| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77902924 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
RESPONSE
APPLICANT’S MARK IS NOT MERELY DESCRIPTIVE On March 21, 2010, the Examining Attorney issued an Office Action refusing registration of Applicant's mark choCOWlate chip (Stylized) on the basis that the mark merely describes a feature and characteristic of the goods covered under the instant application.
A. Applicant's Mark choCOWlate chip is Suggestive and Therefore Registrable
In categorizing a trademark, it is not sufficient to ask whether a mark is descriptive. The statutory test is whether the mark at issue is merely descriptive. 15 U.S.C. § 1052(e)(1).[1] In this context, the term "merely" is to be taken in its ordinary meaning of 'only' or 'solely' -- that is, when considered with the particular goods or services the mark because of its meaning does nothing but describe them. T.M.E.P. § 1209.01. Additionally, the "word 'merely' in the Act means that if the mark clearly does not tell the potential customer only what the goods are, their function, characteristics, use or ingredients, then the mark is not 'merely descriptive.'" See mccarthy, trademarks and unfair competition (4th ed. 2010, electronic version) § 11.51 (hereinafter "mccarthy’s"); In re Colonial Stores Inc., 394 F.2d 549 (C.C.P.A. 1968); and In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 U.S.P.Q. 505, n.7 (C.C.P.A. 1980). Marks which may describe the ingredients of the goods, their characteristics, or their function are nonetheless entitled to registration.[2] A mark is merely descriptive only if it immediately conveys an idea of the ingredients, qualities or characteristics of the goods. Equine Technologies, Inc. v. Equitechnology, Inc., 68 F.3d 542, 544 (Fed. Cir. 1995). It is established law that any doubts regarding whether a mark is suggestive, as opposed to merely descriptive, are to be resolved in favor of the applicant, i.e., in favor of a finding of suggestiveness and registrability. See In re Conductive Systems, Inc., 220 U.S.P.Q. at 86. Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool). See also In re Quik-Print Copy Shop, Inc., 203 U.S.P.Q. 624 (T.T.A.B. 1979), aff’d, 616 F.2d 523, 205 USPQ 505 (C.C.P.A. 1980) (QUIK-PRINT held merely descriptive of printing services); In re Aid Laboratories, Inc., 223 U.S.P.Q. 357 (T.T.A.B. 1984) (BUG MIST held merely descriptive of insecticide). Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods or services to be registrable. While a slight misspelling of a word will not generally turn a descriptive word into a nondescriptive word, “[i]f a misspelling results in a word which is not recognizably descriptive, it will be treated as an arbitrary and fanciful mark.” mccarthy’s § 11:31. Marks that include spellings that create a dual meaning or a play on words create a different connotation than that conveyed by a merely misspelled descriptive term. See, In re Tea and Sympathy Inc., 88 USPQ2d 1062; In re Grand Metropolitan Foodservice Inc. 30 USPQ2d 1974 (TTAB 1994). In the instant case, Applicant is applying for the mark choCOWlate chip (Stylized) for “[i]ce cream, frozen confections” (“Applicant’s Goods”). Applicant's mark, when considered in its entirety, is a whimsical term and is more than a mere misspelling of the term “chocolate chip.” Rather Applicant’s mark is a play on the fact that the goods originate from cows, which is highlighted by the fact that the mark was filed in stylized form with a visual emphasis on the term “cow.” As a result, the mark conveys a dual meaning - that of the fresh, wholesome aspect of the ice cream and of the fact that the goods contain chocolate chips. It is this play on the words “chocolate” and “cow” that changes the commercial impression and meaning of Applicant’s mark so that it has a different connotation that the term “chocolate chip.” When encountered by consumers, Applicant's mark will not immediately call to mind Applicant’s Goods, but will instead suggest or allude to a characteristic or feature of the goods. While choCOWlate chip may convey some information to the consuming public regarding Applicant's Goods, Applicant's Mark does not merely describe ice cream and frozen confections. As consumers are required to make a mental leap in drawing a connection between the mark and Applicant’s Goods, Applicant’s mark is suggestive, not merely descriptive of Applicant’s Goods. In cases such as this, any doubt regarding the descriptive nature of the mark should be resolved in favor of the applicant. Accordingly, Applicant respectfully requests withdrawal of the refusal based upon Section 2(e)(1) of the Trademark Act.
