| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77008079 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant does hereby respond to the examining attorney’s requests and requirements as posted in the August 12, 2007 Office Action.
Applicant submits as Exhibit A a product brochure for the POOLOPTIX surveillance systems package, and believes that this submission satisfies the request for materials. Applicant asks the examining attorney to note that it is marketing the POOLOPTIX surveillance system primarily to commercial property owners.
Applicant responds to the examining attorney’s questions, below. Applicant interprets the terms “optics” and “optical equipment” in their standard dictionary meanings, to refer to conventional camera technology.
1. Will or do the applicant’s goods feature optical equipment for use in and around swimming pool environments? Applicant’s response: The defining feature of the POOLOPTIX surveillance system is a software product that facilitates detection of intrusion events and tracking and recording potential intruders. Note that the POOLOPTIX surveillance system will be sold with optical equipment and without optical equipment.
2. Does the wording “OPTICS” have any significance in the video surveillance industry? Applicant’s response: The term “OPTICS” has no special meaning in the surveillance industry apart from the conventional dictionary definition for the term.
3. Does the wording “OPTICS” have any significance in relation to the applicant’s goods? Applicant’s response: The term “OPTICS” has no special significance with respect to Applicant’s goods apart from the conventional dictionary definition for the term.
4. Will or do the applicant’s goods feature any form of optical technology? Applicant’s response: The POOLOPTIX surveillance system will be sold with optical equipment and without optical equipment. The POOLOPTIX surveillance system is intended for use with current-standing camera technology.
5. Will or do the applicant’s goods feature any form of advanced or non-conventional optical technology? Applicant’s response: The defining feature of the POOLOPTIX surveillance system is the software application that allows for detecting, tracking, and recording intruder events. Any conventional or non-conventional optical technology sold with the POOLOPTIX surveillance system is of secondary importance to the software element.
Applicant respectfully maintains that the mark POOLOPTIX is not merely descriptive of the goods and requests that the refusal to register be withdrawn for the reasons outlined below.
1. The Law as Stated in the Office Action. The Office Action refuses registration with a cursory explanation of the applicable law. The Office Action states only that “[t]he wording is merely descriptive because it merely describes a function, feature, purpose, or use of the goods/services.” This is only part of the rule. A mark must also immediately convey thought or knowledge of the applicable goods or services. In re Gyulay, 820 F2d 1216, 1217 (Fed Cir 1987) (mark must immediately convey knowledge of goods); In re Bed & Breakfast Registry, 791 F2d 157, 159 (Fed Cir 1986) (mark must immediately convey thought of services); In re MetPath Inc., 223 USPQ (BNA) 88, 89 (TTAB 1984) (mark merely descriptive where public will “immediately perceive” nature of applicant’s services); In re Bright-Crest, Ltd., 204 USPQ (BNA) 591, 593 (TTAB 1979) (mark must convey immediate idea of product). The Office Action does not distinguish between descriptive and suggestive marks and or consider other applicable law.
