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. 77006285 has been amended as follows:

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

This is in response to the Office Action mailed on February 15, 2007 (the “Office Action”) in connection with the above-identified application for service mark registration.  As set forth below, reconsideration is respectfully requested.

A.        Recitation of Services

            The Examining Attorney requests that the Applicant clarify its description of services.  Per the Examiner's request, Applicant hereby amends its recitation of services as follows:

            “Licensing of alternative fuels produced from microbes and alternative intermediate fuels produced from microbes, in International Class 45.”

 

 

B.         The SUPERCRUDE Mark Is Suggestive, Not Merely Descriptive Nor Laudatory.      

The Examiner has refused registration on the basis that the SUPERCRUDE mark is merely descriptive and laudatory.  For the reasons set forth below, the Applicant disagrees with the Examiner’s analysis and respectfully requests that the Application proceed to publication.

The Examiner indicated that the SUPERCRUDE mark was merely descriptive of an attribute of the subject matter of the services identified.  However,  the SUPERCRUDE mark is not merely descriptive of the nature or quality of the Applicant’s technology licensing services.  Moreover, the SUPERCRUDE mark is not laudatory.  The term “super” in the SUPERCRUDE mark does not specifically describe any particular characteristic of the Applicant’s technology licensing services, nor does it merely describe the subject matter of those services.  The SUPERCRUDE mark suggests that the Applicant licenses technology associated with an alternative biofuel that is different from other, more traditional, sources of fuel. 

1.         The SUPERCRUDE mark has nothing to do with technology licensing services.

A descriptive mark is one which directly conveys the nature or quality of the goods or services it identifies.  If information about a product or service is only indirectly conveyed, the mark is suggestive, not descriptive.  Playtex Prods., Inc. v. Georgia-Pacific Corp., 390 F.3d 158 (2nd Cir. 2004) (holding the mark WET ONES suggestive of pre-moistened wipes); Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542 (1st Cir. 1995) (holding the mark EQUINE TECHNOLOGIES suggestive of hoof pads for horses).  The standard for a suggestive mark is satisfied as long as the mark, as a whole, does not immediately describe specific characteristics of an applicant’s goods or services.  U.S. West, Inc. v. BellSouth Corp., 18 USPQ 2d 1307, 1312 (TTAB 1990) (finding the mark THE REAL YELLOW PAGES descriptive of a telephone directory).  By this definition, the SUPERCRUDE mark is clearly suggestive, not merely descriptive, of Applicant’s technology licensing services. 

The difference between descriptive and suggestive marks is in how they are used.  2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:64, 11-143 (4th ed. Rel. 42 5/2007).  Some element of descriptiveness is necessarily present in any suggestive mark, otherwise the suggestive process cannot take place.  Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 146 (3d Cir. 1953).  The lines between descriptive marks and suggestive marks are not always easy to draw, which is why any doubt should be resolved in favor of an applicant.  In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 (Fed. Cir. 1987); In re Laboratories, Inc., 221 USPQ 1215, 1216 (TTAB 1983) (holding that the mark PEST PRUF was suggestive of animal shampoo with insecticide).  According to Professor McCarthy, “[i]f the mental leap between the word and the product’s attribute is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.”  2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:67, 11-147 (4th ed. Rel. 42 5/2007) (emphasis added); see also AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979) (holding the mark SLICKCRAFT to be suggestive when applied to boats).

In AMF, Inc.  v. Sleekcraft Boats, the Ninth Circuit determined that the mark SLICKCRAFT was suggestive, and not merely descriptive, of the boats it identified.  599 F.2d at 349.  According to the court, a determining factor is “how immediate and direct is the thought process from the mark to a particular product.”  Id.  The court noted that from the mark SLICKCRAFT “one might readily conjure up an image of appellant’s boats, yet a number of other images might also follow.”  Because alternative images could be generated, SLICKCRAFT was not merely descriptive of the boats.

