| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 76719062 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/76719062/large |
| LITERAL ELEMENT | PIZZA BANK |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
In the Office Action of June 22, 2016 (“Office Action”), the Examining Attorney has refused registration under Section 2(e)(1) on the grounds that Applicant’s PIZZA BANK mark is merely descriptive. Because Applicant’s mark is suggestive and therefore inherently distinctive, Applicant respectfully requests that the refusal be withdrawn and the application approved for publication.
As amended in this Response, this application for the mark PIZZA BANK covers Class 36 services of, “financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale.”
The Office Action contends that BANK is descriptive of these services in, “that they perform banking type services” and that PIZZA is descriptive because “they are for making payments for pizza.” The Office Action’s evidence consists of dictionary definitions of PIZZA and BANK.
The Examining Attorney’s conclusion that the mark is merely descriptive is based on these definitions of the individual words and that, “[j]oining the word “PIZZA” to “BANK” does not change the meaning of BANK, it merely further describes a characteristic of the services. Thus, the proposed mark is descriptive.”
While Applicant does not disagree with the dictionary definitions of the individual terms PIZZA and BANK, Applicant does disagree with the contention that the commercial impression formed by the combination of them, PIZZA BANK, is nothing more than the individual definitions.
The term “bank” standing by itself is accurately defined by the Office Action’s evidence, but the word can take on other meanings when combined with additional words. Consumers are familiar with many, many “banks” that combine a generic term with bank to indicate that items are stored in the “bank” for distribution to others. These include:
Food Banks Blood Banks Eye Banks Organ Banks Gene Banks Seed Banks Tissue Banks Sperm Banks Pollen Banks
Applicant’s PIZZA BANK is a play on these terms, suggesting to a consumer a bank where pizza is donated and stored. The fact that Applicant’s PIZZA BANK mark is a play on words that requires imagination on the part of a consumer indicates that it is not merely descriptive of the services identified in the application. “A “double entendre” is a word or expression capable of more than one interpretation.” TMEP §1213.05(c). “The mark that comprises the “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services.” Id. “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.” TMEP §1209.01(a).
It is of course the whole of the PIZZA BANK mark that must be evaluated. See Coca-Cola Co. v. Seven-Up Co., 497 F.2d 1351 (CCPA 1974) (“[w]e have said, so often as not to require citation of authority, that marks must be viewed as the public sees them, i.e., in their entireties”). To break the mark into the two separate words is an impermissible dissection. See In re Hutchinson Technology, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988) (“The board considered the mark as two separate parts, “Hutchinson” and “technology,”… the fatal flaw in the board’s analysis is that the mark sought to be registered is not HUTCHINSON or TECHNOLOGY, but HUTCHINSON TECHNOLOGY.”).
When the whole of the PIZZA BANK mark is considered, it is clear that the mark represents a single thing and that the terms cannot be separated. This impression is “separate and apart from any unregistrable component” which the TMEP defines as a unitary mark. TMEP §1213.05. “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.” Id.
In a non-precedential case, the Trademark Trial and Appeal Board reversed a disclaimer requirement for COMMERCE and held that the COMMERCE BANK & Design mark (with BANK disclaimed) was registrable on the Principal Register for Class 36 services of “banking services.” In re Commerce Bancorp, Inc., Appeal of Serial No. 76/127,975 (TTAB 2006) [non-precedential]. The USPTO has also issued a number of registrations on the Principal Register in Class 36 for marks that combine a noun and the term “bank.”
Registration No. 4,575,226 for ORCHARD BANK in standard characters (BANK disclaimed) for “banking services” in Class 36.
Registration No. 4,822,030 for OAK BANK in standard characters (BANK disclaimed) for “Administration of health savings accounts; Banking; Banking services; Banking services featuring the provision of certificates of deposit; Checking account services; Credit and loan services; Credit card and debit card services; Electronic banking via a global computer network; Home equity loans; Individual retirement account services; Providing home equity lines of credit (HELOC); Savings account services” in Class 36.
Registration No. 4,426,258 for BELL BANK in standard characters (BANK disclaimed) for “Banking services; savings account services; electronic banking services; telephone, mobile phone and computer banking services; checking account services; check clearing services; certificate of deposit account services, individual retirement account services; bill payment services; bank card, credit card, debit card and electronic payment card services; debt collection and payment agency, consultancy and brokerage services; security services, namely, guaranteeing loans, loan financing, mortgage lending, financial guarantee and surety, providing personal loans and lines of credit; providing student loans; providing temporary loans; money exchange and transfer services; money order services; money transmission services, namely, currency transfer services; foreign currency services, namely, foreign exchange information services and foreign exchange transactions; travelers' check issuance; management of personal, private equity and capital investment funds; investment fund transfer; electronic funds transfer; trust services, namely, investment and trust company services; trustee services, namely, real estate trustee services; trusteeship services, namely, trusteeship representatives; investment services, namely, capital investment consultation, commodity investment advice, financial investment security, funds investment, real estate investment; investment advice; investment management services; stock brokering services; shares and securities brokerage, trading and distribution; insurance brokerage and agencies in the field of homes, automobiles, life, health, disability and farm, insurance brokerage services and loss of income protection services; financial services, namely, financial advisory services; financing services, namely, financing services for securing funds; providing information in the field of banking and financial investment; custodian services for health savings accounts” in Class 36.
Registration No. 4,585,363 for SAGE BANK in standard characters (BANK disclaimed) for “Retail and commercial banking services, excluding financial and investment planning and investment management services for consumers and reverse mortgage lending and servicing of reverse mortgages” in Class 36.
Registration No. 4,402,722 for HARVEST BANK in standard characters (BANK disclaimed) for “Commercial banking services” in Class 36.
Copies of the Trademark Electronic Search System’s records for these registrations are attached as Exhibit 1.
The Commerce Bancorp case and these registrations indicate that the USPTO regularly accepts that the combination of a noun and BANK forms an inherently distinct mark for Class 36 services.
Any reasonable doubt as to whether an applied for mark is merely descriptive should be resolved in favor of Applicant. In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 4 USPQ2d 1141, 1144 (Fed. Cir. 1987) (“It is incumbent on the Board to… resolve reasonable doubt in favor of the applicant.”).
Because the PIZZA BANK mark is suggestive rather than merely descriptive, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn and the application approved for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7411214226-20160914185539556200_._CoR_for_HARVEST_BANK.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_7411214226-20160914185539556200_._CoR_for_SAGE_BANK.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0004.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_7411214226-20160914185539556200_._Amended_CoR_for_BELL_BANK.PDF |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0006.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0008.JPG | |
| ORIGINAL PDF FILE | evi_7411214226-20160914185539556200_._CoR_for_OAK_BANK.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0009.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0010.JPG | |
| ORIGINAL PDF FILE | evi_7411214226-20160914185539556200_._CoR_for_ORCHARD_BANK.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0011.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\767\190\76719062\xml1\ROA0012.JPG | |
| DESCRIPTION OF EVIDENCE FILE | copies of Certificates of Registration for marks combining a noun and "BANK." |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | MOBILE ELECTRONIC WALLET AND MOBILE PAYMENT SERVICES |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 036 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Josh A. Partington/ |
| SIGNATORY'S NAME | Josh A. Partington |
| SIGNATORY'S POSITION | Associate of attorney of record, Virginia Bar member |
| SIGNATORY'S PHONE NUMBER | 703-668-8000 |
| DATE SIGNED | 09/14/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 14 19:08:20 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0160914190820270750-76719 062-55022807dd0937966ddcd 7e9931a652b0aa3ca86e34ce1 22c7a2be8a31d7bb0f013-N/A -N/A-20160914185539556200 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
In the Office Action of June 22, 2016 (“Office Action”), the Examining Attorney has refused registration under Section 2(e)(1) on the grounds that Applicant’s PIZZA BANK mark is merely descriptive. Because Applicant’s mark is suggestive and therefore inherently distinctive, Applicant respectfully requests that the refusal be withdrawn and the application approved for publication.
As amended in this Response, this application for the mark PIZZA BANK covers Class 36 services of, “financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale.”
The Office Action contends that BANK is descriptive of these services in, “that they perform banking type services” and that PIZZA is descriptive because “they are for making payments for pizza.” The Office Action’s evidence consists of dictionary definitions of PIZZA and BANK.
The Examining Attorney’s conclusion that the mark is merely descriptive is based on these definitions of the individual words and that, “[j]oining the word “PIZZA” to “BANK” does not change the meaning of BANK, it merely further describes a characteristic of the services. Thus, the proposed mark is descriptive.”
While Applicant does not disagree with the dictionary definitions of the individual terms PIZZA and BANK, Applicant does disagree with the contention that the commercial impression formed by the combination of them, PIZZA BANK, is nothing more than the individual definitions.
The term “bank” standing by itself is accurately defined by the Office Action’s evidence, but the word can take on other meanings when combined with additional words. Consumers are familiar with many, many “banks” that combine a generic term with bank to indicate that items are stored in the “bank” for distribution to others. These include:
Food Banks
Blood Banks
Eye Banks
Organ Banks
Gene Banks
Seed Banks
Tissue Banks
Sperm Banks
Pollen Banks
Applicant’s PIZZA BANK is a play on these terms, suggesting to a consumer a bank where pizza is donated and stored. The fact that Applicant’s PIZZA BANK mark is a play on words that requires imagination on the part of a consumer indicates that it is not merely descriptive of the services identified in the application. “A “double entendre” is a word or expression capable of more than one interpretation.” TMEP §1213.05(c). “The mark that comprises the “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services.” Id. “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.” TMEP §1209.01(a).