2. Applicable Law. Trademark law in the descriptiveness area is well developed. As the Office Action implies, marks that are “merely descriptive” of the goods or services with which they are to be used are not registrable on the principal register of the U.S. Patent and Trademark Office. Lanham Act Section 2(e)(1), 15 USCA § 1052(e)(1). The descriptiveness rule originates from a long-held policy of courts that descriptive words must be left free for public use. Allowing the user of a descriptive term to obtain exclusive rights therein would harm consumers by impairing the ability of competitors to describe their competing goods or services. E.g., American Cyanamid Corp. v. Connaught Laboratories, Inc. , 231 USPQ (BNA) 128, 129 (2d Cir 1986). There is a distinction, however, between marks that are merely descriptive and those that suggest the associated goods or services. The word “merely” as used in the Lanham Act, 15 USCA § 1052(e), means “only.” In other words, a mark does nothing more than describe the particular goods or services. See Application of Colonial Stores Incorporated, 394 F2d 549, 552 (CCPA 1968); Application of Quik-Print Copy Shops, Inc., 616 F2d 523, 525 (CCPA 1980). If a mark does not tell consumers only what the goods or services are, their functions, their characteristics or their use, then the mark is not “merely” descriptive. 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 11:51 (4th ed rev 2006). By contrast, suggestive marks are inherently distinctive and suitable for registration without proof of secondary meaning. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 US 763, 768, 112 S Ct 2753, 120 L Ed 2d 615 (1992); Hasbro, Inc. v. Lanard Toys, Ltd., 858 F2d 70, 73 (2d Cir 1988). Suggestive marks require thought or perception to reach a conclusion concerning the nature of the goods or services designated. “If the qualities are not instantly apparent and the consumer must follow a multi-step reasoning process in order to ascertain what product characteristics or qualities the term suggests, then the term is suggestive and a valid trademark.” 1 J. Gilson, Trademark Protection and Practice § 2.04 at 2-96 (2006). The standard method by which courts distinguish between suggestive and descriptive marks asks whether a consumer would need to make a small leap or “mental pause” between the mark and the nature of the goods or services or a descriptive feature or characteristic of the goods or services. In re Shutts, 217 USPQ (BNA) 363, 365 (TTAB 1983). The level of imagination needed is low. The Ninth Circuit Court of Appeals has stated: “If a consumer must use more than a small amount of imagination to make the association [to a feature], the mark is suggestive and not descriptive.” Rodeo Collection, Ltd. v. West Seventh, 812 F2d 1215, 1218 (9th Cir 1987). By contrast, a mark is merely descriptive only if it “forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F Supp 479, 488 (SDNY 1968). In determining whether a mark is merely descriptive, courts also consider “whether competitors would be likely to need the terms used in the trademark in describing their products.” Union Carbide Corp. v. Ever-Ready Inc., 531 F2d 366, 379 (7th Cir 1976). This “competitor’s need” test measures the extent to which a mark is necessary for competitors to identify their products or services. If the “‘message conveyed by the mark * * * is so direct and clear that competing sellers would be likely to use the term in describing or advertising their goods, then this indicates that the mark is descriptive.’” Rodeo Collection, 812 F2d at 1218 (quoting J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:68) (bracketed portions omitted). Likewise, the extent to which other competitors have used the name to describe similar products or services is relevant in determining whether a mark is merely descriptive. Riggs Marketing, Inc. v. Mitchell , 45 USPQ2d (BNA) 1247, 1254 (D Nev 1997). For purposes of registration, the descriptiveness of a mark is determined on the basis of the goods or services listed in the application. In re Vehicle Information Network Inc., 32 USPQ2d (BNA) 1542 (TTAB 1994).
3. The Mark Does Not Immediately Convey the Idea of Applicant’ s Goods and Services but, Rather, Requires A Consumer’s Knowledge and Imagination to Connect the Mark with the Goods and Services.
The term “POOLOPTIX” does not call to mind Applicant’s actual goods and services. It would take more than a “ mental pause” to associate the this phrase with Applicant’s goods and services; it would take actual experience or familiarity with the goods and services. Applicant’s goods are a surveillance system for protecting pool enclosures from unwarranted or accidental intrusion. The central feature of this system is the software that facilitates detection of intrusion events and tracking and recording potential intruders. Applicant denies that its product can be characterized as “only” comprising elements directly or closely related to optical technology. For at least the following reasons, the Mark requires familiarity, imagination and a mental leap by users to connect it to Applicant’s goods and services:
3.1 The Term “POOLOPTIX” has Numerous Meanings.
There are a variety of meanings that could be attributed to the term “POOLOPTIX.” As shown by the definition in the Office Action, the word “optics” refers specifically to “an optical instrument.” Given even the specific context of Applicant’s range of goods manufactured for use in and around swimming pools, the term POOLOPTIX could mean equipment such as (1) swimmer’s goggles; (2) optical lenses designed for use in chlorinated water; or (3) test kits for analyzing chlorinated water. All of these meanings and more can be deduced from the term POOLOPTIX (or more properly, “POOL OPTICS”), yet none of them refer to Applicant’s goods. Thus the phrase cannot be “merely descriptive.” These plausible meanings for the term show that it is not descriptive of a single underlying feature or characteristic such that the phrase “forthwith conveys an immediate idea” of a single feature of the products. Stix Products, 295 F Supp at 488.
