Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77566197 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In the previous Office Action, the Examining Attorney required a
disclaimer of the wording "toe socks" on the grounds that the wording
merely describes a feature of applicant's goods. For the reasons
discussed below, Applicant respectfully requests that the Examining
Attorney accept a disclaimer of the term "sock" alone, rather than the
entire phrase "toe socks."
The USPTO may require an applicant to disclaim a portion of a mark
that, when used in connection with the goods or services, is merely
descriptive. TMEP §§1213, 1213.03. Applicant contends that the term
"toe socks" is not merely descriptive, and therefore, a disclaimer is
not required. However, Applicant is willing to accept the disclaimer
of the entire wording "toe socks" in the interest of economy, despite
contending that only "socks" requires a disclaimer, as submitted
below.
A mark is merely descriptive under Section 2(e)(1) if it immediately
conveys information concerninig a significant quality, characteristic,
function, ingredient, attribute, or feature of the product in
connection with which it is used. In re Abcor Development Corp., 200
USPQ 215, 217 (CCPA 1978). Alternatively, a mark that requires
imagination to apply it to a product or service is not descriptive,
but rather suggestive, and thus entitled to registration. Union Nat'l
Bank of Texas, Laredo, Texas v. Union Nat'l Bank of Texas, Austin,
Texas, 909 F.2d 839, 848 (5th Cir. 1990). Furthermore, when the
question of registrability is a "close case, any doubt on the matter
should be resolved in favor of the applicant, and the mark should be
published for opposition." In re Waverly Inc., 27 USPQ2d 1620, 1624.
In the instant case, the Examining Attorney contends that "toe socks"
is descriptive of Applicant's products. However, Applicant contends
that "TOESOX" is not descriptive as it does not immediately convey
information about Applicant's goods. The relevant public would likely
not know what exactly is unique or different about the toes of these
socks. Indeed, "toe socks" might refer to socks with reinforced toes,
socks with special coverings on the toes, socks with no toe coverings,
or dozens of other types of socks with special or unique details on
the toes. With so many different possible connotations, TOESOX is not
"merely" descriptive.
As an additional matter, the term "sox" is not descriptive merely
because it implies "socks." There are many different meanings and
usages of the term "sox," including to designate baseball teams and
clothing brands. Thus, the term "sox," when misspelled and placed into
a new single word like "toesox" is not descriptive, even if "toe socks
would be. Again, Applicant contends that "toe socks" is not
descriptive, however, even if it were, the new term "toesox" is not
descriptive as it is suggestive and forms a new commercial impression.
Indeed, TOESOX could suggest the Boston Red Sox baseball team; it
could suggest toeless socks.  It could suggest socks with toes.  It
could suggest socks with traction on the toes or ball of the foot.  It
could suggest socks with a different color where the toes are, or even
toes visually imprinted on a pair of socks. A mark that connotes two
meanings--one possibly descriptive, and the other suggestive of some
other association--can be called suggestive, and thus the mark is not
"merely" descriptive. MCCARTHY 11:19. For example, the mark POLY
PITCHER for a polyethylene pitcher was found to be suggestive because
it connotes a description of the plastic aspect of the container, but
was also suggestive of Molly Pitcher of Revolutionary TImes.
Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 700
(C.A.N.Y. 1961). Similarly, TOESOX is suggestive of a number of
different possible products. As such, TOESOX is similarly suggestive.
In sum, Applicant respectfully submits that "toe socks" is suggestive,
not descriptive of Applicant's goods. Therefore, Applicant submits
that the entire wording "toe socks" need not be disclaimed. Applicant
admits that "socks" is merely descriptive when viewed in connection
with Applicant's goods as Applicant's goods are, in fact, a type of
socks. Therefore, Applicant requests that only "socks" be required to
be disclaimed in the mark. However, Applicant is willing to accept a
disclaimer of the entire wording "toe socks" in the interests of
economy. This acceptance of the disclaimer is not an admission that
Applicant's mark or the phrase "toe socks" is actually descriptive,
and Applicant strongly urges the Examining Attorney to only require a
disclaimer of the term "socks."

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use SOCKS apart from the mark as shown.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Manny de la Cerra/      Date: 12/30/2008
Signatory's Name: Manny de la Cerra
Signatory's Position: Attorney of Record, CA State Bar

Response Signature
Signature: /Manny de la Cerra/     Date: 12/30/2008
Signatory's Name: Manny de la Cerra
Signatory's Position: Attorney of Record, CA State Bar

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77566197
Internet Transmission Date: Tue Dec 30 18:59:19 EST 2008
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2008123018591955
8103-77566197-4306338d1ccbf77d14faf5fd92
958e233-N/A-N/A-20081230184800877700