| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77139008 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examiner has issued a refusal under Section 2(e) of the Trademark Act on the basis that the proposed mark is merely descriptive. Applicant respectfully disagrees with the Examining Attorney’s findings and makes the following arguments in favor of registration.
Applicant asserts that the phrase IN TREATMENT, as a whole, is not merely descriptive of Applicant's services, namely an ongoing dramatic television series and therefore registerable on the Principal Register, in that it "does not impart any definite information about applicant's [services]." See In re Classic Beverage Inc., 6USPQ2d 1383, at 1386 (TTAB 1988).
The test for determining whether a mark is descriptive or suggestive is as follows:
A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the services. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the services. Stix Products Inc. v. United Merchants & Mfrs., Inc., 295 F.Supp 479, 160 U.S.P.Q. 777 (S.D.N.Y. 1968). Here, one must exercise imagination or "mental gymnastics" to determine attributes of the services. There is no one definition for the mark as a whole, i.e. IN TREATMENT. The subject matter of the services is not readily apparent. The average consumer encountering the mark would not immediately, and without thought, understand the nature of the services. It would take a good deal of mental gymnastics to come to the conclusion that the mark is used for a television series.
It is Applicant's understanding that Trademark Office policy has been to resolve issues of doubt with respect to "merely descriptive" or "suggestive" marks in favor of the Applicant. (Re Gourmet Bakers, Inc. (1972, TTAB) 173 USPQ 565; Accord: Re Morton-Norwich Products, Inc. (1981, TTAB) 209 USPQ 791). Applicant respectfully requests such favorable treatment for its mark here.
The Examining Attorney has requested additional information regarding Applicant’s proposed use of the mark. The mark will be used for an ongoing dramatic television series.
In light of the foregoing arguments, the Applicant respectfully requests that the Examiner withdraw the 2(e) 1 refusal and pass the mark on for publication.
|
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Erin S. Hennessy/ |
| SIGNATORY'S NAME | Erin S. Hennessy |
| SIGNATORY'S POSITION | Vice President |
| DATE SIGNED | 11/28/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Nov 28 18:03:54 EST 2007 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20071128180354984263-7713 9008-410cdaebd329f3a7c97d 2a45f0a71cb29-N/A-N/A-200 71128174848088776 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examiner has issued a refusal under Section 2(e) of the Trademark Act on the basis that the proposed mark is merely descriptive. Applicant respectfully disagrees with the Examining Attorney’s findings and makes the following arguments in favor of registration.
Applicant asserts that the phrase IN TREATMENT, as a whole, is not merely descriptive of Applicant's services, namely an ongoing dramatic television series and therefore registerable on the Principal Register, in that it "does not impart any definite information about applicant's [services]." See In re Classic Beverage Inc., 6USPQ2d 1383, at 1386 (TTAB 1988).
The test for determining whether a mark is descriptive or suggestive is as follows:
A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the services. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the services. Stix Products Inc. v. United Merchants & Mfrs., Inc., 295 F.Supp 479, 160 U.S.P.Q. 777 (S.D.N.Y. 1968). Here, one must exercise imagination or "mental gymnastics" to determine attributes of the services. There is no one definition for the mark as a whole, i.e. IN TREATMENT. The subject matter of the services is not readily apparent. The average consumer encountering the mark would not immediately, and without thought, understand the nature of the services. It would take a good deal of mental gymnastics to come to the conclusion that the mark is used for a television series.
It is Applicant's understanding that Trademark Office policy has been to resolve issues of doubt with respect to "merely descriptive" or "suggestive" marks in favor of the Applicant. (Re Gourmet Bakers, Inc. (1972, TTAB) 173 USPQ 565; Accord: Re Morton-Norwich Products, Inc. (1981, TTAB) 209 USPQ 791). Applicant respectfully requests such favorable treatment for its mark here.
The Examining Attorney has requested additional information regarding Applicant’s proposed use of the mark. The mark will be used for an ongoing dramatic television series.
In light of the foregoing arguments, the Applicant respectfully requests that the Examiner withdraw the 2(e) 1 refusal and pass the mark on for publication.