3.2 The Term “POOLOPTIX” Is a Unique for Applicant’s Goods and Services and a Unique Term in General.
A search of the term “POOLOPTIX” through Google shows 121 instances of the term included in 46 individual records. Exhibit B. Every one of the records and instances of use of “POOLOPTIX” refers to Applicant’s POOLOPTIX product. The term “POOLOPTIX” is original and unique, not just to Applicant’s goods and services, but to any goods and services worldwide.
4. The Mark Is Not Used By Applicant’s Competitors or Needed in Applicant’s Industry.
As demonstrated by the results of the search in Exhibits B, the Mark is not in use by anyone but Applicant. This lack of use by Applicant’s competitors, or by anyone for any purpose other than to refer to Applicant, shows that there is no need for the Mark to be available to describe similar goods and services. The need test and competitor’s use test both dictate that the Mark is not merely descriptive and that the Examining Attorney should withdraw the refusal to register the Mark on that basis.
5. Burden of Proof. The Examining Attorney has not met the burden of proof necessary to show that the Mark is descriptive.
5.1 The Burden of Proof Is on the Examining Attorney. Doubts concerning the suggestive character versus the descriptive character of a mark (or portion thereof) are to be resolved in favor of the applicant. In re Conductive Systems, Inc., 220 USPQ (BNA) 84 (TTAB 1983) (doubts regarding descriptiveness under section 2(e)(1) are resolved in favor of applicant); In re Shutts, 217 USPQ 363 (SNO-RAKE not descriptive of snow removal hand tool); In re Pennwalt, 173 USPQ (BNA) 317 (TTAB 1972) (DRI-FOOT for foot antiperspirants not descriptive). For present purposes, the point is that close cases are to be decided in favor of the applicant because the burden is on the Examining Attorney to document that a mark operates only descriptively with respect to the particular goods or services involved, and because potential competitors will have the opportunity to oppose the registration once published. In re Stroh Brewery Co., 34 U.S.P.Q.2d 1796, 1797 (TTAB 1994) (citing In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972); McCarthy on Trademarks §11:51 at 11-120.4.
5.2 The Examining Attorney Has Not Met the Burden of Proof. Although the Office Action provides dictionary definitions for ”pool” and “optics,” it does not provide a definition “pool optic(s),” for which Applicant, too, is unable to locate a single definition from an authoritative source. Thereafter, the Office Action does not provide any evidence of why the term “POOLOPTIX,” or even “POOLOPTICS,” as a whole, is merely descriptive. The Office Action begins and ends its inquiry into the Mark’s meaning by merely stating “[s]ee Dictionary definitions. . .attached.” By neglecting to inquire into the meaning of the Mark as a whole, the Office Action flies in the face of the rulings in Dial-A-Mattress and In re Oppedahl. The Office Action does not make even a prima facie case that the Mark is merely descriptive. This fact, regardless of any other fact or argument, refutes the Examining Attorney’s determination that the Mark is “merely descriptive.” See Dial-A-Mattress; In re WSI Corporation, 1 USPQ2d (BNA) 1570, 1571 (TTAB 1986) (citation to specialized reference book not, by itself, adequate evidence to show mark merely descriptive). If registration is refused on the basis that a mark is merely descriptive, the examining attorney should support the refusal with appropriate evidence. Trademark Manual of Examining Procedure § 1209.02 (4th ed. April 2005). “In all cases the examining attorney should endeavor to make the Office Action as complete as possible so that the applicant may respond appropriately.” Id. As the Office Action does not include evidence sufficient for a prima facie finding that the phrase is merely descriptive, the Examining Attorney should withdraw the refusal to register “POOLOPTIX” for being merely descriptive.
