging this discrepancy, the Examining Attorney manipulates the definition of “vault” by incorrectly defining the term “compartment” found in a definition of the term “vault”. This manipulation of the definition of the terms used to define “vault” give expansive interpretation of one of the terms used to define a “vault” gives an overly broad meaning to the term “vault” which runs counter to its plain meaning. The noun “compartment” is defined as “(1) one of the parts or spaces into which an area is subdivided; or (2) a separate room, section, or chamber”. www.dictionary.com. The identified goods are not a separate room, nor are they separate sections of an area, nor are they separate chambers. They are portable items that are not intended to be nor could they be considered a separate room, section, or chamber of anything else.
Lastly, the applicant has proffered several Web pages in support of the instant refusal. However, the uses of the tern “vault” in this evidence is hardly persuasive given the manner in which the term “vault” is used and, in fact, eviscerates the Examining Attorney’s arguments. In nearly every instance the term “vault” is used in advertising copy as puffery of the goods that are offered for sale. Such use does not show the term “vault” being used descriptively. In addition, the term “vault” is universally preceded by adjectives such as “personal”, “personalized”, or “portable” which is an acknowledgement that the term “vault” by itself is inaccurate to describe the goods being offered for sale. Otherwise, there would be no need to add these modifying terms. Accordingly, the evidence made of record by the Examining Attorney in this case is wholly insufficient to show that either the trade or purchasers commonly use the proposed mark or the term “vault” to merely describe Applicant’s goods.
In sum, the Examining Attorney reaches his conclusion by interpreting the proposed marks as a misspelling of the term “vaults” rather than a coined term or a misspelling of another term. He then morphs the plural form “vaults” to the singular form “vault”. Next, he expands the definition of the term “vault” by what would at best be characterized as a questionable interpretation of the definition of one of the terms (“compartment”) that is found in the second definition of the term “vault” in order to cover the identified Class 6 goods. Even if the Examining Attorney is correct in his arguments, this is exactly the type of multi-stage reasoning that would support a finding that a mark is suggestive rather than merely descriptive. See In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978) (“if one must exercise mere thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than descriptive”). In view of the above, Applicant believes that the proposed mark is undoubtedly entitled to registration on the Principal Register. Moreover, there has been sufficient uncertainty in the prosecution history of this application to suggestion that doubt exists as to the propriety of the Section 2(e)(1) refusal. Because of the thin line between suggestive and descriptive marks, it is the Office’s practice to resolve doubt in an Applicant’s favor and publish marks for opposition. See In re Morton-Norwich Products, Inc. 209 USPQ 791 (TTAB 1981); see also In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974, 1976 (TTAB 1994). |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jmenker/ |
| SIGNATORY NAME | James R. Menker |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATURE DATE | 11/18/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Nov 18 18:00:14 EST 2005 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0051118180014028199-76481 830-3202bd39c63bdeb270581 65b832de04efd-N/A-N/A-200 51118175340177270 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Refusal – Descriptiveness – Section 2(e)(1) – Class 6
The Examining Attorney has maintain his refusal to register the mark VAULTZ in connection with the goods identified in the instant application in International Class 6. In support of his refusal, the Examining Attorney argues that the proposed mark is simply a novel spelling of the term “vault” and that the term “vault” merely descriptive of the Class 6 goods in the instant application. For the following reasons, Applicant, however, avers that the refusal under Section 2(e)(1) is inappropriate and respectfully requests that it be withdrawn.
First, the mark VAULTZ is not simply a novel spelling of the term “vault” and there is no evidence in the record to suggest that consumers would recognize the proposed mark as a misspelled term rather than as a newly coined and distinctive word. Assuming that the mark VAULTZ would be understood by consumers to be a misspelled term, consumers would just as likely interpret it as a misspelling of the pluralized term “volts” as they would be to interpret it as a misspelling of the pluralized term “vaults”. It is axiomatic that there is no correct way to pronounce trademarks. Thus, the meaning of the mark VAULTZ is unclear at best. In no event would a consumer be likely to interpret the proposed mark to be a misspelling of the singular term “vault”. Applicant’s goods are marketed and packaged to be sold as individual units rather than as lots. Therefore, it would be imprecise to use a pluralized term to describe one of the Applicant’s goods. The use of a plural term where a singular term would be appropriate emphasizes the trademark nature of the mark.
Second, the term “vault” does not merely describe the identified Class 6 goods. Applicant’s goods are relatively small portable items. A “vault” is defined and readily understood to identify a room or secure compartment for the safekeeping of values. When people think of a “vault” they think of bank vaults. A “vault” differs from a safe by virtue of its size and dimensions. Thus, the identified Class 6 goods would not be described as vaults. Rather than acknowledging this discrepancy, the Examining Attorney manipulates the definition of “vault” by incorrectly defining the term “compartment” found in a definition of the term “vault”. This manipulation of the definition of the terms used to define “vault” give expansive interpretation of one of the terms used to define a “vault” gives an overly broad meaning to the term “vault” which runs counter to its plain meaning. The noun “compartment” is defined as “(1) one of the parts or spaces into which an area is subdivided; or (2) a separate room, section, or chamber”. www.dictionary.com. The identified goods are not a separate room, nor are they separate sections of an area, nor are they separate chambers. They are portable items that are not intended to be nor could they be considered a separate room, section, or chamber of anything else.
Lastly, the applicant has proffered several Web pages in support of the instant refusal. However, the uses of the tern “vault” in this evidence is hardly persuasive given the manner in which the term “vault” is used and, in fact, eviscerates the Examining Attorney’s arguments. In nearly every instance the term “vault” is used in advertising copy as puffery of the goods that are offered for sale. Such use does not show the term “vault” being used descriptively. In addition, the term “vault” is universally preceded by adjectives such as “personal”, “personalized”, or “portable” which is an acknowledgement that the term “vault” by itself is inaccurate to describe the goods being offered for sale. Otherwise, there would be no need to add these modifying terms. Accordingly, the evidence made of record by the Examining Attorney in this case is wholly insufficient to show that either the trade or purchasers commonly use the proposed mark or the term “vault” to merely describe Applicant’s goods.
In sum, the Examining Attorney reaches his conclusion by interpreting the proposed marks as a misspelling of the term “vaults” rather than a coined term or a misspelling of another term. He then morphs the plural form “vaults” to the singular form “vault”. Next, he expands the definition of the term “vault” by what would at best be characterized as a questionable interpretation of the definition of one of the terms (“compartment”) that is found in the second definition of the term “vault” in order to cover the identified Class 6 goods. Even if the Examining Attorney is correct in his arguments, this is exactly the type of multi-stage reasoning that would support a finding that a mark is suggestive rather than merely descriptive. See In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978) (“if one must exercise mere thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than descriptive”).
In view of the above, Applicant believes that the proposed mark is undoubtedly entitled to registration on the Principal Register. Moreover, there has been sufficient uncertainty in the prosecution history of this application to suggestion that doubt exists as to the propriety of the Section 2(e)(1) refusal. Because of the thin line between suggestive and descriptive marks, it is the Office’s practice to resolve doubt in an Applicant’s favor and publish marks for opposition. See In re Morton-Norwich Products, Inc. 209 USPQ 791 (TTAB 1981); see also In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974, 1976 (TTAB 1994).