Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76694467 has been amended as follows:

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

In the Official Action dated February 27, 2009, the Examining Attorney refuses registration based upon her determination that Applicant's mark merely describes the services.  Additionally, she finds that the specimens of record are unacceptable for applicant's educational services in Class 41.

 

 

Based upon the information and the reasons presented below, Applicant respectfully requests that the Examining Attorney reconsider and withdraw her refusal and her requirement.  "ERGOPRIZE" is not merely descriptive of Applicant's services.  Rather the mark is incongruous, and therefore suggestive.  Additionally, Applicant's specimens are acceptable because they do, in fact, show use of the mark in connection with the services.

I.   APPLICANT'S MARK IS NOT MERELY DESCRIPTIVE

Neither "ERGO," nor "PRIZE" nor the unitary mark "ERGOPRIZE" are merely descriptive of Applicants services, and the refusal should be withdrawn.

A.        Neither "ERGO" Nor "PRIZE" Are Descriptive Of Applicants Services

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."  See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).  Also See: In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978):; In re American Screen Process Equipment Co., 175 USPQ 561 (TTAB 1972); and In re Universal Water Systems, Inc., 209 USPQ 165 (TTAB 1980).  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 (C.C.P.A. 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." 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."

 

In light of the rules above, it becomes clear that the terms "ERGO" and "PRIZE" are not merely descriptive, but rather, they are incongruous and suggestive because they do not convey an immediate idea about the nature of Applicant's services.

B.         "ERGO" And "PRIZE" Each Have Dual Meanings.

It has been stated that a term that has dual meanings - one potentially descriptive and the other totally unrelated association - is suggestive because the term is not "merely" descriptive.  For example, it has been held that the mark "POLY PITCHER" on polyethylene pitchers does not merely describe the plastic ingredient of the pitcher but also, because the term is "reminiscent or suggestive of Molly Pitcher of Revolutionary War fame", it is an "incongruous expression, and has the characteristics of a coined or fanciful mark." See, Blisscraft of Hollywood v. United Plastics Co., 131 USPQ 55 (2nd Cir. 1961).  Also it has been held that the mark "CHERRY-BERRY-BING" for fruit and berry preserves is similarly suggestive because it is reminiscent of the song "Chiribiribin." See Ex Parte Barker, 92 USPQ 218 (Dec. Comm'r Pat. 1952).   And furthermore, it has been held that the mark "HAY DOLLY" for trailers for hauling hay is suggestive because it is reminiscent of the Broadway show "Hello Dolly." See In re Priefert Mfg. Co., Inc., 222 USPQ 731 (TTAB 1984)  Similarly, terms "ERGO" and "PRIZE" have dual, incongruous meanings, and are therefore suggestive - not merely descriptive of Applicant's services.

C.        "ERGO" and "PRIZE" Each Have Alternative Incongruous Meanings.

With regard to the term "ERGO" according to the Merriam Webster online dictionary, relevant pages from which are attached hereto, the term can mean the following:

ERGO:

 

Function: adverb

 

            THEREFORE, HENCE

 

Function: combining form

 

            work <ergometer>

 

Function: combining form

 

             ergot <ergosterol>

As to the term "PRIZE," according to the Merriam Webster online dictionary, pages from which are attached hereto, the term can mean the following:

 

PRIZE:

 

Function: noun

 

1 something offered or striven for in competition or in contests of chance; also : PREMIUM

2 : something exceptionally desirable

 

3 archaic : a contest for a reward : COMPETITION

 

Function: noun

 

1 something taken by force, stratagem, or threat; especially : property lawfully captured at sea in time of war

2 an act of capturing or taking; especially : the wartime capture of a ship and its cargo at sea

synonyms see SPOIL

 

Function: adjective

 

1 a : awarded or worthy of a prize; b : awarded as a prize; c : entered for the sake of a prize <a prize drawing>

2 : outstanding of a kind <raised prize hogs

 

 

Function: transitive verb

 

Inflected Form(s): prized; priz·ing

 

1 : to estimate the value of : RATE

 

2 : to value highly : ESTEEM <a prized possession>

synonyms see APPRECIATE

 

Function: transitive verb

 

Inflected Form(s): prized; priz·ing

 

: to press, force, or move with a lever : PRY

 

 

These terms can therefore mean something other than that which the Examiner observes.  In fact, nowhere in these definitions does it once suggest the Examiner's observation that "ergo" is an abbreviation for ergonomics.  However "ergo" is identified as a term for "work," and in its combined form is part of the word ergonomics. 

 

Accordingly, these dual meanings create incongruities which make the terms "ERGO" and "PRIZE" suggestive.  Accordingly, the terms are not merely descriptive of Applicant's services.

D.        The Combination "ERGOPRIZE" is Incongruous And Suggestive.

As the Board stated regarding similar combinations of terms:

It does not follow as a matter of law that, because the component words of a mark may be merely descriptive and therefore unregistrable, the combination thereof is equally descriptive and incapable of functioning as a trademark; the question is whether the mark considered in its entirety possesses a merely descriptive significance as applied to the goods in question, i.e., whether it conveys a readily understood meaning to the average purchaser of such goods."

In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).

Even if the individual terms "ERGO" and "PRIZE" were descriptive of Applicant's services, (and Applicant does not concede that they are) the combination of these terms can be easily understood to have a suggestive, alternative and incongruous meaning.