6. Summary. This Response and Amendment sets forth a number of explanations as to why the mark POOLOPTIX is not "merely descriptive" in relation to Applicant’s goods and services, any one of which is sufficient for a determination that the Mark is eligible for registration. The Mark has numerous possible meanings and it is not a term used or needed in the industry to describe similar goods or services. Finally, the Examining Attorney has failed to provide any evidence to support a determination that the term “POOLOPTIX is merely descriptive of Applicant’s goods or services, and Applicant has confirmed that none exists.
Applicant submits that this is not a "close case," but in the event that the Examining Attorney should so determine, the Examining Attorney is reminded that close cases in the descriptiveness area are to be decided in favor of the applicant. The refusal to register the Mark POOLOPTIX should be withdrawn.
REMARKS
Applicant believes that this Response and Amendment fully addresses the issues set forth in the August 12, 2007 Office Action. In the event the Examining Attorney does not agree with the sufficiency of this Response and Amendment, Applicant respectfully requests that the Examining Attorney’s refusal not be made final, and Applicant be given the opportunity to respond to any outstanding issues. Applicant invites the Examining Attorney to address any remaining issues in a telephone conference with the undersigned. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| JPG FILE(S) | \\TICRS2\EXPORT15\770\080 \77008079\xml1\ROA0002.JP G |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0003.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_19836178141-162423024_._Exhibit_B_-_Google_Search_Results.pdf |
| CONVERTED PDF FILE(S) (10 pages) |
\\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0005.JPG |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0006.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0007.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0008.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0009.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0010.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0011.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0012.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0013.JPG | |
| \\TICRS2\EXPORT15\770\080\77008079\xml1\ROA0014.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A, being a customer brochure of Applicant's POOLOPTIX goods, submitted in response to the posted requirement to provide additional information, and as an exhibit to the argument, and; Exhibit B, being a print out of results from a Google search for the mark POOLOPTIX |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Applicant responds to the examining attorney's requirement for additional information and responds to the questions posed in the office action in the text of Applicant's substantive response to the office action |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jere M. Webb/ |
| SIGNATORY'S NAME | Jere M. Webb |
| SIGNATORY'S POSITION | Attorneys for Applicant |
| DATE SIGNED | 02/12/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 12 16:59:10 EST 2008 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20080212165910274014-7700 8079-41061c5b17170bcbc648 3c284945bdd1-N/A-N/A-2008 0212162423024624 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Applicant does hereby respond to the examining attorney’s requests and requirements as posted in the August 12, 2007 Office Action.
Applicant submits as Exhibit A a product brochure for the POOLOPTIX surveillance systems package, and believes that this submission satisfies the request for materials. Applicant asks the examining attorney to note that it is marketing the POOLOPTIX surveillance system primarily to commercial property owners.
Applicant responds to the examining attorney’s questions, below. Applicant interprets the terms “optics” and “optical equipment” in their standard dictionary meanings, to refer to conventional camera technology.
1. Will or do the applicant’s goods feature optical equipment for use in and around swimming pool environments?
Applicant’s response: The defining feature of the POOLOPTIX surveillance system is a software product that facilitates detection of intrusion events and tracking and recording potential intruders. Note that the POOLOPTIX surveillance system will be sold with optical equipment and without optical equipment.
2. Does the wording “OPTICS” have any significance in the video surveillance industry?
Applicant’s response: The term “OPTICS” has no special meaning in the surveillance industry apart from the conventional dictionary definition for the term.
3. Does the wording “OPTICS” have any significance in relation to the applicant’s goods?
Applicant’s response: The term “OPTICS” has no special significance with respect to Applicant’s goods apart from the conventional dictionary definition for the term.
