| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77606555 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
REMARKS
Applicant has carefully reviewed the outstanding Office Action, dated February 12, 2009, and respectfully requests that the Trademark Attorney reconsider the refusal to register Applicant's mark in view of following remarks.. The Examining Attorney's comments have been carefully considered.
The Examining Attorney has refused registration of the mark on the grounds that it is merely descriptive of the goods. The Examining Attorney argues that the mark, RELEASE RINGS, is merely descriptive of a feature or function of the goods, namely, that the goods describes "a desirable feature of the goods, that is, pots and pans featuring release rings." Moreover, there is no evidence submitted by the Examining Attorney supporting this conclusion. This lack of evidence lends support to the argument that the refusal is unwarranted since it is not possible to determine the nature of the goods immediately from the mark. Moreover, we believe that the Examining Attorney has not made a prima facie showing that the mark is merely descriptive.
The Mark Is Suggestive The Examining Attorney points out that a mark is merely descriptive under the Trademark Act if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the relevant goods. It is also the position of the Examining Attorney that a mark that describes an intended user of the products is also merely descriptive within the meaning of Section 2(e)(1) of the Act.
Respectfully, Applicant suggests the three questions presented in Heatube are the proper test in determining whether a mark is descriptive. Ex parte Heatube Corporation, 109 USPQ 423 (Comm. Pat. 1956). Those questions are: (1) Is the mark presented for registration used as a trademark or as the name of the goods?; (2) Does the mark immediately tell the potential purchaser only what the goods are, or what their function is, or what their characteristics are, or what their use is; or is it likely to tell the potential purchaser that these goods and other related or associated goods marked with the same word or term come from the same producer?; and, (3) Is the word, or term, (or it phonetic equivalent) in common usage in the trade or elsewhere as a description of the same or related goods?. Id. at 423-424.
With respect to the first question, Applicant has a bona fide intention of using the mark, RELEASE RINGS, as a mark and not merely as the name of the goods.
With respect to the second question, the mark serves as an indication of origin as opposed to only immediately telling a potential purchaser what the goods are. Applicant avers that neither portion describes the goods found in the application, as amended. Further, Applicant avers that the joining of the two words "Release" and "Rings" creates a mark that has a commercial impression beyond the two words themselves. Further, Applicant is unaware of any potential user of its goods that might be deemed "Release Rings."
The Examining Attorney argues the overall mark RELEASE RINGS is descriptive of the goods for which registration is sought. Without any analysis of the proposed mark in light of the goods for which registration is sought, the Examining Attorney summarily concludes that the mark is primarily merely descriptive. Respectfully, Applicant avers that the Examining Attorney has failed to assert a proper, prima facie case of descriptiveness. With respect to the third question, the mark RELEASE RINGS is not in common usage in the trade as a description of the goods for which registration is sought. In fact, Applicant avers that "Release Rings" is typically associated with rifle scopes, drill bits, and jewelry. Please see the attached search in support of this observation. Accordingly, RELEASE RINGS is not commonly used to describe the goods Applicant intends to provide using the mark.
Accordingly, the mark is not merely descriptive of the goods, but suggestive of them and capable of serving as an indicator of source of the goods.
Applicant now respectfully requests that the Trademark Attorney withdraw the refusal to register the subject mark based on Section 2(e)(1) of the Trademark Act, indicate the registrability of the subject mark, and pass the subject application to publication for opposition under Section 12(a) of the Trademark Act.