 

What is an "ERGOPRIZE?"  In view of the definitions above, it could refer to a type of object forcibly obtained via work.  It could also suggest that the services in question result from, and are therefore based upon, something of high esteem.  It could refer to a competition that occurs after something else serves as a preceding event.  It could even be perceived as a coined term with the commercial impression being a never before seen Latin term meaning "therefore competition."  However, none of these meanings immediately indicate anything about Applicant's services.  Indeed, from the above it appears that the dominant impression upon consumers is confusing at best.  Therefore, any commercial impression of the combination of "ERGO" and "PRIZE" is incongruous, and consumers will have to think before they truly understand what the services are.

 

 

In fact, this case is similar to the case of In re Shutts, 217 USPQ 363 (TTAB 1983). wherein the Board held that the mark SNO-RAKE was not merely descriptive of a snow removal hand tool.   In making its decision, the Board stated:

The concept of mere descriptiveness, it seems to us, must relate to general and readily recognizable word formulations and meanings, either in a popular or technical usage context, and should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and "mental pause."  In the Board's view, that is the situation before us and, of course, incongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark. See In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB 1978).

Shutts. at 364-365.

When used in Applicant's mark, the term "ERGOPRIZE" creates the "mental pause" referred to by the Board in the decision above.  The terms when used in Applicant's mark, therefore, cannot be viewed as being merely descriptive of Applicant's services. 

 

In view of these incongruous and suggestive meanings, the terms "ERGO and "PRIZE" are not merely descriptive of Applicant's services.  The refusal should be withdrawn.

II.   APPLICANT'S SPECIMENS ARE ACCEPTABLE FOR SERVICES IN CLASS 41

The Examining Attorney is respectfully reminded that to be acceptable, the specimen must show the mark used in connection with the services.  TMEP §904.  Furthermore, TMEP §1301.04 states in relevant part

 

A service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application. 37 C.F.R. §2.56(b)(2). Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, . and the like.

Also, TMEP §1301.04(b) states in relevant part:

 

A specimen that shows the mark as used in the course of performing the services is generally acceptable. Where the record shows that the mark is used in performing (as opposed to advertising) the services, a reference to the services on the specimen itself may not be necessary. In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992) (computer printouts showing mark GLOBAL GATEWAY found acceptable to show use of mark to identify data transmission services accessed via computer, because they show use of mark as it appears on computer terminal in the course of rendering the services); In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986) (photograph of rented fence held acceptable for rental of chain link fences, since it shows use of distinctive color scheme in the rendering services); In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) (photograph of costume worn by performer during performance of entertainment services held to be an acceptable specimen).

In this case, the services at issue are: Educational services, namely, conducting seminars in the field of ergonomics and Human Factors Design.  The specimens of record include a brochure for the 12^th Annual Applied Ergonomics Conference 2009 that serves as an advertisement for Applicant's education services.  Moreover, the certificate specimens for Class 41 show the mark used in the rendering of the educational; services.   

 

In that regard, the advertisement specimens conspicuously state in relevant part:

 

 

"The Applied Ergonomics Conference 2009

Session Tracks"

 

Ergonomics Programs

Ergonomics for the Non-Tradition Work Forces

Heath Care Issues

Lean Manufacturing and Ergonomics

Manufacturing Applications

Office Ergonomics Programs and Applications

Obese and Aging Populations

Tools of the Trade

 

(emphasis added)

 

From the above language it is clear that educational seminar services (therein referred to as "session tracks") are being offered by Applicant for the benefit of others, namely, the conference attendees.  Moreover, the certificate specimens show the mark used in the rendering of the educational services.

 

Applicant's specimens therefore show the mark used in both the advertising of the services to those attending Applicant's conferences, and in the rendering of the services themselves.  Accordingly, the mark is used in connection with Applicant's educational services, the specimens are acceptable, and the Examining Attorney should reconsider and withdraw her objections.

 

CONCLUSION

 

In view of the foregoing, Applicant respectfully requests the withdrawal of the refusal, the withdrawal of the objections to Applicant's specimens, and the approval of this Application for publication.  Further action is respectfully solicited.

EVIDENCE
Evidence in the nature of Pages from the Merriam Webster online dictionary. has been attached.
Original PDF file:
evi_71166241186-144251619_._merriam-webster.com_dictionary_ergo_1.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_71166241186-144251619_._merriam-webster.com_dictionary_ergo_2.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_71166241186-144251619_._merriam-webster.com_dictionary_ergo_3.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_71166241186-144251619_._merriam-webster.com_dictionary_prize_1.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_71166241186-144251619_._merriam-webster.com_dictionary_prize_2.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_71166241186-144251619_._merriam-webster.com_dictionary_prize_3.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_71166241186-144251619_._merriam-webster.com_dictionary_prize_4.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_71166241186-144251619_._merriam-webster.com_dictionary_prize_5.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2

SIGNATURE(S)
Response Signature
Signature: /Steven Lustig for Barth X. deRosa/     Date: 08/27/2009
Signatory's Name: Steven Lustig for Barth X. deRosa
Signatory's Position: Attorney of record, DC bar member

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.

        
Serial Number: 76694467
Internet Transmission Date: Thu Aug 27 14:54:44 EDT 2009
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200908271454442
58856-76694467-430d49872b73aca23846c63c9
31846e029-N/A-N/A-20090827144251619828