4. Will or do the applicant’s goods feature any form of optical technology?
Applicant’s response: The POOLOPTIX surveillance system will be sold with optical equipment and without optical equipment. The POOLOPTIX surveillance system is intended for use with current-standing camera technology.
5. Will or do the applicant’s goods feature any form of advanced or non-conventional optical technology?
Applicant’s response: The defining feature of the POOLOPTIX surveillance system is the software application that allows for detecting, tracking, and recording intruder events. Any conventional or non-conventional optical technology sold with the POOLOPTIX surveillance system is of secondary importance to the software element.
Applicant respectfully maintains that the mark POOLOPTIX is not merely descriptive of the goods and requests that the refusal to register be withdrawn for the reasons outlined below.
1. The Law as Stated in the Office Action.
The Office Action refuses registration with a cursory explanation of the applicable law. The Office Action states only that “[t]he wording is merely descriptive because it merely describes a function, feature, purpose, or use of the goods/services.” This is only part of the rule. A mark must also immediately convey thought or knowledge of the applicable goods or services. In re Gyulay, 820 F2d 1216, 1217 (Fed Cir 1987) (mark must immediately convey knowledge of goods); In re Bed & Breakfast Registry, 791 F2d 157, 159 (Fed Cir 1986) (mark must immediately convey thought of services); In re MetPath Inc., 223 USPQ (BNA) 88, 89 (TTAB 1984) (mark merely descriptive where public will “immediately perceive” nature of applicant’s services); In re Bright-Crest, Ltd., 204 USPQ (BNA) 591, 593 (TTAB 1979) (mark must convey immediate idea of product).
The Office Action does not distinguish between descriptive and suggestive marks and or consider other applicable law.
2. Applicable Law.
Trademark law in the descriptiveness area is well developed. As the Office Action implies, marks that are “merely descriptive” of the goods or services with which they are to be used are not registrable on the principal register of the U.S. Patent and Trademark Office. Lanham Act Section 2(e)(1), 15 USCA § 1052(e)(1). The descriptiveness rule originates from a long-held policy of courts that descriptive words must be left free for public use. Allowing the user of a descriptive term to obtain exclusive rights therein would harm consumers by impairing the ability of competitors to describe their competing goods or services. E.g., American Cyanamid Corp. v. Connaught Laboratories, Inc. , 231 USPQ (BNA) 128, 129 (2d Cir 1986). There is a distinction, however, between marks that are merely descriptive and those that suggest the associated goods or services.
The word “merely” as used in the Lanham Act, 15 USCA § 1052(e), means “only.” In other words, a mark does nothing more than describe the particular goods or services. See Application of Colonial Stores Incorporated, 394 F2d 549, 552 (CCPA 1968); Application of Quik-Print Copy Shops, Inc., 616 F2d 523, 525 (CCPA 1980). If a mark does not tell consumers only what the goods or services are, their functions, their characteristics or their use, then the mark is not “merely” descriptive. 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 11:51 (4th ed rev 2006).
By contrast, suggestive marks are inherently distinctive and suitable for registration without proof of secondary meaning. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 US 763, 768, 112 S Ct 2753, 120 L Ed 2d 615 (1992); Hasbro, Inc. v. Lanard Toys, Ltd., 858 F2d 70, 73 (2d Cir 1988). Suggestive marks require thought or perception to reach a conclusion concerning the nature of the goods or services designated. “If the qualities are not instantly apparent and the consumer must follow a multi-step reasoning process in order to ascertain what product characteristics or qualities the term suggests, then the term is suggestive and a valid trademark.” 1 J. Gilson, Trademark Protection and Practice § 2.04 at 2-96 (2006).
The standard method by which courts distinguish between suggestive and descriptive marks asks whether a consumer would need to make a small leap or “mental pause” between the mark and the nature of the goods or services or a descriptive feature or characteristic of the goods or services. In re Shutts, 217 USPQ (BNA) 363, 365 (TTAB 1983). The level of imagination needed is low. The Ninth Circuit Court of Appeals has stated: “If a consumer must use more than a small amount of imagination to make the association [to a feature], the mark is suggestive and not descriptive.” Rodeo Collection, Ltd. v. West Seventh, 812 F2d 1215, 1218 (9th Cir 1987). By contrast, a mark is merely descriptive only if it “forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F Supp 479, 488 (SDNY 1968).
