| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77055600 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In the office action, the Examining Attorney refused registration of the mark ORANGE for enteral feeding pumps on the basis that the mark is merely descriptive. Applicant respectfully disagrees and requests reconsideration of the refusal. In the refusal, the Examining Attorney cited two cases as the basis for the position that ORANGE merely describes a color in which the goods are presented. Both cases, however, are distinguishable. In Ferro v. SMC, SMC sought registration of the mark TITANIUM YELLOW for a paint pigment that was yellow. In reaching its decision, the Board noted that the paint pigment was yellow and that the term titanium yellow was often used to describe such paint pigments. A party would need to use the terms titanium and yellow to obtain a titanium paint pigment that was yellow. Thus, the mark merely describe the goods. Likewise, in In Re Champion International, the Board refused registration for BLANCO (white) for use in wood panelling that was off white. Again, the mark merely described the goods in such a way that a consumer would believe that it was describing the product. In both cases, the product would be purchased based on the color, thus resulting in the use of the color as being merely descriptive. Unlike clothing, paint or panneling, enteral feeding pumps are not purchased based on color of the pump. (Applicant has attached web pages showing a variety of pumps currently available.) Enteral feeding pumps are are purchased based on their functional abilities. The name ORANGE for an enteral feeding pump is unique and would instantly be viewed as a source identifier. Regardless of the color of the pump (which may be partially orange in a play on the pump's name), the name ORANGE is being used as the product name, rather than simply the color of the product. A person looking to purchase a pump would not view ORANGE as merely descriptive. This is contsistent with PTO practice regarding other marks. For example, the U.S. Reg. No. 2344619 registerd for the mark ORANGE for use on Mobile Telephones. Mobile telephones are often partially ORANGE - especially since ORANGE uses its mark as a large orange square with the word ORANGE in white. Applicant should not be penalized if it elects to adopt trade dress which plays on the its pending trademark Application. The term ORANGE would be appreciated by purchasers of the enteral feeding pumps as a source identifier and the mark should be registered because it is not merely descriptive.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS2\EXPORT13\770\556 \77055600\xml2\ROA0002.JP G |
| \\TICRS2\EXPORT13\770\556 \77055600\xml2\ROA0003.JP G | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Randall B. Bateman/ |
| SIGNATORY'S NAME | Randall B. Bateman |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 07/25/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jul 25 13:17:23 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20070725131723608792-7705 5600-38039535c8b1bf0616da d7e74f95318ce52-N/A-N/A-2 0070725121618824624 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
In the office action, the Examining Attorney refused registration of the mark ORANGE for enteral feeding pumps on the basis that the mark is merely descriptive. Applicant respectfully disagrees and requests reconsideration of the refusal.
In the refusal, the Examining Attorney cited two cases as the basis for the position that ORANGE merely describes a color in which the goods are presented. Both cases, however, are distinguishable.
In Ferro v. SMC, SMC sought registration of the mark TITANIUM YELLOW for a paint pigment that was yellow. In reaching its decision, the Board noted that the paint pigment was yellow and that the term titanium yellow was often used to describe such paint pigments. A party would need to use the terms titanium and yellow to obtain a titanium paint pigment that was yellow. Thus, the mark merely describe the goods.
Likewise, in In Re Champion International, the Board refused registration for BLANCO (white) for use in wood panelling that was off white. Again, the mark merely described the goods in such a way that a consumer would believe that it was describing the product. In both cases, the product would be purchased based on the color, thus resulting in the use of the color as being merely descriptive.
Unlike clothing, paint or panneling, enteral feeding pumps are not purchased based on color of the pump. (Applicant has attached web pages showing a variety of pumps currently available.) Enteral feeding pumps are are purchased based on their functional abilities. The name ORANGE for an enteral feeding pump is unique and would instantly be viewed as a source identifier. Regardless of the color of the pump (which may be partially orange in a play on the pump's name), the name ORANGE is being used as the product name, rather than simply the color of the product. A person looking to purchase a pump would not view ORANGE as merely descriptive.
This is contsistent with PTO practice regarding other marks. For example, the U.S. Reg. No. 2344619 registerd for the mark ORANGE for use on Mobile Telephones. Mobile telephones are often partially ORANGE - especially since ORANGE uses its mark as a large orange square with the word ORANGE in white.
Applicant should not be penalized if it elects to adopt trade dress which plays on the its pending trademark Application. The term ORANGE would be appreciated by purchasers of the enteral feeding pumps as a source identifier and the mark should be registered because it is not merely descriptive.
