Response to Office Action

Refusal: Mark Is Descriptive

The Examining Attorney refused registration of Applicant's mark pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the basis that it merely describes a feature of applicant's services.  Applicant respectfully disagrees, and argues as follows:

It is the Examining Attorney's burden to establish a prima facie case that the mark sought to be registered is descriptive.  In re Etablssments Darty el Fils 225 U.S.P.Q. 652 (Fed. Cir. 1985).  Any doubts about the "merely descriptive" character of a mark is to be resolved in favor of the Applicant.  In re Shotts 17 U.S.P.Q. 363, 365 (T.T.A.B. 1983).

For a proposed mark to be merely descriptive under Section 2(e)(1) of the Lanham Act, it must forthwith convey an immediate idea of an ingredient, quality, characteristic, function, or feature of the services.  In re Bright-Crest 204 USPQ 591 (T.T.A.B. 1979).  This "immediate idea" must be conveyed with some "degree of particularity."  In re Entenmann's Inc., 15 USPQ 2d 1750, 1751 (T.T.A.B. 1990).  However, if, when the goods or services are encountered under the mark, the consumer must engage in a multistage reasoning process or the utilization of imagination, thought or perception is required in order to determine what attributes of the goods or services the mark indicates, then the mark is suggestive.  In re Abcor Development Corp., 200 USPQ 215, 217-218 (C.C.P.A. 1978); see also Abercrombie & Firtch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir. 1976) ("A term is suggestive if it requires imagination, thought and perception to reach a conclusion a to the nature of goods.  A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.")

In making her merely descriptiveness rejection, the Examiner improperly dissected Applicant's mark.  The Supreme Court explained that "[t]he commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.  For this reason, it should be considered in its entirety…."  Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-6, 40 S.Ct. 414, 417, 64 L.Ed 705 (1920) (emphasis added).  The Federal Circuit echoed this common-sense principal in its subsequent holding that, since all marks tend to be perceived in their entireties, all components of a mark must be given equal weight.  See Opryland USA, Inc. v.  Great America Music Show Inc., 970 F.2d 847, 851, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992).  The Federal Circuit further explained that "[w]hen it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared."  Id. (emphasis added).  Accordingly, "[a] mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine likelihood of confusion.  It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important."  3 McCarthy On Trademarks, § 23:41 (emphasis added).

Even when a portion of a mark has been disclaimed, it may not be dissected.  "A disclaimer does not remove the disclaimed matter from the mark.  The mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other marks."  TMEP § 1213.10 (emphasis added).  The rationale for this rule is that it is the entire mark, including the disclaimed matter, which is encountered by consumers in the marketplace.  Consumers are not going to know that a portion of a mark has been disclaimed, but rather they will view the mark in its entirety.  Id.

Here, the Examining Attorney contends that Applicant's mark is descriptive because "[t]he wording AUCTION [and] MONITOR would be understood to describe something that tracks or monitors auction data … [and w]hen the mark is applied to the applicant's services the user would be immediately informed that the [applicant's] services feature tracking sales and quality information for sales, namely, auctions."  In making this contention, the Examiner is improperly dissecting Applicant's unitary mark.   However, it is well established that a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods.  See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool).   Applicant's unitary mark AUCTIONMONITOR, similar to the SNO-RAKE mark, is not merely descriptive, but rather is suggestive.  Taking into consideration that Applicant's amended recitation covers both on-line and "brick and mortar" sales of goods, and given the multiple meanings of the word "monitor," Applicant's mark creates the bizarre impression that Applicant deploys a vast armada of agents to specific retail locations to report back to end users on the sale of certain items.

Further, in making the making a merely descriptive rejection, the applicant is required to make that determination in relationship to the goods or services as they are set forth in the application.  TMEP §1209.0(b) ("The determination of whether or not a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract.")   Here, Applicant's application makes no mention of auctions, but rather references online and retail sales by others.  The Examiner has made an assumption not supported by the evidence in the record and has based her descriptiveness rejection on that assumption.  This is not appropriate.  TMEP §1209.02  ("The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary. See In re Noble Co., 225 USPQ 749, 750 (TTAB 1985)")  If the examiner were not to make such an assumption, Applicant's mark is inherently distinctive and, as such, registrable, on the Principal Register.