| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77912925 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
I. The SILKY Mark is Not “Merely Descriptive”
In the instant action, the Examining Attorney has issued a preliminary refusal, alleging the above-captioned “SILKY” mark to be merely descriptive of Applicant’s services. Applicant respectfully disagrees for several reasons.
A. SILKY is Not “Merely Descriptive” as it Does Not Immediately Describe the Services. First, legal authorities have long recognized that many of the best trademarks have descriptive qualities without being “merely descriptive” marks. A term is merely descriptive “if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (A “mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service”); In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). In the instant action, the Examining Attorney cites certain definitions of the verb “silky” and concluded the word “’silky” means “resembling silk,” which is a fine lustrous fiber. However, the Examining Attorney’s definition does not describe the nature of Applicant’s services, which is distributorship in the field of hair care and beauty products. Indeed, Applicant sells a variety of products and accessories that are not made of fabric. B. SILKY is Suggestive Because Multi Stage Reasoning is Required to Determine the Nature of the Services. It is well established that a “term is suggestive rather than merely descriptive if one must exercise mature thought or follow a multi stage reasoning process to determine what … service characteristics a term indicates.” In re Tennis in the Round Inc., 199 USPQ 496 (TTAB 1978).
In the present case, consumers encountering “SILKY” will find the term an un-natural way to describe Applicant’s distributorship services given that many of the products distributed by Applicant are not even made of fabric.
Accordingly, it is respectfully submitted that Applicant’s SILKY mark does not describe the goods with immediacy, but instead invites a consumer to reflect on the mark in numerous ways and multiple stages. Such reflection, even if it lasts for just a moment, is the hallmark of a suggestive mark. Thus, Applicant respectfully requests that the refusal on the grounds of mere descriptiveness be withdrawn.
II. Classification and Identification of Goods
Per the Examining Attorney’s helpful suggestions, Applicant respectfully requests that the Identification of Goods be amended as follows:
Please delete the existing Identification of Goods in International Class 035 and replace it with the following:
“Distributorships in the field of hair care and beauty products, in International Class 035.” |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Uleses C. Henderson, Jr./ |
| SIGNATORY'S NAME | Uleses C. Henderson, Jr. |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 10/14/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Oct 14 20:02:05 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20101014200205053436-7791 2925-470f47443108fd4cce2b dfbe4a61820fea-N/A-N/A-20 101014192732841239 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
I. The SILKY Mark is Not “Merely Descriptive”
In the instant action, the Examining Attorney has issued a preliminary refusal, alleging the above-captioned “SILKY” mark to be merely descriptive of Applicant’s services. Applicant respectfully disagrees for several reasons.
A. SILKY is Not “Merely Descriptive” as it Does Not Immediately Describe the Services.
First, legal authorities have long recognized that many of the best trademarks have descriptive qualities without being “merely descriptive” marks. A term is merely descriptive “if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (A “mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service”); In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978).
In the instant action, the Examining Attorney cites certain definitions of the verb “silky” and concluded the word “’silky” means “resembling silk,” which is a fine lustrous fiber. However, the Examining Attorney’s definition does not describe the nature of Applicant’s services, which is distributorship in the field of hair care and beauty products. Indeed, Applicant sells a variety of products and accessories that are not made of fabric.
B. SILKY is Suggestive Because Multi Stage Reasoning is Required to Determine the Nature of the Services.
It is well established that a “term is suggestive rather than merely descriptive if one must exercise mature thought or follow a multi stage reasoning process to determine what … service characteristics a term indicates.” In re Tennis in the Round Inc., 199 USPQ 496 (TTAB 1978).
In the present case, consumers encountering “SILKY” will find the term an un-natural way to describe Applicant’s distributorship services given that many of the products distributed by Applicant are not even made of fabric.
Accordingly, it is respectfully submitted that Applicant’s SILKY mark does not describe the goods with immediacy, but instead invites a consumer to reflect on the mark in numerous ways and multiple stages. Such reflection, even if it lasts for just a moment, is the hallmark of a suggestive mark. Thus, Applicant respectfully requests that the refusal on the grounds of mere descriptiveness be withdrawn.
II. Classification and Identification of Goods
Per the Examining Attorney’s helpful suggestions, Applicant respectfully requests that the Identification of Goods be amended as follows:
Please delete the existing Identification of Goods in International Class 035 and replace it with the following:
“Distributorships in the field of hair care and beauty products, in International Class 035.”