B. The Evidence Submitted by the Examining Attorney is Insufficient to Support a Finding of Mere Descriptiveness
The Examining Attorney has not presented any evidence that the mark as a whole is merely descriptive. While she has presented evidence that the term “chocolate chip,” is descriptive, she has not included any evidence that consumers will view Applicant’s mark as the phonetic equivalent of this term. There are no other applications or registrations on the federal register containing the term choCOWlate chip, nor is the term used as part of the identifications of goods or services for any mark. Furthermore, the Examining Attorney has not put forth any evidence of use by third parties. An absence of use by third parties further supports the fact that Applicant’s mark is not merely descriptive, since it demonstrates a lack of need by third parties to use these terms to describe their goods. Competitive need is one of the major reasons for not protecting descriptive marks. In this case, the fact that other purveyors of similar goods are able to describe their products without using Applicant’s mark illustrates that Applicant is not inhibiting competition in the marketplace and weighs against a finding that Applicant’s mark merely describes these types of goods. C. Conclusion
Based upon the foregoing, Applicant’s mark is suggestive, not merely descriptive of Applicant’s Goods. Accordingly, the refusal of this application based upon Section 2(e)(1) of the Trademark Act should be withdrawn. Applicant, therefore, respectfully requests that the instant application be passed to prompt publication. [1] It is informative to note that Section 2 of the Lanham Act favors the registration of trademarks. The restriction of Section 2(e)(1) is worded in the negative: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the Principal Register on account of its nature unless it -- (e) consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive . . . . [2] See In re Colonial Stores Inc., 394 F.2d 549 (C.C.P.A. 1968); In re DC Comics, Inc., 689 F.2d 1042, 1044 (C.C.P.A. 1982); In re Reynolds Metals Co., 480 F.2d 902 (C.C.P.A. 1973). |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /ALR/ |
| SIGNATORY'S NAME | April L. Rademacher |
| SIGNATORY'S POSITION | Attorney of Record, NY State bar member |
| DATE SIGNED | 09/20/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Sep 20 10:32:41 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 100920103241164527-779029 24-47040cbf6b9f2a89fd4b37 f9c59f1a3ba5-N/A-N/A-2010 0920103022137674 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
RESPONSE
APPLICANT’S MARK IS NOT MERELY DESCRIPTIVE
On March 21, 2010, the Examining Attorney issued an Office Action refusing registration of Applicant's mark choCOWlate chip (Stylized) on the basis that the mark merely describes a feature and characteristic of the goods covered under the instant application.
A. Applicant's Mark choCOWlate chip is Suggestive and Therefore Registrable
In categorizing a trademark, it is not sufficient to ask whether a mark is descriptive. The statutory test is whether the mark at issue is merely descriptive. 15 U.S.C. § 1052(e)(1).[1] In this context, the term "merely" is to be taken in its ordinary meaning of 'only' or 'solely' -- that is, when considered with the particular goods or services the mark because of its meaning does nothing but describe them. T.M.E.P. § 1209.01. Additionally, the "word 'merely' in the Act means that if the mark clearly does not tell the potential customer only what the goods are, their function, characteristics, use or ingredients, then the mark is not 'merely descriptive.'" See mccarthy, trademarks and unfair competition (4th ed. 2010, electronic version) § 11.51 (hereinafter "mccarthy’s"); In re Colonial Stores Inc., 394 F.2d 549 (C.C.P.A. 1968); and In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 U.S.P.Q. 505, n.7 (C.C.P.A. 1980). Marks which may describe the ingredients of the goods, their characteristics, or their function are nonetheless entitled to registration.[2]
A mark is merely descriptive only if it immediately conveys an idea of the ingredients, qualities or characteristics of the goods. Equine Technologies, Inc. v. Equitechnology, Inc., 68 F.3d 542, 544 (Fed. Cir. 1995). It is established law that any doubts regarding whether a mark is suggestive, as opposed to merely descriptive, are to be resolved in favor of the applicant, i.e., in favor of a finding of suggestiveness and registrability. See In re Conductive Systems, Inc., 220 U.S.P.Q. at 86. Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool). See also In re Quik-Print Copy Shop, Inc., 203 U.S.P.Q. 624 (T.T.A.B. 1979), aff’d, 616 F.2d 523, 205 USPQ 505 (C.C.P.A. 1980) (QUIK-PRINT held merely descriptive of printing services); In re Aid Laboratories, Inc., 223 U.S.P.Q. 357 (T.T.A.B. 1984) (BUG MIST held merely descriptive of insecticide). Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods or services to be registrable.