Respectfully submitted,
THE WEBB LAW FIRM
/jjb/
James J. Bosco, Jr., Registration No. 51,489 Attorney of record, PA bar member |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7494192131-154918221_._google_search.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\776\065\77606555\xml1\ROA0002.JPG |
| \\TICRS\EXPORT7\IMAGEOUT7\776\065\77606555\xml1\ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | scanned Google search discussed in Remarks |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jjb/ |
| SIGNATORY'S NAME | James J. Bosco, Jr., Reg. No. 51,489 (5363-083413) |
| SIGNATORY'S POSITION | Attorney of record, PA bar member |
| DATE SIGNED | 08/11/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Aug 11 16:05:48 EDT 2009 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0090811160548468524-77606 555-430c26e1ade213f531d69 2bb7fe92c83cf-N/A-N/A-200 90811154918221500 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
REMARKS
Applicant has carefully reviewed the outstanding Office Action, dated February 12, 2009, and respectfully requests that the Trademark Attorney reconsider the refusal to register Applicant's mark in view of following remarks.. The Examining Attorney's comments have been carefully considered.
The Examining Attorney has refused registration of the mark on the grounds that it is merely descriptive of the goods. The Examining Attorney argues that the mark, RELEASE RINGS, is merely descriptive of a feature or function of the goods, namely, that the goods describes "a desirable feature of the goods, that is, pots and pans featuring release rings." Moreover, there is no evidence submitted by the Examining Attorney supporting this conclusion. This lack of evidence lends support to the argument that the refusal is unwarranted since it is not possible to determine the nature of the goods immediately from the mark. Moreover, we believe that the Examining Attorney has not made a prima facie showing that the mark is merely descriptive.
The Mark Is Suggestive
The Examining Attorney points out that a mark is merely descriptive under the Trademark Act if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the relevant goods. It is also the position of the Examining Attorney that a mark that describes an intended user of the products is also merely descriptive within the meaning of Section 2(e)(1) of the Act.
Respectfully, Applicant suggests the three questions presented in Heatube are the proper test in determining whether a mark is descriptive. Ex parte Heatube Corporation, 109 USPQ 423 (Comm. Pat. 1956). Those questions are: (1) Is the mark presented for registration used as a trademark or as the name of the goods?; (2) Does the mark immediately tell the potential purchaser only what the goods are, or what their function is, or what their characteristics are, or what their use is; or is it likely to tell the potential purchaser that these goods and other related or associated goods marked with the same word or term come from the same producer?; and, (3) Is the word, or term, (or it phonetic equivalent) in common usage in the trade or elsewhere as a description of the same or related goods?. Id. at 423-424.
With respect to the first question, Applicant has a bona fide intention of using the mark, RELEASE RINGS, as a mark and not merely as the name of the goods.
With respect to the second question, the mark serves as an indication of origin as opposed to only immediately telling a potential purchaser what the goods are. Applicant avers that neither portion describes the goods found in the application, as amended. Further, Applicant avers that the joining of the two words "Release" and "Rings" creates a mark that has a commercial impression beyond the two words themselves. Further, Applicant is unaware of any potential user of its goods that might be deemed "Release Rings."
The Examining Attorney argues the overall mark RELEASE RINGS is descriptive of the goods for which registration is sought. Without any analysis of the proposed mark in light of the goods for which registration is sought, the Examining Attorney summarily concludes that the mark is primarily merely descriptive. Respectfully, Applicant avers that the Examining Attorney has failed to assert a proper, prima facie case of descriptiveness.
With respect to the third question, the mark RELEASE RINGS is not in common usage in the trade as a description of the goods for which registration is sought. In fact, Applicant avers that "Release Rings" is typically associated with rifle scopes, drill bits, and jewelry. Please see the attached search in support of this observation. Accordingly, RELEASE RINGS is not commonly used to describe the goods Applicant intends to provide using the mark.
Accordingly, the mark is not merely descriptive of the goods, but suggestive of them and capable of serving as an indicator of source of the goods.
Applicant now respectfully requests that the Trademark Attorney withdraw the refusal to register the subject mark based on Section 2(e)(1) of the Trademark Act, indicate the registrability of the subject mark, and pass the subject application to publication for opposition under Section 12(a) of the Trademark Act.
Respectfully submitted,
THE WEBB LAW FIRM
/jjb/
James J. Bosco, Jr., Registration No. 51,489
Attorney of record, PA bar member
