| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77113704 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant DiVitas Networks, Inc. submits this response to the Office Action sent April 18, 2007.
The Examining Attorney refused registration under Section 2(e)(1) on the ground that the proposed mark merely describes a feature of the applicant’s goods. However, Applicant respectfully submits that UNIFIED MOBILE CONVERGENCE does not immediately bring to mind an ingredient, quality, characteristic, function, feature, purpose or use of Applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). It is at most suggestive, and therefore the refusal should be withdrawn. Any doubt must be resolved in favor of allowing registration. In re Conductive Systems, Inc., 220 U.S.P.Q. 84 (TTAB 1983). A. UNIFIED MOBILE CONVERGENCE Is a Distinctive Composite Mark That Does Not Immediately Convey the Nature or Character of the Goods The Examining Attorney maintained that UNIFIED MOBILE CONVERGENCE merely describes a feature of Applicant’s goods. However, a mark is descriptive only if it “immediately bring to mind the nature or character of the goods.” In re Wilderness Group, Inc., 189 U.S.P.Q. 44 (TTAB 1975). That is not the case with UNIFIED MOBILE CONVERGENCE. Even if UNIFIED MOBILE CONVERGENCE might contain ordinary words, the undissected composite mark is not descriptive. “[I]t does not follow as a matter of law that, because the component words of a mark may be merely descriptive and therefore unregistrable, the combination thereof is equally descriptive and incapable of functioning as a trademark; the question is whether the mark considered in its entirety possesses a merely descriptive significance as applied to the goods in question, i.e., whether it conveys a readily understood meaning to the average purchaser of such goods.” In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979) (cited by Examining Attorney) (emphasis added); see also Ex Parte Barker, 92 U.S.P.Q. 218, 219 (Com’r Pat. & TM 1952) (CHERRY-BERRY-BING not descriptive of fruit preserves, even though the individual words generically refer to fruits made into preserves); Concurrent Technologies, Inc. v. Concurrent Technologies Corp., 12 U.S.P.Q.2d 1054, 1057 (TTAB 1989) (though “concurrent” has a descriptive meaning in the computer field, “concurrent technologies” does not, at most suggesting a company that manufactures goods for use in connection with concurrent processing). UNIFIED MOBILE CONVERGENCE – considered in its entirety – is not a common phrase with a “readily understood meaning.” A search for the exact phrase “unified mobile convergence” resulted in not a single hit on Google, Yahoo, or MSN. Exhibits 1, 2 & 3. This powerfully demonstrates that Applicant’s mark UNIFIED MOBILE CONVERGENCE, though composed of ordinary words, is actually an novel coinage that departs from ordinary language. See Ex Parte Pillsbury Flour Mills Co., 23 U.S.P.Q. 168, 169 (1934) (MINITMIX is not descriptive it would not “normally and naturally be employed by a manufacturer in describing” to describe biscuit flour mix). Ultimately, UNIFIED MOBILE CONVERGENCE is not descriptive because it does not convey immediate information about Applicant’s technology. The Examining Attorney proposes that “mobile convergence” is already understood in the relevant industry to refer to the merging of wireless communication and fixed-line communication into a single device. However, as shown above, “unified mobile convergence” is not even in current usage, and a consumer, even with knowledge of Applicant’s goods, would not know what is being unified or how. Indeed, “unified” seems ambiguously redundant with “convergence,” so the consumer would wonder just what “ingredient, quality, characteristic, function, feature, purpose or use” is being added. “If a consumer must use more than a small amount of imagination to make the association [of product attribute], the mark is suggestive and not descriptive.” Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 2 U.S.P.Q.2d 1204, 1206 (9th Cir. 1987) (RODEO COLLECTION not descriptive of a shopping mall on Rodeo Drive, Beverly Hills). In In re Wells Fargo & Co., 231 U.S.P.Q. 116 (TTAB 1986), the Examining Attorney refused registration for EXPRESS SAVINGS for “banking services,” saying that it described rapid accumulation of savings. The Examining Attorney pointed to the prominent featuring of the word “fast,” in the same color as the mark, on a specimen brochure that also touted a service for automatic transfers from checking to savings account. The Trademark Trial and Appeal Board, however, held that too much “mental gymnastics” was required for an informed consumer to believe that such features would lead to rapid accumulation of savings. For example, rapid deposits through automatic transfers would not lead to accumulated savings if customers have insufficient money in their checking account or if they could not exercise discipline in not withdrawing from their savings account. In In Re Kopy Kat, Inc., 498 F.2d 1379 (CCPA 1974), the court held that the slogan WE PRINT-IT IN A MIN-IT, when used for photocopying services, “is, obviously, highly suggestive of speed with respect to some kind of printing service, but one cannot tell what kind. It could be printing photographs, or printing with type, or making photostatic, xerographic, lithographic, photo offset, or other copies.” Id. at 1380; see also In Re Sottile, 156 U.S.P.Q. at 655 (YOUR FINANCIAL SECURITY IS OUR BUSINESS is not descriptive because the business of insurance underwriting is to indemnify, and further expression of care for customer’s financial well-being is only suggestive of insurance underwriting); In re Lincoln Park Van Lines, 149 U.S.P.Q. 313 (TTAB 1966) (FROM MAINE’S COOL BREEZE TO THE FLORIDA KEYS not descriptive of moving company’s services because the company’s service area does not “factually” and precisely extend from Maine’s single breeze to the islands off Florida). UNIFIED MOBILE CONVERGENCE likewise requires “mental gymnastics” because there is no precise, “factual” meaning to the phrase. Thus, it cannot and does not convey an immediate meaning that could be said to “describe” Applicant’s advanced and complex products. B. UNIFIED MOBILE CONVERGENCE Is at Most Suggestive and Therefore Registrable For the reasons above, UNIFIED MOBILE CONVERGENCE is not descriptive. It is at most suggestive and should be allowed to register.