It is of course the whole of the PIZZA BANK mark that must be evaluated. See Coca-Cola Co. v. Seven-Up Co., 497 F.2d 1351 (CCPA 1974) (“[w]e have said, so often as not to require citation of authority, that marks must be viewed as the public sees them, i.e., in their entireties”). To break the mark into the two separate words is an impermissible dissection. See In re Hutchinson Technology, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988) (“The board considered the mark as two separate parts, “Hutchinson” and “technology,”… the fatal flaw in the board’s analysis is that the mark sought to be registered is not HUTCHINSON or TECHNOLOGY, but HUTCHINSON TECHNOLOGY.”).
When the whole of the PIZZA BANK mark is considered, it is clear that the mark represents a single thing and that the terms cannot be separated. This impression is “separate and apart from any unregistrable component” which the TMEP defines as a unitary mark. TMEP §1213.05. “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.” Id.
In a non-precedential case, the Trademark Trial and Appeal Board reversed a disclaimer requirement for COMMERCE and held that the COMMERCE BANK & Design mark (with BANK disclaimed) was registrable on the Principal Register for Class 36 services of “banking services.” In re Commerce Bancorp, Inc., Appeal of Serial No. 76/127,975 (TTAB 2006) [non-precedential]. The USPTO has also issued a number of registrations on the Principal Register in Class 36 for marks that combine a noun and the term “bank.”
Registration No. 4,575,226 for ORCHARD BANK in standard characters (BANK disclaimed) for “banking services” in Class 36.
Registration No. 4,822,030 for OAK BANK in standard characters (BANK disclaimed) for “Administration of health savings accounts; Banking; Banking services; Banking services featuring the provision of certificates of deposit; Checking account services; Credit and loan services; Credit card and debit card services; Electronic banking via a global computer network; Home equity loans; Individual retirement account services; Providing home equity lines of credit (HELOC); Savings account services” in Class 36.
Registration No. 4,426,258 for BELL BANK in standard characters (BANK disclaimed) for “Banking services; savings account services; electronic banking services; telephone, mobile phone and computer banking services; checking account services; check clearing services; certificate of deposit account services, individual retirement account services; bill payment services; bank card, credit card, debit card and electronic payment card services; debt collection and payment agency, consultancy and brokerage services; security services, namely, guaranteeing loans, loan financing, mortgage lending, financial guarantee and surety, providing personal loans and lines of credit; providing student loans; providing temporary loans; money exchange and transfer services; money order services; money transmission services, namely, currency transfer services; foreign currency services, namely, foreign exchange information services and foreign exchange transactions; travelers' check issuance; management of personal, private equity and capital investment funds; investment fund transfer; electronic funds transfer; trust services, namely, investment and trust company services; trustee services, namely, real estate trustee services; trusteeship services, namely, trusteeship representatives; investment services, namely, capital investment consultation, commodity investment advice, financial investment security, funds investment, real estate investment; investment advice; investment management services; stock brokering services; shares and securities brokerage, trading and distribution; insurance brokerage and agencies in the field of homes, automobiles, life, health, disability and farm, insurance brokerage services and loss of income protection services; financial services, namely, financial advisory services; financing services, namely, financing services for securing funds; providing information in the field of banking and financial investment; custodian services for health savings accounts” in Class 36.
Registration No. 4,585,363 for SAGE BANK in standard characters (BANK disclaimed) for “Retail and commercial banking services, excluding financial and investment planning and investment management services for consumers and reverse mortgage lending and servicing of reverse mortgages” in Class 36.
Registration No. 4,402,722 for HARVEST BANK in standard characters (BANK disclaimed) for “Commercial banking services” in Class 36.
Copies of the Trademark Electronic Search System’s records for these registrations are attached as Exhibit 1.
The Commerce Bancorp case and these registrations indicate that the USPTO regularly accepts that the combination of a noun and BANK forms an inherently distinct mark for Class 36 services.
Any reasonable doubt as to whether an applied for mark is merely descriptive should be resolved in favor of Applicant. In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 4 USPQ2d 1141, 1144 (Fed. Cir. 1987) (“It is incumbent on the Board to… resolve reasonable doubt in favor of the applicant.”).
Because the PIZZA BANK mark is suggestive rather than merely descriptive, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn and the application approved for publication.
