| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77946981 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Applicant acknowledges the Office Action dated June 4, 2010 in the above-identified matter. The Examining Attorney has requested a disclaimer for ACCUMULATOR apart from the mark as shown. Applicant respectfully traverses the request for a disclaimer. The Examining Attorney has required that Applicant disclaim the wording “ACCUMULATOR” because it is descriptive of the type of insurance offered and is commonly used in the industry to refer to this type of insurance vehicle. In this case, the basis for the disclaimer requirement is that the term ACCUMULATOR is allegedly merely descriptive of Applicant’s services, and therefore principles applied to merely-descriptive analyses are also applicable in this disclaimer context. As in a “merely descriptive” refusal under Section 2(e)(1) of the Trademark Act, a disclaimer is only necessary where the term “merely” and immediately conveys knowledge of a quality or characteristic of the product. In re Oppedahl & Larson LLP, 71 USPQ 2d 1370, 1371 (Fed. Cir. 2004). “A term is regarded as merely descriptive of a particular product if it describes one significant function or attribute thereof.” In re MBAssociates, 180 USPQ 338, 339 (T.T.A.B. 1973). Here, the term ACCUMULATOR has merely a suggestive value and a connotation that Applicant’s life insurance features the accumulation of value. Applicant’s mark does not immediately convey a direct and precise meaning of the subject services to the actual or prospective consumer. In re Abcor Development Corp., 200 U.S.P.Q. 215, 217-218 (C.C.P.A. 1978). The term ACCUMULATOR as used in the mark SUN ACCUMULATOR does not immediately convey a characteristic of the services, and is therefore not descriptive. Finally, Applicant would like to bring to the Examining Attorney’s attention the fact that other marks containing the wording ACCUMULATOR are registered for related services without requesting a disclaimer. For example, Applicant requests that the Examining Attorney consider the following registrations for overlapping services: PACIFIC INDEXED ACCUMULATOR (U.S. Registration No. 3240511); ACCUMULATOR BONUS MAXXX ELITE (U.S. Registration No. 3105823); CUSTOM ACCUMULATOR (U.S. Registration No. 2896876); STAG ACCUMULATOR (U.S. Registration No. 2742715); PHOENIX ACCUMULATOR UL (U.S. Registration No. 2691475); VALUE ACCUMULATOR (U.S. Registration No. 3197941); and, ACCUMULATOR (U.S. Registration No. 2896498), among others. Applicant does not believe that a disclaimer of the wording ACCUMULATOR should be required in the present application in view of the existing registrations and allowed applications containing ACCUMULATOR, without the need for a disclaimer, for the same services as Applicant. In view of the foregoing, Applicant does not believe that a disclaimer to the wording “ACCUMULATOR” should be required.
CONCLUSION As discussed above, the term ACCUMULATOR is only suggestive of Applicant’s services. Accordingly, Applicant respectfully submits that the requirement for a disclaimer of ACUMMULATOR should be withdrawn. Applicant submits that it has responded to all outstanding issues raised in the Office Action. Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /cml/ |
| SIGNATORY'S NAME | Christina M. Licursi |
| SIGNATORY'S POSITION | Attorney of Record, MA Bar Member |
| DATE SIGNED | 12/06/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Dec 06 14:23:15 EST 2010 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-201 01206142315795741-7794698 1-470d4dd878297d82754b91d 0aa3975ea59-N/A-N/A-20101 206140801432569 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Applicant acknowledges the Office Action dated June 4, 2010 in the above-identified matter. The Examining Attorney has requested a disclaimer for ACCUMULATOR apart from the mark as shown. Applicant respectfully traverses the request for a disclaimer.
The Examining Attorney has required that Applicant disclaim the wording “ACCUMULATOR” because it is descriptive of the type of insurance offered and is commonly used in the industry to refer to this type of insurance vehicle.
In this case, the basis for the disclaimer requirement is that the term ACCUMULATOR is allegedly merely descriptive of Applicant’s services, and therefore principles applied to merely-descriptive analyses are also applicable in this disclaimer context. As in a “merely descriptive” refusal under Section 2(e)(1) of the Trademark Act, a disclaimer is only necessary where the term “merely” and immediately conveys knowledge of a quality or characteristic of the product. In re Oppedahl & Larson LLP, 71 USPQ 2d 1370, 1371 (Fed. Cir. 2004). “A term is regarded as merely descriptive of a particular product if it describes one significant function or attribute thereof.” In re MBAssociates, 180 USPQ 338, 339 (T.T.A.B. 1973). Here, the term ACCUMULATOR has merely a suggestive value and a connotation that Applicant’s life insurance features the accumulation of value. Applicant’s mark does not immediately convey a direct and precise meaning of the subject services to the actual or prospective consumer. In re Abcor Development Corp., 200 U.S.P.Q. 215, 217-218 (C.C.P.A. 1978). The term ACCUMULATOR as used in the mark SUN ACCUMULATOR does not immediately convey a characteristic of the services, and is therefore not descriptive.
Finally, Applicant would like to bring to the Examining Attorney’s attention the fact that other marks containing the wording ACCUMULATOR are registered for related services without requesting a disclaimer. For example, Applicant requests that the Examining Attorney consider the following registrations for overlapping services: PACIFIC INDEXED ACCUMULATOR (U.S. Registration No. 3240511); ACCUMULATOR BONUS MAXXX ELITE (U.S. Registration No. 3105823); CUSTOM ACCUMULATOR (U.S. Registration No. 2896876); STAG ACCUMULATOR (U.S. Registration No. 2742715); PHOENIX ACCUMULATOR UL (U.S. Registration No. 2691475); VALUE ACCUMULATOR (U.S. Registration No. 3197941); and, ACCUMULATOR (U.S. Registration No. 2896498), among others. Applicant does not believe that a disclaimer of the wording ACCUMULATOR should be required in the present application in view of the existing registrations and allowed applications containing ACCUMULATOR, without the need for a disclaimer, for the same services as Applicant.
In view of the foregoing, Applicant does not believe that a disclaimer to the wording “ACCUMULATOR” should be required.
CONCLUSION
As discussed above, the term ACCUMULATOR is only suggestive of Applicant’s services. Accordingly, Applicant respectfully submits that the requirement for a disclaimer of ACUMMULATOR should be withdrawn. Applicant submits that it has responded to all outstanding issues raised in the Office Action. Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned.