| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76529691 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
RESPONSE TO OFFICE ACTION76/529691
The August 3, 2007 Office Action advises of a possible refusal to register the trademark “RANDOM ACTS OF KINDNESS” in the following classifications:
1. IC 016, Printed instructions, educational and teaching materials in the area of martial arts, namely journals for recording acts of kindness, books, circulars, posters, , notebooks, printed lessons, pertaining to martial arts, loose leaf binders, manuals and news bulletins; and
2. IC041, Educational services in the field of martial arts, namely conducted classes, seminars and workshops and conferences.
The Office Action indicates that the proposed Mark is merely informational matter or an informational slogan not functioning as a trademark to identify and distinguish applicant’s goods and services and to indicate their source. More specifically the Office Action states that the proposed Mark is merely a “ slogan of social awareness and/or social consciousness.”
As evidence of this position, a number of articles from online sources are attached to the Office Action that purports to reflect the common usage of the proposed Mark. These include: i) a magazine that reports actions of kindness; ii) a book with motivational writings on kindness; iii) a definition of random acts of kindness as “…those sweet or lovely things we do for no reason except that, momentarily, the best of our humanity has sprung into full bloom”; and iv) a website random acts of kindness listing 110 categories of kindness (e.g. flowers, angels, roadside, cookies, kidney generous, homeless, kitty, Santa, tickets, beautiful, roadside, life, purity, remembrance, and wet feet).
RESPONSE Trademark Protection A slogan is capable of trademark significance and protection if it is used to identify and distinguish the seller's goods or services from those of others. See Allstate Ins. Co. v. Allstate Inc., 307 F. Supp 1161, 163 U.S. P.Q. 597 (N.D. Tex. 1969); See also Anheuser-Busch, Inc. v Customer Co., 947 F. Supp. 422, 39 U.S.P.Q. 2d 1850 (N.D. Cal 1996). Here, the trademark "RANDOM ACTS OF KINDNESS" serves to distinguish Applicant's printed martial arts materials and services from that of others in the martial arts industry. Applicant uses the Mark as a source identifier and in a manner to differentiate its printed materials and services rather than as a source of information about its goods.
The registration by the United States Patent and Trademark Office of a slogan is common. See for example:
PASS IT ON, Registration No. 2849082, IC 16. Paper Goods and printed matter, namely, printed boards of paper or vinyl for placement on billboards, all on the subject of promoting pubic awareness of the need to do good, to promote ethical and character values, to be a good citizen and to perform community services and charitable activities.
PASS IT ON, Registration No. 2710564, IC 16. Magazine in the field of music for children.
LIVE, LEARN INSPIRE, Registration No. 2598348. IC 16 Printed matter and publications, namely, newspapers and newspaper columns, magazines and magazine columns, informational brochures, informational pamphlets, newsletters, books, series of nonfiction books, and printed instructional and teaching materials, all in the field of inspirational stories, self-help and practical advice, self-awareness, personal and professional inspiration, and motivation, posters, post cards, stationary, note pads.
And most importantly:
RANDOM ACTS OF KINDNESS, Registration No.0299484, IC 16. Reading materials and written communications namely, greeting cards, a series of books posters and bookmarks.
Test for “Merely Descriptive”
The test to determine whether a Mark is merely descriptive or informational is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). This determination must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the Mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
The applicant’s use of the Mark is in the area or field of martial arts. "Random Acts of Kindness" is not an apparent quality, characteristic, function, ingredient, attribute or feature of martial arts. The martial arts educational services and products are associated with the development of ethics and values in tomorrow’s martial artists. Further, there is no evidence of record that Applicant has used or is using "RANDOM ACTS OF KINDNESS" descriptively, in respect to Applicant's educational products and services. As such, the Mark in the area or field of martial arts is not merely descriptive; but, is a source identifier.
A Suggestive Mark
The Mark "RANDOM ACTS OF KINDNESS" does not describe the products or services of the Applicant. It may however suggest that there is a unique type of products and services provided by Applicant in martial arts educational products and services. It may also simply be an unrelated, arbitrary designation associated with martial arts educational products and services.
