| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp 09/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77907011 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| 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) | |
Applicant's mark is VERDE Trademark Application serial no. 77/907,011 for use in connection with "Electrical and electronic devices for power supply technology, namely, power supply units, uninterruptible power supply units, current-voltage converters, switch mode power supply units, DC converters, and electronic power supply circuitry" in International Class 009 ("Applicant's Mark"). Registration of Applicant's Mark has been refused on the ground that the proposed mark merely describes the goods/services. APPLICANT'S MARK IS NOT DESCRIPTIVE OF APPLICANT'S PRODUCTS A mark is "descriptive" if it directly and immediately conveys some knowledge of the characteristics of a product or service. In re MGNA America Bank, N.A., 340 F.3d 1328, 67 U.S.P.Q.2d 1778 (Fed. Cir. 2003). The addition of the term "merely" means that if the mark clearly does not tell the potential customer only what the goods (or services) are, their functions, characteristics, use or ingredients, then the mark is not "merely descriptive." In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A. 1968) (parenthetical added). Thus, it logically follows that to refuse registration based upon a mark being "merely descriptive" requires much more than simply the word comprising the mark having some descriptive nature with respect to the goods or services. In fact, a mark is "merely descriptive" only if it immediately conveys an idea of the ingredients, qualities or characteristics of the goods (or services). Equine Technologies, Inc. v. Equitechnology, Inc., 68 F.3d 542, 544 (Fed. Cir. 1995) (emphasis added). Here, the Examining Attorney has found that Applicant's Mark is merely descriptive because "the proposed mark is merely descriptive of applicant's services, registration on the Principal Register is refused." Applicant respectfully submits, however, that Applicant's Mark is not merely descriptive because it is highly unlikely that Applicant's mark - VERDE - could immediately and only convey the services recited by the Examining Attorney. APPLICANT'S MARK IS SUGGESTIVE Applicant's Mark is at most, suggestive, not descriptive of Applicant's products when perceived primarily from the viewpoint of Applicant's prospective consumers. In making such a determination, the Trademark Trial and Appeal Board ("TTAB") and the courts regularly use the "degree of imagination test." See, No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226 U.S.P.Q. 502, 507 (T.T.A.B. 1995). Under this test, a term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods." Stix Products, Inc. v. United Merchants & Mfgs., Inc., 160 U.S.P.Q. 777, 785 (S.D.N.Y. 1968). That is, if the "mental leap between the word and the products it attributes is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness." See McCarthy, McCarthy on Trademarks and Unfair Competition, 4th Ed. § 11.67 at pg. 11-110 (1997) (citing Stix Products, Inc. v. United Merchants & Mfgs., Inc., supra.). Moreover, if information about the product or service given by the intended mark is indirect or vague, then this indicates that the intended mark is being used in a "suggestive," not descriptive, manner. See McCarthy, McCarthy on Trademarks and Unfair Competition, 4th Ed. § 11.19 at pg. 11-30 (1997). It is our contention that the information given about the product by the VERDE mark is vague and indirect. Such a connection between Applicant's Mark and the services Applicant actually provides requires a level of thought and imagination by the consumers. Consequently, the requisite mental leap is better classified as significantly delayed, rather than instantaneous. First, the term VERDE could mean the following: green, unripe, youthful, person in the bloom of age, plantain, country, policeman, loose, immodest. There are literally such a variety of definitions that the wording is suggestive at best. Additionally, it is well-established that if a mark can be deemed descriptive in one sense, but suggestive in another, the mark is suggestive. See 2. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th Ed. § 11.19 at pg. 11-28 (2000). Since Applicant's Mark can be perceived in at least one suggestive sense (see examples cited above) the mark is not merely descriptive of Applicant's services. Lastly, it is widely accepted that any doubts regarding whether a mark is suggestive, as opposed to merely descriptive, are to be resolved in favor of the applicant - in favor of finding of suggestiveness and registerability. E.g., In re Conductive Systems, Inc., 220 U.S.P.Q. at 86. Therefore, in light of the foregoing description of Applicant's services, Applicant respectfully submits that Applicant's Mark should be viewed as merely suggestive of Applicant's services and not as descriptive. CONCLUSION. WHEREFORE, Applicant respectfully submits that Applicant's Mark is not merely descriptive of Applicant's services, and prays that the Examining Attorney's refusal of registration be reversed.