In determining whether a mark is merely descriptive, courts also consider “whether competitors would be likely to need the terms used in the trademark in describing their products.” Union Carbide Corp. v. Ever-Ready Inc., 531 F2d 366, 379 (7th Cir 1976). This “competitor’s need” test measures the extent to which a mark is necessary for competitors to identify their products or services. If the “‘message conveyed by the mark * * * is so direct and clear that competing sellers would be likely to use the term in describing or advertising their goods, then this indicates that the mark is descriptive.’” Rodeo Collection, 812 F2d at 1218 (quoting J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 11:68) (bracketed portions omitted). Likewise, the extent to which other competitors have used the name to describe similar products or services is relevant in determining whether a mark is merely descriptive. Riggs Marketing, Inc. v. Mitchell , 45 USPQ2d (BNA) 1247, 1254 (D Nev 1997).
For purposes of registration, the descriptiveness of a mark is determined on the basis of the goods or services listed in the application. In re Vehicle Information Network Inc., 32 USPQ2d (BNA) 1542 (TTAB 1994).
3. The Mark Does Not Immediately Convey the Idea of Applicant’ s Goods and Services but, Rather, Requires A Consumer’s Knowledge and Imagination to Connect the Mark with the Goods and Services.
The term “POOLOPTIX” does not call to mind Applicant’s actual goods and services. It would take more than a “ mental pause” to associate the this phrase with Applicant’s goods and services; it would take actual experience or familiarity with the goods and services. Applicant’s goods are a surveillance system for protecting pool enclosures from unwarranted or accidental intrusion. The central feature of this system is the software that facilitates detection of intrusion events and tracking and recording potential intruders. Applicant denies that its product can be characterized as “only” comprising elements directly or closely related to optical technology. For at least the following reasons, the Mark requires familiarity, imagination and a mental leap by users to connect it to Applicant’s goods and services:
3.1 The Term “POOLOPTIX” has Numerous Meanings.
There are a variety of meanings that could be attributed to the term “POOLOPTIX.” As shown by the definition in the Office Action, the word “optics” refers specifically to “an optical instrument.” Given even the specific context of Applicant’s range of goods manufactured for use in and around swimming pools, the term POOLOPTIX could mean equipment such as (1) swimmer’s goggles; (2) optical lenses designed for use in chlorinated water; or (3) test kits for analyzing chlorinated water. All of these meanings and more can be deduced from the term POOLOPTIX (or more properly, “POOL OPTICS”), yet none of them refer to Applicant’s goods. Thus the phrase cannot be “merely descriptive.”
These plausible meanings for the term show that it is not descriptive of a single underlying feature or characteristic such that the phrase “forthwith conveys an immediate idea” of a single feature of the products. Stix Products, 295 F Supp at 488.
3.2 The Term “POOLOPTIX” Is a Unique for Applicant’s Goods and Services and a Unique Term in General.
A search of the term “POOLOPTIX” through Google shows 121 instances of the term included in 46 individual records. Exhibit B. Every one of the records and instances of use of “POOLOPTIX” refers to Applicant’s POOLOPTIX product. The term “POOLOPTIX” is original and unique, not just to Applicant’s goods and services, but to any goods and services worldwide.
4. The Mark Is Not Used By Applicant’s Competitors or Needed in Applicant’s Industry.
As demonstrated by the results of the search in Exhibits B, the Mark is not in use by anyone but Applicant. This lack of use by Applicant’s competitors, or by anyone for any purpose other than to refer to Applicant, shows that there is no need for the Mark to be available to describe similar goods and services. The need test and competitor’s use test both dictate that the Mark is not merely descriptive and that the Examining Attorney should withdraw the refusal to register the Mark on that basis.