When confronted with the Mark "RANDOM ACTS OF KINDNESS," consumers are required to exercise some degree of imagination to perceive any significance of the term as it relates to Applicant's educational products and services and combat and does not directly describe anything normally associated with Applicant's educational products and services. General Shoe Corp. v Rosen 111 F.2d 95 (4th Cir. 1940.
At the very lease, the Mark is suggestive, inherently distinctive, and capable of registration
An Arbitrary Mark
Notwithstanding the above even a vivid imagination may not be able to attach significance to the Mark to the educational services and products associated with the Mark and the relationship between random acts of kindness and martial arts is arbitrary. “Random Acts of Kindness” does not describe a method of self defense or a field of martial arts.
As stated in Wikapedia, “Martial arts are systems of codified practices and traditions of training for combat.” One need only do a simple web search to find a plethora of information relating martial arts to fighting or combat. See Exhibit A.
Thus, there is a mismatch between the Mark and educational services and products in the field of martial arts. A Mark is arbitrary when everyday words are mismatched to the product or services that a Mark represents. That is, when an everyday phrase is applied it to a setting where it is not naturally placed, there is a higher level of distinctiveness within its product market. Kellogg Co V. Toucan Golf, Inc. 337 F3d 616 (6th Cir 2003).
Evidence of the Use of the Mark by Others The attachments to the Office Action do not address the targeted consumers of Applicant's educational services and products and, accordingly, their understanding of the term "random acts of kindness" is not relevant to the present proceeding. In re Johanna Farms Inc., 8 U.S.P.Q. 2d 1408, 1412 (TTAB 1988); Magic Wand, Inc. v. RDB Inc., 19 U.S.P.Q. 2d 1551, 1554 (Fed. Cir. 1991). Applicant targets its educational services and products primarily to teachers and students, of martial arts. As demonstrated by the attached letters submitted as evidence, the relevant public understands that Applicant is using the Mark as a source identifier of Applicant’s educational services and products.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS2\EXPORT15\765\296\76529691\xml1\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Internet page associating Martial Arts with fighting |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /RMR/ |
| SIGNATORY'S NAME | Ronald M. Rubin |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 02/01/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 01 17:33:06 EST 2008 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 080201173306624164-765296 91-4101f7649726aa3474a843 3cb9c79ad6fc-N/A-N/A-2008 0201172323973054 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
RESPONSE TO
OFFICE ACTION76/529691
The August 3, 2007 Office Action advises of a possible refusal to register the trademark “RANDOM ACTS OF KINDNESS” in the following classifications:
1. IC 016, Printed instructions, educational and teaching materials in the area of martial arts, namely journals for recording acts of kindness, books, circulars, posters, , notebooks, printed lessons, pertaining to martial arts, loose leaf binders, manuals and news bulletins; and
2. IC041, Educational services in the field of martial arts, namely conducted classes, seminars and workshops and conferences.
The Office Action indicates that the proposed Mark is merely informational matter or an informational slogan not functioning as a trademark to identify and distinguish applicant’s goods and services and to indicate their source. More specifically the Office Action states that the proposed Mark is merely a “ slogan of social awareness and/or social consciousness.”
As evidence of this position, a number of articles from online sources are attached to the Office Action that purports to reflect the common usage of the proposed Mark. These include:
i) a magazine that reports actions of kindness;
ii) a book with motivational writings on kindness;
iii) a definition of random acts of kindness as “…those sweet or lovely things we do for no reason except that, momentarily, the best of our humanity has sprung into full bloom”; and
iv) a website random acts of kindness listing 110 categories of kindness (e.g. flowers, angels, roadside, cookies, kidney generous, homeless, kitty, Santa, tickets, beautiful, roadside, life, purity, remembrance, and wet feet).
RESPONSE
Trademark Protection
A slogan is capable of trademark significance and protection if it is used to identify and distinguish the seller's goods or services from those of others. See Allstate Ins. Co. v. Allstate Inc., 307 F. Supp 1161, 163 U.S. P.Q. 597 (N.D. Tex. 1969); See also Anheuser-Busch, Inc. v Customer Co., 947 F. Supp. 422, 39 U.S.P.Q. 2d 1850 (N.D. Cal 1996). Here, the trademark "RANDOM ACTS OF KINDNESS" serves to distinguish Applicant's printed martial arts materials and services from that of others in the martial arts industry. Applicant uses the Mark as a source identifier and in a manner to differentiate its printed materials and services rather than as a source of information about its goods.