Any doubt regarding descriptiveness must be resolved in favor of registration. In Re Conductive Systems, Inc., 220 U.S.P.Q. 84 (TTAB
1983). II. Identification of Goods The Examining Attorney said Applicant’s description of goods is unacceptable as indefinite. Applicant amends its goods description as described in the TEAS form. III. Request for Information In response to the Examining Attorney's request, Applicant submits the enclosed product datasheet. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| JPG FILE(S) | \\TICRS2\EXPORT14\771\137 \77113704\xml1\ROA0002.JP G |
| \\TICRS2\EXPORT14\771\137\77113704\xml1\ROA0003.JPG | |
| \\TICRS2\EXPORT14\771\137\77113704\xml1\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_7562111104-183531305_._DiVitas_-_MISC_DiVitas_Brochure_E61i-1.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS2\EXPORT14\771\137\77113704\xml1\ROA0005.JPG |
| \\TICRS2\EXPORT14\771\137\77113704\xml1\ROA0006.JPG | |
| \\TICRS2\EXPORT14\771\137\77113704\xml1\ROA0007.JPG | |
| \\TICRS2\EXPORT14\771\137\77113704\xml1\ROA0008.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Screen shots of internet search results. Applicant's product data sheet. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Telecommunications hardware and software for managing voice and data communications between an enterprise and individual mobile devices | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Computer hardware for telecommunications and software for use in managing voice and data communications between a business, governmental, or nonprofit enterprise and individual mobile devices | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /duy thai/ |
| SIGNATORY'S NAME | Duy Thai |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 10/16/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Oct 16 18:44:04 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0071016184404629377-77113 704-400f77da37467fec2116e ba0c2f6dc3b8f-N/A-N/A-200 71016183531305095 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Applicant DiVitas Networks, Inc. submits this response to the Office Action sent April 18, 2007.
I.
UNIFIED MOBILECONVERGENCE Is Not Descriptive and Therefore the Section 2(e)(1) Refusal Should Be Withdrawn
The Examining Attorney refused registration under Section 2(e)(1) on the ground that the proposed mark merely describes a feature of the applicant’s goods. However, Applicant respectfully submits that UNIFIED MOBILE CONVERGENCE does not immediately bring to mind an ingredient, quality, characteristic, function, feature, purpose or use of Applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). It is at most suggestive, and therefore the refusal should be withdrawn. Any doubt must be resolved in favor of allowing registration. In re Conductive Systems, Inc., 220 U.S.P.Q. 84 (TTAB 1983).
A. UNIFIED MOBILE CONVERGENCE Is a Distinctive Composite Mark That Does Not Immediately Convey the Nature or Character of the Goods
The Examining Attorney maintained that UNIFIED MOBILE CONVERGENCE merely describes a feature of Applicant’s goods. However, a mark is descriptive only if it “immediately bring to mind the nature or character of the goods.” In re Wilderness Group, Inc., 189 U.S.P.Q. 44 (TTAB 1975). That is not the case with UNIFIED MOBILE CONVERGENCE.
