| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76668894 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration under Trademark Act Section 2(e)(1), alleging that Applicant’s mark is merely descriptive of the goods listed in the registration. Applicant disagrees that its mark DUAL MODE CAPACITOR is merely descriptive of capacitors, and respectfully requests that the Section 2(e)(1) refusal be withdrawn.
A mark is merely descriptive only if it immediately conveys an idea of the ingredients, qualities, characteristics, functions, or features of the product. Stix Prods., Inc. v. United Merchants Mfrs., Inc., 160 U.S.P.Q. 777, 785 (S.D.N.Y. 1981); In re Birth-Crest Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979). If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristic the term indicates, the term is suggestive rather than merely descriptive. In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978). Applicant believes the Examining Attorney has not established that the mark DUAL MODE CAPACITOR, in its entirety, immediately conveys a quality, characteristic, function, or feature of capacitors.
The commercial impression of a trademark is derived from it as a whole when evaluating whether it is descriptive. Estate of P.D. Beckwith, Inc., v. Commissioner of Patents, 252 U.S. 538, 40 S. Ct. 414, 417, 64 L. Ed. 705 (1920). A mark comprised of arguably descriptive individual components is registrable if the combination of the terms create a unitary mark with an incongruous meaning in relation to the goods. In re Colonial Stores Inc., 157 USPQ 382, 384 (C.C.P.A. 1968). Even assuming that one or more of the individual elements “DUAL,” “MODE” or “CAPACITOR” has descriptive significance, Applicant submits that the combination of “DUAL,” “MODE” and “CAPACITOR” results in a unitary mark which is incongruous and arbitrary.
A designation does not have to be devoid of all meaning in relation to the goods in order to be registrable. TMEP 1209.01(a). A mark is not merely descriptive unless descriptiveness is its principal significance. Glamorene Prods. Corp. v. Boyle-Midway, Inc., 188 U.S.P.Q. 145, 164 (S.D.N.Y. 1975). Even if one or more of the individual elements “DUAL” “MODE” or “CAPACITOR” has descriptive significance, Applicant submits that the principal significance of the mark is the arbitrary and unique commercial impression conveyed by the unitary term DUAL MODE CAPACITOR. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jhk/ |
| SIGNATORY'S NAME | Jeffrey H. Kaufman |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 09/26/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 26 17:33:35 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 070926173335330874-766688 94-40042ee5a44e213f5c761e b14447ff4f4f8-N/A-N/A-200 70926172755276537 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney has refused registration under Trademark Act Section 2(e)(1), alleging that Applicant’s mark is merely descriptive of the goods listed in the registration. Applicant disagrees that its mark DUAL MODE CAPACITOR is merely descriptive of capacitors, and respectfully requests that the Section 2(e)(1) refusal be withdrawn.
A mark is merely descriptive only if it immediately conveys an idea of the ingredients, qualities, characteristics, functions, or features of the product. Stix Prods., Inc. v. United Merchants Mfrs., Inc., 160 U.S.P.Q. 777, 785 (S.D.N.Y. 1981); In re Birth-Crest Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979). If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristic the term indicates, the term is suggestive rather than merely descriptive. In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978). Applicant believes the Examining Attorney has not established that the mark DUAL MODE CAPACITOR, in its entirety, immediately conveys a quality, characteristic, function, or feature of capacitors.
The commercial impression of a trademark is derived from it as a whole when evaluating whether it is descriptive. Estate of P.D. Beckwith, Inc., v. Commissioner of Patents, 252 U.S. 538, 40 S. Ct. 414, 417, 64 L. Ed. 705 (1920). A mark comprised of arguably descriptive individual components is registrable if the combination of the terms create a unitary mark with an incongruous meaning in relation to the goods. In re Colonial Stores Inc., 157 USPQ 382, 384 (C.C.P.A. 1968). Even assuming that one or more of the individual elements “DUAL,” “MODE” or “CAPACITOR” has descriptive significance, Applicant submits that the combination of “DUAL,” “MODE” and “CAPACITOR” results in a unitary mark which is incongruous and arbitrary.
A designation does not have to be devoid of all meaning in relation to the goods in order to be registrable. TMEP 1209.01(a). A mark is not merely descriptive unless descriptiveness is its principal significance. Glamorene Prods. Corp. v. Boyle-Midway, Inc., 188 U.S.P.Q. 145, 164 (S.D.N.Y. 1975). Even if one or more of the individual elements “DUAL” “MODE” or “CAPACITOR” has descriptive significance, Applicant submits that the principal significance of the mark is the arbitrary and unique commercial impression conveyed by the unitary term DUAL MODE CAPACITOR.