The registration by the United States Patent and Trademark Office of a slogan is common. See for example:
PASS IT ON, Registration No. 2849082, IC 16. Paper Goods and printed matter, namely, printed boards of paper or vinyl for placement on billboards, all on the subject of promoting pubic awareness of the need to do good, to promote ethical and character values, to be a good citizen and to perform community services and charitable activities.
PASS IT ON, Registration No. 2710564, IC 16. Magazine in the field of music for children.
LIVE, LEARN INSPIRE, Registration No. 2598348. IC 16 Printed matter and publications, namely, newspapers and newspaper columns, magazines and magazine columns, informational brochures, informational pamphlets, newsletters, books, series of nonfiction books, and printed instructional and teaching materials, all in the field of inspirational stories, self-help and practical advice, self-awareness, personal and professional inspiration, and motivation, posters, post cards, stationary, note pads.
And most importantly:
RANDOM ACTS OF KINDNESS, Registration No.0299484, IC 16. Reading materials and written communications namely, greeting cards, a series of books posters and bookmarks.
Test for “Merely Descriptive”
The test to determine whether a Mark is merely descriptive or informational is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). This determination must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the Mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
The applicant’s use of the Mark is in the area or field of martial arts. "Random Acts of Kindness" is not an apparent quality, characteristic, function, ingredient, attribute or feature of martial arts. The martial arts educational services and products are associated with the development of ethics and values in tomorrow’s martial artists. Further, there is no evidence of record that Applicant has used or is using "RANDOM ACTS OF KINDNESS" descriptively, in respect to Applicant's educational products and services. As such, the Mark in the area or field of martial arts is not merely descriptive; but, is a source identifier.
A Suggestive Mark
The Mark "RANDOM ACTS OF KINDNESS" does not describe the products or services of the Applicant. It may however suggest that there is a unique type of products and services provided by Applicant in martial arts educational products and services. It may also simply be an unrelated, arbitrary designation associated with martial arts educational products and services.
When confronted with the Mark "RANDOM ACTS OF KINDNESS," consumers are required to exercise some degree of imagination to perceive any significance of the term as it relates to Applicant's educational products and services and combat and does not directly describe anything normally associated with Applicant's educational products and services. General Shoe Corp. v Rosen 111 F.2d 95 (4th Cir. 1940.
At the very lease, the Mark is suggestive, inherently distinctive, and capable of registration
An Arbitrary Mark
Notwithstanding the above even a vivid imagination may not be able to attach significance to the Mark to the educational services and products associated with the Mark and the relationship between random acts of kindness and martial arts is arbitrary. “Random Acts of Kindness” does not describe a method of self defense or a field of martial arts.
As stated in Wikapedia, “Martial arts are systems of codified practices and traditions of training for combat.” One need only do a simple web search to find a plethora of information relating martial arts to fighting or combat. See Exhibit A.
Thus, there is a mismatch between the Mark and educational services and products in the field of martial arts. A Mark is arbitrary when everyday words are mismatched to the product or services that a Mark represents. That is, when an everyday phrase is applied it to a setting where it is not naturally placed, there is a higher level of distinctiveness within its product market. Kellogg Co V. Toucan Golf, Inc. 337 F3d 616 (6th Cir 2003).
Evidence of the Use of the Mark by Others
The attachments to the Office Action do not address the targeted consumers of Applicant's educational services and products and, accordingly, their understanding of the term "random acts of kindness" is not relevant to the present proceeding. In re Johanna Farms Inc., 8 U.S.P.Q. 2d 1408, 1412 (TTAB 1988); Magic Wand, Inc. v. RDB Inc., 19 U.S.P.Q. 2d 1551, 1554 (Fed. Cir. 1991). Applicant targets its educational services and products primarily to teachers and students, of martial arts. As demonstrated by the attached letters submitted as evidence, the relevant public understands that Applicant is using the Mark as a source identifier of Applicant’s educational services and products.
