Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76675957 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney has required Applicant to disclaim exclusive use of the term SAFETY because she finds it to be merely descriptive of Applicant's services.  Based on the information and reasons below, Applicant respectfully requests that the Examining Attorney reconsider and withdraw her disclaimer requirement.  The term SAFETY is not merely descriptive of Applicant's services.  Additionally, Applicant's mark is a unitary composite mark, so no disclaimer of the term is necessary.

 

I.          THE EXAMINING ATTORNEY HAS FAILED TO CARRY HER BURDEN OF PROOF

            The Examining Attorney is respectfully reminded that Section 1209.02 of the Trademark Manual of Examining Procedure (TMEP) states in relevant part:

The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary… If the examining attorney refuses registration, he or she should support the refusal with appropriate evidence…

 

In all cases the examining attorney should try to make the Office action as complete as possible, so that the applicant may respond appropriately.

 

            Clearly, this principal applies to disclaimers where the issue is mere descriptiveness.

            In this case, however, the Examining attorney merely asserts that Applicant's mark is used to promote vehicles with certain "safety features," and so a disclaimer is necessary.  However, she fails to point to any evidence that supports her assertion.   Such blanket statements, without more, cannot serve to firmly categorize an element of a mark as merely descriptive.  Accordingly, the Examining Attorney has failed to carry her burden of proof, and the disclaimer requirement should be withdrawn.

 

II          THE TERM "SAFETY" IN APPLICANT'S MARK IS NOT MERELY DESCRIPTIVE

The Examining Attorney is respectfully reminded that "A term is merely descriptive within the meaning of Section 2(e)(1) if it forthwith conveys an immediate [emphasis added] idea of an ingredient, quality, characteristic, function or feature of the product in connection with which it is used." In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).  In re Abcor Development Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (CCPA 1978):,.  Additionally, the term "merely" is to be taken in its ordinary meaning of "only" or "solely."  When a mark has two meanings - one descriptive, and the other suggestive - the mark is suggestive, as the mark is not "merely" descriptive. See, e.g.: In re Quick -Print Copy Shop, Inc. 203 USPQ 505 (CCPA 1980) ("Merely" means "only".); In re Colonial Stores, Inc., 157 USPQ 382 (CCPA 1968). (SUGAR & SPICE for bakery products also reminiscent of nursery rhyme.)

Further, the Examining Attorney is reminded that "A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods or services."  Stix Products, Inc. v. United Merchants & Mfgrs., Inc., 160 USPQ 777 (S.D. NY 1968).

In other words, if the mark does not convey an immediate idea about the nature of the product or service, then the term is "suggestive."

The term SAFETY in Applicant’s mark is not merely descriptive, but rather, it is suggestive because 1) the term SAFETY fails to convey an immediate idea about the nature of Applicant's promotional services, and 2) the term forms part of the ambiguous, incongruous and suggestive, unitary composite mark "TRUTH IN SAFETY."

In fact, this case appears similar to the decision in In re Shutts, 217 USPQ 363 (TTAB 1983) wherein the Board held that SNO-RAKE was not merely descriptive of a snow removal hand tool because the mark was an incongruous word combination that caused a moment of "mental pause" on the part of the consumer.  Id. at 364-365.  Similarly, consumers encountering Applicant's mark "TRUTH IN SAFETY" must also think for a moment before any meaning conveyed by the mark forms in their mind.

Accordingly, because the term SAFETY is not merely descriptive of Applicant's services, the disclaimer requirement should be withdrawn.

 

III.       APPLICANT'S MARK IS UNITARY SO A DISCLAIMER IS INAPPROPRIATE

            As the Examining Attorney is likely aware, TMEP Section 1213.05 states in relevant part:

A mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. That is, the elements are so merged together that they cannot be divided to be regarded as separable elements. If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic or otherwise, is required…

 

For example, a descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit…

 

            In the instant case, Applicant's mark is unitary.  the elements TRUTH IN SAFETY when used in connection with Applicant's promotional services create an ambiguous commercial impression and any descriptive significance of the word SAFETY in relation to the services is lost.  Stated another way, the elements TRUTH IN SAFETY create the commercial impression of an imperative, or a campaign slogan, and are thus so merged together that they cannot be divided to be regarded as separable elements.  As a result, Applicant's mark is unitary, and the disclaimer requirement should be withdrawn.

 

IV.       APPLICANT'S MARK IS A COMPOSITE SO A DISCLAIMER IS INAPPROPRIATE

            With regard to composite marks, TMEP Section 1213.02 states:

A “composite” mark may consist of a word or words combined with a design or designs; it may consist solely of words, when there are separable word elements; or it may consist solely of separable design elements. An unregistrable component of a composite mark is subject to disclaimer. However, if a composite mark (or portion thereof) is “unitary,” an individual component of the mark (or of the unitary portion) that would otherwise be unregistrable need not be disclaimed…

 

 

            As illustrated above, Applicant's mark is unitary because the combined elements create an ambiguous commercial impression, much like that of an imperative or a campaign slogan.  While Applicant does not concede that any element of its mark is descriptive, as a unitary composite mark any individual component of the mark that would otherwise be unregistrable need not be disclaimed.  Accordingly, the Examining Attorney's disclaimer requirement should be withdrawn.

 

V.        DISCRETION LIES WITH THE EXAMINING ATTORNEY

            As 15 U.S.C. §1056 makes clear, "The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable…" (emphasis added).  The requirement for a disclaimer is not an absolute command.  Rather such a requirement is discretionary and must be analyzed on a case by case basis.  See TMEP Section 1213.01(a).  Accordingly, in view of the totality of the circumstances, the Examining Attorney should exercise her discretion and withdraw her disclaimer requirement since the term SAFETY is not merely descriptive of Applicant's services, and since Applicant's mark is an ambiguous and suggestive, unitary composite mark.

CONCLUSION

            In view of the foregoing, Applicant respectfully requests the withdrawal of the Examining Attorney's disclaimer requirement, the approval of the amended identification, and the approval of this application for publication.  Further action is respectfully solicited.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Promoting the sale and services of automobiles for others
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed: Class 035 for Promoting the services of automobile dealerships through the distribution of printed, audio and audiovisual promotional materials and by rendering sales promotion advice
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
BARTH X. DEROSA
STEVENS DAVIS MILLER MOSHER LLP
1615 L ST NW
STE 850
WASHINGTON, DC 20036-5627

Proposed:
BARTH X. DEROSA of DICKINSON WRIGHT, having an address of
STE 800 1901 L ST NW WASHINGTON, District of Columbia 20036
United States
bderosa@dickinsonwright.com
202-457-0160
202-659-6955

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Steven Lustig for Barth X. deRosa/     Date: 02/06/2008
Signatory's Name: Steven Lustig for Barth X. deRosa
Signatory's Position: Attorney for Applicant

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    BARTH X. DEROSA
   DICKINSON WRIGHT
   STE 800
   1901 L ST NW
   WASHINGTON, District of Columbia 20036
        
Serial Number: 76675957
Internet Transmission Date: Wed Feb 06 16:37:12 EST 2008
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20080206163712396
902-76675957-410761b80a90c710c71d654fbf6
a828e2f-N/A-N/A-20080206163114400213