UNITED STATES PATENT AND TRADEMARK OFFICE

OFFICE ACTION

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

Serial Number  77/036839

The assigned examining attorney reviewed the referenced application and determined the following:

No Conflicting Marks Found

The examining attorney searched the Office records and found no similar registered or pending mark that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  The applicant, however, should note the following refusal.

Section 2(e)(1) Merely Descriptive Refusal

Registration is refused because the proposed mark, TOE SOX, merely describes a feature of the applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.  A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). 

The wording SOX is a phonetic spelling of SOCKS.  SOCKS is defined as “a soft foot covering,” and TOE is defined as “digit of human foot” and “the part of a sock, shoe, or boot that covers the digits of the foot.”  See attached dictionary definitions.  Furthermore, TOE SOCKS are socks that individually encase each toe in the same way a glove encases each finger.  See attached web page printout.  The attached third-party registrations show the identified goods “toe socks,” and the attached web page printouts show “toe socks” as socks with individually separated toes. 

The applicant’s goods are “socks.”  The specimen of record states that the goods are “form-fitting five-toe construction.”  The attached pages from the applicant’s web site feature socks that individually encase each toe in the same way a glove encases each finger, like the other attached “toe socks.” 

A novel spelling of a merely descriptive term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive term.  Andrew J. McPartland, Inc. v. Montgomery Ward & Co., Inc., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947), cert. denied, 333 U.S. 875,77 USPQ 676 (S. Ct. 1948) (“KWIXTART,” phonetic spelling of “quick start,” is descriptive of electric storage batteries); In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355(C.C.P.A. 1953) (“FASTIE,” as phonetic spelling of “fast tie,” connotes that which unites or joins quickly, and hence the notation is descriptive of the function and character of tube sealing machines); C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D. Pa. 1976) (C-THRU held to be the equivalent of “see-through” and therefore merely descriptive of transparent rulers and drafting aids); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-LYX held generic for mineral licks for feeding livestock); In re State Chemical Manufacturing Co., 225 USPQ 687 (TTAB 1985) (“FOM,” equivalent to word “foam,” is descriptive for foam rug shampoo); TMEP §1209.03(j).  Additionally, the phonetic equivalent of a generic term is also generic.  See In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (MINERAL-LYX held generic for mineral licks for feeding livestock); In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff’d, 20 USPQ2d 1319 (Fed. Cir. 1991) (ICE PAK held generic for ice packs); TMEP §1209.03(j).  Here, the term SOX is the phonetic equivalent of SOCKS.

The proposed mark comprises wording in stylized lettering.  However, the degree of stylization in this case is not sufficiently striking, unique or distinctive as to create a commercial impression separate and apart from the unregistrable components of the mark and, thus, is not sufficient to render the mark registrable.  In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987); In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985); In re Geo. A. Hormel & Company, 227 USPQ 813 (TTAB 1985); In re Cosmetic Factory, Inc., 220 USPQ 1103 (TTAB 1983); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980).

The two major reasons for not protecting descriptive marks are:  (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant.  This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.  In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).  The evidence of record shows the significant competitive need for the phonetic equivalent of the wording “toe sox,” “toe socks.”

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant has questions about its application or needs assistance in responding to this Office Action, please telephone the assigned examining attorney at the number below.

/LeighLowry/

Leigh A. Lowry

Examining Attorney

U.S. Patent and Trademark Office

Law Office 104

(571) 272-9725

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.