| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp 09/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77113755 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| DATE OF NOTICE OF ABANDONMENT | 12/31/2007 |
| PETITION | |
| PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. |
| RESPONSE TO OFFICE ACTION | |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
2(e) Descriptiveness Refusal
Applicant submits that WORLD DEBIT is suggestive of its services, not merely descriptive, and is therefore registerable. A. Applicant’s Mark is not Merely Descriptive A trademark is merely descriptive if it “directly conveys information concerning the function, characteristics, purpose or use of [the] product[s]” or services. See Towers v. Advent Software, Inc., 913 F.2d 942, 944, 16 U.S.P.Q.2d 1039, 1040 (Fed. Cir. 1990) (emphasis added). "As has been stated repeatedly, a term is merely descriptive ‘if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.’" In re The Stroh Brewery Co., 34 U.S.P.Q. 2d 1796, 1797 (T.T.A.B. 1994) (quoting Application of Abcor Development Corp., 588 F.2d 811, 814 U.S.P.Q. 215, 218 (C.C.P.A. 1978) (emphasis added)). Further, to be merely descriptive, the term must be "only" descriptive, meaning the term serves no purpose other than to describe the goods or services. See In re Quick-Print copy Shop, Inc., 205 U.S.P.Q. 505, 507, n.7. The words "immediately," "directly," "forthwith" and “only” manifest the high standard that has been imposed for categorizing a mark as "merely descriptive." WORLD DEBIT, as used by Applicant, does not function as a term that refers consumers immediately, directly, forthwith or only to the Applicant’s services as the Office Action presupposes. Although “world” may serve as a geographic descriptor with respect to where Applicant’s financial services are available, it nonetheless has multiple meanings and connotations. It can mean the physical globe, humankind, a particular class of people, the entire universe or it can mean a great deal of something or a large amount. A printout from dictionary.com is appended hereto as Exhibit 1. Similarly, “debit” can refer to a recorded item of debt or to an undesirable or disadvantageous feature. A printout from dictionary.com is appended hereto as Exhibit 2. The combination WORLD DEBIT, therefore, does not yield any one specific meaning, let alone describe any service or its locality immediately or directly. Rather, WORLD DEBIT conveys no real meaning with respect the financial services, remote payment services, prepaid telephone calling card services, cash disbursement services, cheque verification services, etc., which are to be offered under the mark. Such services do not necessarily entail either “debit,” as such, or the world. While WORLD DEBIT may suggest that the services are of a financial nature, it is not prohibited for a suggestive mark to have the capacity to allude to the nature of the product or service or to its characteristics. See, e.g., Bellsouth Corp. v. Planum Tech. Corp., 14 U.S.P.Q.2d 1555, 1556 (T.T.A.B. 1988). Thus, the only reasonable conclusion is that WORLD DIRECT is suggestive of Applicant’s services and not merely descriptive. B. Applicant’s Mark is Suggestive A mark is suggestive if it indirectly informs the consumer about the product or services, i.e., requires a multi-step thought process to determine the precise nature of the goods or services. See, e.g., Healing the Children Inc. v. Heal the Children Inc., 22 U.S.P.Q.2d 1690, 1693 (W.D. Pa. 1992) (HEALING THE CHILDREN held suggestive of organization that coordinates medical teams that train local medical personnel in foreign countries and provide health care for children); BellSouth Corp., 14 U.S.P.Q.2d at 1556 (PHONE FORWARD held suggestive of automatic telephone call diverters). Due to broad meanings of the terms “world” and “debit” as discussed, the combination WORLD DEBIT is suggestive of Applicant’s services. Indeed, the combination creates an incongruous expression that fails to immediately identify or indicate the type of goods or services offered, or how they connect to one another. When used together as a composite mark, WORLD DEBIT does not merely describe with any definiteness an attribute of Applicant’s services. Instead, WORLD DEBIT, as applied to Applicant's services, possesses a myriad of commercial connotations. WORLD DEBIT, is sufficiently broad as to be vague, such that it is not possible to conclude what, if anything, it describes with any specificity. Where a mark does not directly impart information concerning an applicant’s goods or services, but only imprecisely hints at them, the TTAB has found that they meet the so-called “imagination test” to distinguish descriptive and suggestive marks. See Union Nat’l Bank of Texas, Laredo, Texas v. Union Nat’l Bank of Texas, Austin, Texas, 909 F.2d 839, 847-48 (5th Cir. 1990). In Airco, Inc. v. Airco Products and Chemicals, for example, the Board held that: [t]he mark “AIR-CARE” is, moreover, not merely descriptive as applied to applicant’s services. The literal meaning of the mark, namely, “care of air”, may, through an exercise of mental gymnastics and extrapolation suggest or hint at the nature of applicant’s services, but it does not, in any clear or precise way, serve merely to describe applicant’s preventative maintenance services directed to a schedule maintenance program for hospital and medical anesthesia and inhalation therapy equipment and the like.