|
|
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| PETITION SIGNATURE | /evananderson/ |
| SIGNATORY'S NAME | Evan Anderson, Esq |
| SIGNATORY'S POSITION | Attorney of record, California bar member |
| DATE SIGNED | 05/11/2011 |
| RESPONSE SIGNATURE | /evananderson/ |
| SIGNATORY'S NAME | Evan Anderson, Esq. |
| SIGNATORY'S POSITION | Attorney of record, California bar member |
| DATE SIGNED | 05/11/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed May 11 21:16:18 EDT 2011 |
| TEAS STAMP | USPTO/POA-XX.XX.XX.XX-201 10511211618611542-7790701 1-480b124d683996165b2d298 269e7d685a-CC-8160-201105 11210914242597 |
| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp 09/30/2011) |
Applicant's mark is VERDE Trademark Application serial no. 77/907,011 for use in connection with "Electrical and electronic devices for power supply technology, namely, power supply units, uninterruptible power supply units, current-voltage converters, switch mode power supply units, DC converters, and electronic power supply circuitry" in International Class 009 ("Applicant's Mark"). Registration of Applicant's Mark has been refused on the ground that the proposed mark merely describes the goods/services. APPLICANT'S MARK IS NOT DESCRIPTIVE OF APPLICANT'S PRODUCTS A mark is "descriptive" if it directly and immediately conveys some knowledge of the characteristics of a product or service. In re MGNA America Bank, N.A., 340 F.3d 1328, 67 U.S.P.Q.2d 1778 (Fed. Cir. 2003). The addition of the term "merely" means that if the mark clearly does not tell the potential customer only what the goods (or services) are, their functions, characteristics, use or ingredients, then the mark is not "merely descriptive." In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A. 1968) (parenthetical added). Thus, it logically follows that to refuse registration based upon a mark being "merely descriptive" requires much more than simply the word comprising the mark having some descriptive nature with respect to the goods or services. In fact, a mark is "merely descriptive" only if it immediately conveys an idea of the ingredients, qualities or characteristics of the goods (or services). Equine Technologies, Inc. v. Equitechnology, Inc., 68 F.3d 542, 544 (Fed. Cir. 1995) (emphasis added). Here, the Examining Attorney has found that Applicant's Mark is merely descriptive because "the proposed mark is merely descriptive of applicant's services, registration on the Principal Register is refused." Applicant respectfully submits, however, that Applicant's Mark is not merely descriptive because it is highly unlikely that Applicant's mark - VERDE - could immediately and only convey the services recited by the Examining Attorney. APPLICANT'S MARK IS SUGGESTIVE Applicant's Mark is at most, suggestive, not descriptive of Applicant's products when perceived primarily from the viewpoint of Applicant's prospective consumers. In making such a determination, the Trademark Trial and Appeal Board ("TTAB") and the courts regularly use the "degree of imagination test." See, No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226 U.S.P.Q. 502, 507 (T.T.A.B. 1995). Under this test, a term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods." Stix Products, Inc. v. United Merchants & Mfgs., Inc., 160 U.S.P.Q. 777, 785 (S.D.N.Y. 1968). That is, if the "mental leap between the word and the products it attributes is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness." See McCarthy, McCarthy on Trademarks and Unfair Competition, 4th Ed. § 11.67 at pg. 11-110 (1997) (citing Stix Products, Inc. v. United Merchants & Mfgs., Inc., supra.). Moreover, if information about the product or service given by the intended mark is indirect or vague, then this indicates that the intended mark is being used in a "suggestive," not descriptive, manner. See McCarthy, McCarthy on Trademarks and Unfair Competition, 4th Ed. § 11.19 at pg. 11-30 (1997). It is our contention that the information given about the product by the VERDE mark is vague and indirect. Such a connection between Applicant's Mark and the services Applicant actually provides requires a level of thought and imagination by the consumers. Consequently, the requisite mental leap is better classified as significantly delayed, rather than instantaneous. First, the term VERDE could mean the following: green, unripe, youthful, person in the bloom of age, plantain, country, policeman, loose, immodest. There are literally such a variety of definitions that the wording is suggestive at best. Additionally, it is well-established that if a mark can be deemed descriptive in one sense, but suggestive in another, the mark is suggestive. See 2. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 4th Ed. § 11.19 at pg. 11-28 (2000). Since Applicant's Mark can be perceived in at least one suggestive sense (see examples cited above) the mark is not merely descriptive of Applicant's services. Lastly, it is widely accepted that any doubts regarding whether a mark is suggestive, as opposed to merely descriptive, are to be resolved in favor of the applicant - in favor of finding of suggestiveness and registerability. E.g., In re Conductive Systems, Inc., 220 U.S.P.Q. at 86. Therefore, in light of the foregoing description of Applicant's services, Applicant respectfully submits that Applicant's Mark should be viewed as merely suggestive of Applicant's services and not as descriptive. CONCLUSION. WHEREFORE, Applicant respectfully submits that Applicant's Mark is not merely descriptive of Applicant's services, and prays that the Examining Attorney's refusal of registration be reversed.