Even if UNIFIED MOBILE CONVERGENCE might contain ordinary words, the undissected composite mark is not descriptive. “[I]t does not follow as a matter of law that, because the component words of a mark may be merely descriptive and therefore unregistrable, the combination thereof is equally descriptive and incapable of functioning as a trademark; the question is whether the mark considered in its entirety possesses a merely descriptive significance as applied to the goods in question, i.e., whether it conveys a readily understood meaning to the average purchaser of such goods.” In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979) (cited by Examining Attorney) (emphasis added); see also Ex Parte Barker, 92 U.S.P.Q. 218, 219 (Com’r Pat. & TM 1952) (CHERRY-BERRY-BING not descriptive of fruit preserves, even though the individual words generically refer to fruits made into preserves); Concurrent Technologies, Inc. v. Concurrent Technologies Corp., 12 U.S.P.Q.2d 1054, 1057 (TTAB 1989) (though “concurrent” has a descriptive meaning in the computer field, “concurrent technologies” does not, at most suggesting a company that manufactures goods for use in connection with concurrent processing).
UNIFIED MOBILE CONVERGENCE – considered in its entirety – is not a common phrase with a “readily understood meaning.” A search for the exact phrase “unified mobile convergence” resulted in not a single hit on Google, Yahoo, or MSN. Exhibits 1, 2 & 3. This powerfully demonstrates that Applicant’s mark UNIFIED MOBILE CONVERGENCE, though composed of ordinary words, is actually an novel coinage that departs from ordinary language. See Ex Parte Pillsbury Flour Mills Co., 23 U.S.P.Q. 168, 169 (1934) (MINITMIX is not descriptive it would not “normally and naturally be employed by a manufacturer in describing” to describe biscuit flour mix).
Ultimately, UNIFIED MOBILE CONVERGENCE is not descriptive because it does not convey immediate information about Applicant’s technology. The Examining Attorney proposes that “mobile convergence” is already understood in the relevant industry to refer to the merging of wireless communication and fixed-line communication into a single device. However, as shown above, “unified mobile convergence” is not even in current usage, and a consumer, even with knowledge of Applicant’s goods, would not know what is being unified or how. Indeed, “unified” seems ambiguously redundant with “convergence,” so the consumer would wonder just what “ingredient, quality, characteristic, function, feature, purpose or use” is being added. “If a consumer must use more than a small amount of imagination to make the association [of product attribute], the mark is suggestive and not descriptive.” Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 2 U.S.P.Q.2d 1204, 1206 (9th Cir. 1987) (RODEO COLLECTION not descriptive of a shopping mall on Rodeo Drive, Beverly Hills).
In In re Wells Fargo & Co., 231 U.S.P.Q. 116 (TTAB 1986), the Examining Attorney refused registration for EXPRESS SAVINGS for “banking services,” saying that it described rapid accumulation of savings. The Examining Attorney pointed to the prominent featuring of the word “fast,” in the same color as the mark, on a specimen brochure that also touted a service for automatic transfers from checking to savings account. The Trademark Trial and Appeal Board, however, held that too much “mental gymnastics” was required for an informed consumer to believe that such features would lead to rapid accumulation of savings. For example, rapid deposits through automatic transfers would not lead to accumulated savings if customers have insufficient money in their checking account or if they could not exercise discipline in not withdrawing from their savings account.
In In Re Kopy Kat, Inc., 498 F.2d 1379 (CCPA 1974), the court held that the slogan WE PRINT-IT IN A MIN-IT, when used for photocopying services, “is, obviously, highly suggestive of speed with respect to some kind of printing service, but one cannot tell what kind. It could be printing photographs, or printing with type, or making photostatic, xerographic, lithographic, photo offset, or other copies.” Id. at 1380; see also In Re Sottile, 156 U.S.P.Q. at 655 (YOUR FINANCIAL SECURITY IS OUR BUSINESS is not descriptive because the business of insurance underwriting is to indemnify, and further expression of care for customer’s financial well-being is only suggestive of insurance underwriting); In re Lincoln Park Van Lines, 149 U.S.P.Q. 313 (TTAB 1966) (FROM MAINE’S COOL BREEZE TO THE FLORIDA KEYS not descriptive of moving company’s services because the company’s service area does not “factually” and precisely extend from Maine’s single breeze to the islands off Florida).
UNIFIED MOBILE CONVERGENCE likewise requires “mental gymnastics” because there is no precise, “factual” meaning to the phrase. Thus, it cannot and does not convey an immediate meaning that could be said to “describe” Applicant’s advanced and complex products.
B. UNIFIED MOBILE CONVERGENCE Is at Most Suggestive and Therefore Registrable
For the reasons above, UNIFIED MOBILE CONVERGENCE is not descriptive. It is at most suggestive and should be allowed to register.
Any doubt regarding descriptiveness must be resolved in favor of registration. In Re Conductive Systems, Inc., 220 U.S.P.Q. 84 (TTAB
1983).
II. Identification of Goods
The Examining Attorney said Applicant’s description of goods is unacceptable as indefinite. Applicant amends its goods description as described in the TEAS form.
III. Request for Information
In response to the Examining Attorney's request, Applicant submits the enclosed product datasheet.