5. Burden of Proof.
The Examining Attorney has not met the burden of proof necessary to show that the Mark is descriptive.
5.1 The Burden of Proof Is on the Examining Attorney.
Doubts concerning the suggestive character versus the descriptive character of a mark (or portion thereof) are to be resolved in favor of the applicant. In re Conductive Systems, Inc., 220 USPQ (BNA) 84 (TTAB 1983) (doubts regarding descriptiveness under section 2(e)(1) are resolved in favor of applicant); In re Shutts, 217 USPQ 363 (SNO-RAKE not descriptive of snow removal hand tool); In re Pennwalt, 173 USPQ (BNA) 317 (TTAB 1972) (DRI-FOOT for foot antiperspirants not descriptive). For present purposes, the point is that close cases are to be decided in favor of the applicant because the burden is on the Examining Attorney to document that a mark operates only descriptively with respect to the particular goods or services involved, and because potential competitors will have the opportunity to oppose the registration once published. In re Stroh Brewery Co., 34 U.S.P.Q.2d 1796, 1797 (TTAB 1994) (citing In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972); McCarthy on Trademarks §11:51 at 11-120.4.
5.2 The Examining Attorney Has Not Met the Burden of Proof.
Although the Office Action provides dictionary definitions for ”pool” and “optics,” it does not provide a definition “pool optic(s),” for which Applicant, too, is unable to locate a single definition from an authoritative source. Thereafter, the Office Action does not provide any evidence of why the term “POOLOPTIX,” or even “POOLOPTICS,” as a whole, is merely descriptive. The Office Action begins and ends its inquiry into the Mark’s meaning by merely stating “[s]ee Dictionary definitions. . .attached.” By neglecting to inquire into the meaning of the Mark as a whole, the Office Action flies in the face of the rulings in Dial-A-Mattress and In re Oppedahl. The Office Action does not make even a prima facie case that the Mark is merely descriptive. This fact, regardless of any other fact or argument, refutes the Examining Attorney’s determination that the Mark is “merely descriptive.” See Dial-A-Mattress; In re WSI Corporation, 1 USPQ2d (BNA) 1570, 1571 (TTAB 1986) (citation to specialized reference book not, by itself, adequate evidence to show mark merely descriptive). If registration is refused on the basis that a mark is merely descriptive, the examining attorney should support the refusal with appropriate evidence. Trademark Manual of Examining Procedure § 1209.02 (4th ed. April 2005). “In all cases the examining attorney should endeavor to make the Office Action as complete as possible so that the applicant may respond appropriately.” Id.
As the Office Action does not include evidence sufficient for a prima facie finding that the phrase is merely descriptive, the Examining Attorney should withdraw the refusal to register “POOLOPTIX” for being merely descriptive.
6. Summary.
This Response and Amendment sets forth a number of explanations as to why the mark POOLOPTIX is not "merely descriptive" in relation to Applicant’s goods and services, any one of which is sufficient for a determination that the Mark is eligible for registration. The Mark has numerous possible meanings and it is not a term used or needed in the industry to describe similar goods or services. Finally, the Examining Attorney has failed to provide any evidence to support a determination that the term “POOLOPTIX is merely descriptive of Applicant’s goods or services, and Applicant has confirmed that none exists.
Applicant submits that this is not a "close case," but in the event that the Examining Attorney should so determine, the Examining Attorney is reminded that close cases in the descriptiveness area are to be decided in favor of the applicant. The refusal to register the Mark POOLOPTIX should be withdrawn.
REMARKS
Applicant believes that this Response and Amendment fully addresses the issues set forth in the August 12, 2007 Office Action. In the event the Examining Attorney does not agree with the sufficiency of this Response and Amendment, Applicant respectfully requests that the Examining Attorney’s refusal not be made final, and Applicant be given the opportunity to respond to any outstanding issues. Applicant invites the Examining Attorney to address any remaining issues in a telephone conference with the undersigned.