The SUPERCRUDE mark does not directly convey the nature or quality of the services it identifies.   The SUPERCRUDE mark is not at all descriptive of technology licensing services.  The Examiner supports her contention that the SUPERCRUDE mark is merely descriptive because “crude” “refers to unrefined products, particularly oil [and] Applicant intends to use its mark in connection with services pertaining to fuels made from unrefined oil found in algae … SUPERCRUDE is laudatorily descriptive of the subject matter of the services.”  (Office Action, at 2) (emphasis added).  However, the Examiner’s argument completely ignores the type of services identified by the SUPERCRUDE mark.  The Examiner does not present any support for the argument that the SUPERCRUDE mark is merely descriptive of Applicant’s services themselves.  Indeed, it would be difficult to argue that the SUPERCRUDE mark is somehow descriptive of licensing services.  The various definitions of the words “super” and “crude” do not mention, or even relate to, licensing services.[1]  Thus, a multi-stage mental process is required to associate the SUPERCRUDE mark with Applicant’s services and it cannot be merely descriptive.     

Moreover, the Examiner’s argument for the descriptiveness of the SUPERCRUDE mark does not gain support if the licensing aspect is set aside and the focus shifts to the subject matter of the services identified.  The SUPERCRUDE mark is suggestive, not merely descriptive, of the kind of technology licensed.  Fuel extracted from living organisms is not the first item that comes to mind when the SUPERCRUDE mark is mentioned.  Both “super” and “crude” are susceptible to multiple meanings.  Thus, the mark, taken as a whole, is not immediately associated with one meaning.[2]  There are stark differences between the subject matter of the services identified in the Application, and other oil products that are generally described as “crude,” such as petroleum.  Petroleum is a bituminous liquid formed by the compression and heating of ancient organic matter that is extracted from porous rock formations below the Earth’s surface.[3]  This complex mixture of hydrocarbons is then processed for use as fuel.  Therefore, petroleum is composed of matter that has been dead for thousands of years.  Applicant’s services, on the other hand, pertain to goods that are the result of extracting oil and/or other forms of energy from living organisms, such as algae or other microbes, to create a substrate that can be converted into fuel.  Moreover, the living organisms themselves can also be converted into a useful substrate.  Because this alternative source utilizes living organisms, it is chemically distinct from the petroleum extracted from subterranean rock formations.  Thus, it is not petroleum “crude.” 

Applicant’s services pertain to goods that are different in composition and possess unique characteristics that set them apart from more traditional fuels, such as petroleum, with which the term “crude” is most closely associated.  Indeed, there is nothing in Applicant’s mark referring to the microbes or other plant-based intermediates associated with the services the mark identifies.  As such, because the SUPERCRUDE mark does not convey a specific ingredient or characteristic of the subject matter of the services identified, association with energy derived from living organisms is not immediate.  Consequently, the SUPERCRUDE mark is not merely descriptive of the subject matter of Applicant’s technology licensing services, but, instead, suggests that it will licensce technology relating to alternative sources of energy that can be extracted from living organisms.  Thus, several mental steps are required to determine that the term “crude” in the SUPERCRUDE service mark refers to the plant-based fuel technology licensed by the Applicant.  Because the SUPERCRUDE mark is not merely descriptive of the underlying subject matter of the technology licensing services identified, it follows that the mark cannot be merely descriptive of the licensing services themselves.

2.         The use of the word “super” in the SUPERCRUDE mark is not laudatory.

            The mere inclusion of the word “super” in a mark does not make it laudatory.  The question centers on whether the word “super” is used in conjunction with the name of the goods or services or with a principal component, grade or size thereof.  2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11.28, 11-70 (4th ed. Rel. 42 5/2007).  Against this standard, it is obvious that the SUPERCRUDE mark is not laudatory. 

            For example, in In re Ralston Purina Co., 191 USPQ 237, 238 (TTAB 1976), the Trademark Trial and Appeal Board (“TTAB”) reversed a refusal of registration because the term “super” in RALSTON SUPER SLUSH was used not to describe any real or specific item or characteristic or quality, but was merely used to connote a vague desirable quality allegedly connected to the product.  See also Estee Lauder v. The Gap, Inc., 108 F.3d 1503 (2d Cir. 1997) (stating that a term seeking to convey the impression that a product is excellent or of especially high quality is generally deemed suggestive). 

            Inclusion of the term “super” to describe a component, grade or size of a product can be grounds for refusal.  See e.g.  Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296 (CCPA 1972) (holding SUPER BLEND merely descriptive of a blend of motor oils); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (holding SUPER BUY merely descriptive of cost-effective cigars); In re Carter-Wallace, Inc.,  222 USPQ 729 (TTAB 1984) (holding SUPER GEL merely descriptive of shave gel); and In re Samuel Moore & Co., 195 USPQ 237 (TTAB 1977) (holding SUPERHOSE! merely descriptive of a hose). 

