Response to Office Action

Mark: MOBILE FORENSIC ANALYST

Serial No.: 76/506,863

Text of Response to Office Action Addressing Descriptiveness Refusal

2(e)(1) Refusal

The Examining Attorney refused registration of Applicant's mark on the Principal Register because she concluded that the proposed mark is a "descriptive characteristic of the goods". The Examining Attorney concluded that "the entire mark is descriptive." Applicant respectfully submits that the mark is not merely descriptive of Applicant's goods.

Applicant's goods are software for monitoring and recording the security of a network and computers on the network. Applicant's mark is MOBILE FORENSIC ANALYST. Applicant respectfully submits that the subject mark is not merely descriptive when it is considered in its entirety.

Even if the three terms comprising Applicant's mark are descriptive as the Examining Attorney argues, these terms create a composite mark that is unique and non-descriptive. The result is that the commercial impression created by MOBILE FORENSIC ANALYST is arbitrary or at most suggestive of the associated software. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding that the combination of the admittedly descriptive terms SUGAR and SPICE resulted in the composite mark SUGAR & SPICE that was not merely descriptive). W.G. Reardon Laboratories, Inc. v. B.&B. Exterminators, Inc., 71 F.2d 515 (4th Cir. 1934) (holding that the combination of the two words MOUSE and SEED into the composite mark MOUSE SEED created a non-descriptive mark for rodent exterminators). When Applicant's mark is considered as a whole, Applicant's mark is not merely descriptive of a characteristic, use, function, or feature of Applicant's software because it does not immediately convey information about a characteristic, use, function, or feature of the goods with which it is being used. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Bright-Crest Ltd., 204 USPQ 591 (TTAB 1979). The mark is a unique term and as a whole "requires some operation of the imagination" to connect it with the goods, so it is at most suggestive. Abcor Development, 200 USPQ at 218. Clearly, imagination, thought and perception are required to reach a conclusion as to Applicant's goods. Applicant respectfully submits that the mark MOBILE FORENSIC ANALYST is not merely descriptive.

At most, Applicant's mark may be suggestive of a characteristic, use, function, or feature of the goods described above; however, a mark does not have to be devoid of all meaning in relation to the goods or services to be registrable. TMEP Section §1209.01(a). There is often a thin line between a suggestive and a merely descriptive designation, and it is often difficult to determine the permissible scope of suggestiveness and the impermissible descriptiveness of a term. However, the fact that the mark may convey some information about the goods or services offered in connection with the mark is not fatal to the mark's entitlement to trademark protection and registration. In re Reynolds Metals Co., 480 F.2d 902 (CCPA 1972). The line between descriptive and suggestive marks is not easily drawn. LeBlume Import Co. v. Coty, 293 F. 344 (2d Cir. 1923). Indeed, any suggestive mark must have some degree of descriptiveness or it would be incapable of the suggestion. Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144 (3d Cir.), cert. denied, 346 U.S. 867 (1953).

The Trademark Office bears the burden of showing that a mark is merely descriptive of goods or services. In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Applicant respectfully suggests that the Trademark Office has failed to meet this burden. See Binney & Smith Inc. v. Magic Marker Industries, Inc., 222 USPQ 1003 (TTAB 1984) (holding LIQUID CRAYON neither common descriptive name, nor merely descriptive, nor deceptively misdescriptive of coloring kits or markers). Applicant submits that the Examining Attorney has not demonstrated that Applicant's mark, when considered in its entirety, is merely descriptive. Any doubt must be resolved in favor of publication. In re Atavio Inc., 25 USPQ2d 1361, 1363 (TTAB 1992); In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984). Accordingly, Applicant respectfully requests that the 2(e)(1) refusal be withdrawn.

Applicant respectfully submits that it has responded satisfactorily to the Office Action, and suggests that this application is now in condition for publication.

Submitted April 23, 2004

/Pamela S. Ratliff/