Airco, Inc. v. Air Prods. & Chems., Inc., 196 U.S.P.Q. 832, 835 (T.T.A.B. 1977). To determine the actual services (or qualities thereof) offered under the mark WORLD DEBIT the prospective customer will have to sift through the various interpretations of the composite mark and engage in a "multi-stage reasoning process" in order to ascertain the nature of the services actually provided under Applicant's mark. Additional information and thought are required to draw a conclusion about the qualities or characteristics of the services to be offered by the Applicant. This is the essence of a suggestive mark, because here there is no "immediate" conveying of information about a quality or characteristic of the product. Thus, WORLD DEBIT does not describe any attribute of Applicant’s services with any degree of specificity, which indicates that Applicant’s mark is suggestive, and should be passed to publication.
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_2041949866-110634589_._world_debit_exhibit_1.pdf |
| CONVERTED PDF FILE(S) (12 pages) |
\\TICRS2\EXPORT15\771\137\77113755\xml1\POA0002.JPG |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0003.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0004.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0005.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0006.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0007.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0008.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0009.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0010.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0011.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0012.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0013.JPG | |
| ORIGINAL PDF FILE | evi_2041949866-110634589_._world_debit_exhibit_2.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS2\EXPORT15\771\137\77113755\xml1\POA0014.JPG |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0015.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0016.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0017.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0018.JPG | |
| \\TICRS2\EXPORT15\771\137\77113755\xml1\POA0019.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibits 1 and 2 are printouts from the website www.dictionary.com. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| Financial services, namely banking and credit services; providing credit card, debit card, charge card and stored value prepaid card services; remote payment services; stored value electronic purse services, providing electronic funds and currency transfer services, electronic payments services, prepaid telephone calling card services, cash disbursement services, and transaction authorization and settlement services; provision of debit and credit services by means of radio frequency identification devices known as transponders; travel insurance services; cheque verification services; issuing and redemption services all relating to travelers cheques and travel vouchers; bill payment services provided through a website; on-line banking; financial services, namely, banking and payment card services, provided by means of a global computer network or the internet | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| Financial services, namely providing banking, credit card, debit card, charge card and stored value prepaid card services; remote payment services; stored value electronic purse services, namely, providing on-line stored value accounts in an electronic environment; providing electronic funds and currency transfer services; electronic payments services, namely, electronic processing and transmission of bill payment data; prepaid telephone calling card services; cash disbursement services; transaction authorization and settlement services; provision of debit and credit services by means of radio frequency identification devices known as transponders; travel insurance underwriting services; cheque verification services; issuing and redemption services all relating to travelers cheques and travel vouchers; bill payment services provided through a website; on-line banking; financial services, namely, banking and payment card services provided by means of a global computer network or the internet | |
| FILING BASIS | Section 1(b) |
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /lbe/ |
| SIGNATORY'S NAME | Lauren Beth Emerson |
| SIGNATORY'S POSITION | attorney for applicant |
| DATE SIGNED | 02/29/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 29 11:46:09 EST 2008 |
| TEAS STAMP | USPTO/POA-XXX.XXX.XX.XX-2 0080229114609645884-77113 755-420541fdd5c0af723d8e4 1ff9dac14881f-DA-7696-200 80229110634589665 |
| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp 09/30/2011) |
2(e) Descriptiveness Refusal
Applicant submits that WORLD DEBIT is suggestive of its services, not merely descriptive, and is therefore registerable.
A. Applicant’s Mark is not Merely Descriptive
A trademark is merely descriptive if it “directly conveys information concerning the function, characteristics, purpose or use of [the] product[s]” or services. See Towers v. Advent Software, Inc., 913 F.2d 942, 944, 16 U.S.P.Q.2d 1039, 1040 (Fed. Cir. 1990) (emphasis added). "As has been stated repeatedly, a term is merely descriptive ‘if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.’" In re The Stroh Brewery Co., 34 U.S.P.Q. 2d 1796, 1797 (T.T.A.B. 1994) (quoting Application of Abcor Development Corp., 588 F.2d 811, 814 U.S.P.Q. 215, 218 (C.C.P.A. 1978) (emphasis added)). Further, to be merely descriptive, the term must be "only" descriptive, meaning the term serves no purpose other than to describe the goods or services. See In re Quick-Print copy Shop, Inc., 205 U.S.P.Q. 505, 507, n.7. The words "immediately," "directly," "forthwith" and “only” manifest the high standard that has been imposed for categorizing a mark as "merely descriptive."