            Applicant’s SUPERCRUDE mark does not suffer from the foregoing maladies because it is not at all descriptive of technology licensing services.  Indeed, if a composite mark does not strictly name or refer to a principal component grade or size of the goods or services, then the composite term is suggestive.  For example, the use of the word “super” in the following marks has been deemed suggestive: RALSTON SUPER SLUSH to identify a concentrate used to make slushee drinks, 191 USPQ 237 (TTAB 1976); SUPER COLLINEAR to identify base station communications antennas, In re Allen Elec. & Equip. Co., 175 USPQ 176 (TTAB 1972); and SUPER IRON to identify a soil supplement, In re Occidental Petroleum Corp., 167 USPQ 128 (TTAB 1970). 

            The TTAB overturned a refusal to register the mark SUPER IRON as laudatorily descriptive of a soil supplement because it took “some roundabout reasoning to make a determination of what the mark actually describe[d].”  In re Occidental Petroleum Corp., 167 USPQ at 128.  According to the TTAB, the SUPER IRON mark suggested that the product contained a larger amount of iron than most soil supplements and was distinguishable from a situation where “super” was combined with the name of the goods or services identified.  Id.  Similar “roundabout” reasoning is required to determine what is described by the SUPERCRUDE mark.  “Crude” is not the name of the licensing services identified.  Most importantly, “crude” is not merely descriptive of Applicant’s technology licensing services, nor is it descriptive of the subject matter of those services, as discussed in Section 1., supra.  Therefore, the use of the term “super” in the SUPERCRUDE mark is not laudatorily descriptive of Applicant’s technology licensing services.

            Even if one considers only the alternative fuel technology, and not the licensing services themselves, the SUPERCRUDE mark is still not laudatorily descriptive.  See In re Allen Elec. & Equip. Co., 175 USPQ at 177.  In finding the mark SUPER COLLINEAR suggestive of antennas, the TTAB noted that the term “collinear,” although descriptive of antennas, was an absolute, not a matter of relative or comparative degree.  Id.  In other words, because an antenna is either “collinear” or it is not, one antenna cannot be more “collinear” than another.  Thus, the word “super” in the SUPER COLLINEAR mark must be suggestive of a quality other than the antenna’s collinearity.  Id. 

            Similarly, the word “crude,” when used to refer to unrefined oil, is not a matter of relative or comparative degree.  Once refined, fuels can come in different grades, but “crude,” as used in the context of fuel, refers to the initial natural and completely unprocessed state.  Oil is either in this natural unrefined and unprocessed state, or it is not.  Thus, the SUPERCRUDE mark must be suggestive because the term “super,” as used in the SUPERCRUDE mark, suggests that the subject matter of the services identified is different than other fuels because it involves oil and/or other sources of energy derived from living organisms. 

            The SUPERCRUDE mark is not merely laudatorily descriptive of Applicant’s services.  Indeed, nothing in the SUPERCRUDE mark refers to or describes technology licensing services.  Moreover, the SUPERCRUDE mark is not even laudatorily descriptive of the subject matter of those services.  The alternative fuel technology licensed by the Applicant involves fuels that are extracted from living organisms, not rocks, and are chemically different from other fuels.  The SUPERCRUDE mark is suggestive of these differences.  Inclusion of the word “super” suggests that the alternative fuel sources licensed by the Applicant are more natural than ordinary crude petroleum because they are alive. 

 

C.        Conclusion

            Applicant submits that in light of the foregoing, the subject application is now ready for publication and notice to that effect is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Licensing and technology services related to fuels produced from microbes and intermediate fuels produced from microbes

Applicant hereby adds the following class of goods/services to the application:
New: Class 045 (Original Class: 042 ) for Licensing of alternative fuels produced from microbes and alternative intermediate fuels produced from microbes
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)).

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: /Meredith M. Wilkes/     Date: 08/15/2007
Signatory's Name: Meredith M. Wilkes
Signatory's Position: Attorney of record

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: 77006285
Internet Transmission Date: Wed Aug 15 13:34:00 EDT 2007
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20070815133400878
264-77006285-380fa2ef673c04418e8c4eac56f
2c6591d9-N/A-N/A-20070815132815477053