While a slight misspelling of a word will not generally turn a descriptive word into a nondescriptive word, “[i]f a misspelling results in a word which is not recognizably descriptive, it will be treated as an arbitrary and fanciful mark.” mccarthy’s § 11:31. Marks that include spellings that create a dual meaning or a play on words create a different connotation than that conveyed by a merely misspelled descriptive term. See, In re Tea and Sympathy Inc., 88 USPQ2d 1062; In re Grand Metropolitan Foodservice Inc. 30 USPQ2d 1974 (TTAB 1994).
In the instant case, Applicant is applying for the mark choCOWlate chip (Stylized) for “[i]ce cream, frozen confections” (“Applicant’s Goods”). Applicant's mark, when considered in its entirety, is a whimsical term and is more than a mere misspelling of the term “chocolate chip.” Rather Applicant’s mark is a play on the fact that the goods originate from cows, which is highlighted by the fact that the mark was filed in stylized form with a visual emphasis on the term “cow.” As a result, the mark conveys a dual meaning - that of the fresh, wholesome aspect of the ice cream and of the fact that the goods contain chocolate chips. It is this play on the words “chocolate” and “cow” that changes the commercial impression and meaning of Applicant’s mark so that it has a different connotation that the term “chocolate chip.”
When encountered by consumers, Applicant's mark will not immediately call to mind Applicant’s Goods, but will instead suggest or allude to a characteristic or feature of the goods. While choCOWlate chip may convey some information to the consuming public regarding Applicant's Goods, Applicant's Mark does not merely describe ice cream and frozen confections. As consumers are required to make a mental leap in drawing a connection between the mark and Applicant’s Goods, Applicant’s mark is suggestive, not merely descriptive of Applicant’s Goods.
In cases such as this, any doubt regarding the descriptive nature of the mark should be resolved in favor of the applicant. Accordingly, Applicant respectfully requests withdrawal of the refusal based upon Section 2(e)(1) of the Trademark Act.
B. The Evidence Submitted by the Examining Attorney is Insufficient to Support a Finding of Mere Descriptiveness
The Examining Attorney has not presented any evidence that the mark as a whole is merely descriptive. While she has presented evidence that the term “chocolate chip,” is descriptive, she has not included any evidence that consumers will view Applicant’s mark as the phonetic equivalent of this term. There are no other applications or registrations on the federal register containing the term choCOWlate chip, nor is the term used as part of the identifications of goods or services for any mark. Furthermore, the Examining Attorney has not put forth any evidence of use by third parties. An absence of use by third parties further supports the fact that Applicant’s mark is not merely descriptive, since it demonstrates a lack of need by third parties to use these terms to describe their goods. Competitive need is one of the major reasons for not protecting descriptive marks. In this case, the fact that other purveyors of similar goods are able to describe their products without using Applicant’s mark illustrates that Applicant is not inhibiting competition in the marketplace and weighs against a finding that Applicant’s mark merely describes these types of goods.
C. Conclusion
Based upon the foregoing, Applicant’s mark is suggestive, not merely descriptive of Applicant’s Goods. Accordingly, the refusal of this application based upon Section 2(e)(1) of the Trademark Act should be withdrawn. Applicant, therefore, respectfully requests that the instant application be passed to prompt publication.
[1] It is informative to note that Section 2 of the Lanham Act favors the registration of trademarks. The restriction of Section 2(e)(1) is worded in the negative:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the Principal Register on account of its nature unless it --
(e) consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive . . . .
[2] See In re Colonial Stores Inc., 394 F.2d 549 (C.C.P.A. 1968); In re DC Comics, Inc., 689 F.2d 1042, 1044 (C.C.P.A. 1982); In re Reynolds Metals Co., 480 F.2d 902 (C.C.P.A. 1973).