WORLD DEBIT, as used by Applicant, does not function as a term that refers consumers immediately, directly, forthwith or only to the Applicant’s services as the Office Action presupposes. Although “world” may serve as a geographic descriptor with respect to where Applicant’s financial services are available, it nonetheless has multiple meanings and connotations. It can mean the physical globe, humankind, a particular class of people, the entire universe or it can mean a great deal of something or a large amount. A printout from dictionary.com is appended hereto as Exhibit 1. Similarly, “debit” can refer to a recorded item of debt or to an undesirable or disadvantageous feature. A printout from dictionary.com is appended hereto as Exhibit 2. The combination WORLD DEBIT, therefore, does not yield any one specific meaning, let alone describe any service or its locality immediately or directly. Rather, WORLD DEBIT conveys no real meaning with respect the financial services, remote payment services, prepaid telephone calling card services, cash disbursement services, cheque verification services, etc., which are to be offered under the mark.
Such services do not necessarily entail either “debit,” as such, or the world. While WORLD DEBIT may suggest that the services are of a financial nature, it is not prohibited for a suggestive mark to have the capacity to allude to the nature of the product or service or to its characteristics. See, e.g., Bellsouth Corp. v. Planum Tech. Corp., 14 U.S.P.Q.2d 1555, 1556 (T.T.A.B. 1988). Thus, the only reasonable conclusion is that WORLD DIRECT is suggestive of Applicant’s services and not merely descriptive.
B. Applicant’s Mark is Suggestive
A mark is suggestive if it indirectly informs the consumer about the product or services, i.e., requires a multi-step thought process to determine the precise nature of the goods or services. See, e.g., Healing the Children Inc. v. Heal the Children Inc., 22 U.S.P.Q.2d 1690, 1693 (W.D. Pa. 1992) (HEALING THE CHILDREN held suggestive of organization that coordinates medical teams that train local medical personnel in foreign countries and provide health care for children); BellSouth Corp., 14 U.S.P.Q.2d at 1556 (PHONE FORWARD held suggestive of automatic telephone call diverters).
Due to broad meanings of the terms “world” and “debit” as discussed, the combination WORLD DEBIT is suggestive of Applicant’s services. Indeed, the combination creates an incongruous expression that fails to immediately identify or indicate the type of goods or services offered, or how they connect to one another. When used together as a composite mark, WORLD DEBIT does not merely describe with any definiteness an attribute of Applicant’s services. Instead, WORLD DEBIT, as applied to Applicant's services, possesses a myriad of commercial connotations.
WORLD DEBIT, is sufficiently broad as to be vague, such that it is not possible to conclude what, if anything, it describes with any specificity. Where a mark does not directly impart information concerning an applicant’s goods or services, but only imprecisely hints at them, the TTAB has found that they meet the so-called “imagination test” to distinguish descriptive and suggestive marks. See Union Nat’l Bank of Texas, Laredo, Texas v. Union Nat’l Bank of Texas, Austin, Texas, 909 F.2d 839, 847-48 (5th Cir. 1990). In Airco, Inc. v. Airco Products and Chemicals, for example, the Board held that:
[t]he mark “AIR-CARE” is, moreover, not merely descriptive as applied to applicant’s services. The literal meaning of the mark, namely, “care of air”, may, through an exercise of mental gymnastics and extrapolation suggest or hint at the nature of applicant’s services, but it does not, in any clear or precise way, serve merely to describe applicant’s preventative maintenance services directed to a schedule maintenance program for hospital and medical anesthesia and inhalation therapy equipment and the like.
Airco, Inc. v. Air Prods. & Chems., Inc., 196 U.S.P.Q. 832, 835 (T.T.A.B. 1977). To determine the actual services (or qualities thereof) offered under the mark WORLD DEBIT the prospective customer will have to sift through the various interpretations of the composite mark and engage in a "multi-stage reasoning process" in order to ascertain the nature of the services actually provided under Applicant's mark. Additional information and thought are required to draw a conclusion about the qualities or characteristics of the services to be offered by the Applicant. This is the essence of a suggestive mark, because here there is no "immediate" conveying of information about a quality or characteristic of the product.
Thus, WORLD DEBIT does not describe any attribute of Applicant’s services with any degree of specificity, which indicates that Applicant’s mark is suggestive, and should be passed to publication.