Response to Office Action

  REMARKS

           In the Office Action, the Examining Attorney initially refused registration of Applicant's mark, VERANDA on the Principal Register under Section 2(e)(1), contending that the Mark merely described a purpose, function of Applicant's goods and citing "dictionary definitions" in support of this contention.  For the reasons discussed below, Applicant respectfully submits that the mark VERANDA as applied to Applicant's goods is entitled to registration on the Principal Register.  Applicant therefore requests that the refusal be withdrawn.

DISCUSSION

           Reconsideration of the above-identified application is respectfully requested.

1.        Descriptiveness

           The Examining Attorney refused registration of the mark VERANDA on the Principal Register under Section 2(e)(1), contending that the Mark VERANDA "merely describes" Applicant's goods.  Applicant submits that the mark VERANDA is not "merely" descriptive of applicant's goods.  Though VERANDA may be suggestive of one possible structure which may be built using the goods, it is not merely descriptive in that the mark does not tell a potential customer only what the goods are used for.  The term "merely" is construed as meaning "only."  A mark is merely descriptive if, because of its meaning, it does nothing but describe the goods (including their function, characteristics, use or ingredients).  In re Colonial Stores Inc., 157 U.S.P.Q. 382, 385 (C.C.P.A. 1968).  The goods in the VERANDA Application may be used to undertake a wide range of home improvements or create a wide variety of structures.  The mark VERANDA does not do "nothing but describe" decking, fencing, lattice, molding, windows and doors.  Furthermore, the mark VERANDA conveys no discernable information regarding the nature, function, characteristics or purpose of the goods in the application.  The line between suggestive and descriptive marks is nebulous and often obscure.  The mark VERANDA for decking, fencing, lattice, molding, windows and doors, falls on the suggestive side of the line and doubt is resolved in favor of the Applicant.  In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565.

           Rather than be viewed as merely descriptive, Applicant asserts that consumers will perceive the mark VERANDA, when used in conjunction with all of Applicant's goods, as a phrase that suggests charm, simplicity and old-world style  images that are frequently associated with this word.

           As further proof that the mark VERANDA should be registrable on the Principal Register, Applicant submits the following marks which were allowed to proceed to registration on the principal register, and were recognized as suggestive in nature, despite the fact that each mark is one possible end result which could be made out of the respective applicant's goods.

           Additionally, cases such as In re Colonial Stores Inc., which held that SUGAR & SPICE was suggestive of bakery products, namely cakes, cookies, breads, rolls, donuts, pastries, and crackers, are instructive in the analysis of the present application.  In Colonial Stores, the court noted that:

the terms "sugar" and "spice" used individually are well known and well understood by the public.  However, when combined and used on bakery goods, we think they may function as an indication of more than a mere description of the ingredients of the goods on which the mark is used and …are not "merely descriptive" of such goods within the meaning of section 2. …[T]he mark clearly does not tell the potential purchaser only what the goods are, their function, their characteristics or their use, or, of prime concern, their ingredients. In re Colonial Stores, 157 U.S.P.Q at 385.

           It is clear that even words or terms which may be descriptive when standing alone may be combined to make a composite mark which is not descriptive as a whole.  Physicians Formula Cosmetics Inc. v. West Cabot Cosmetics, Inc., 857 F.2d 80, 82(2d Cir. 1987) (holding "PHYSICIANS FORMULA" for skin creams and lotions suggestive); In re TGB Inc., 229 U.S.P.Q. 759 (T.T.A.B 1986) ("SHOWROOM ONLINE" held suggestive of computerized interior furnishings product information service); In re WSI Corporation, 1 U.S.P.Q.2d 1570 (T.T.A.B 1986) (finding "SUPERSAT" for collecting meteorological information via satellite suggestive, even though "the SAT element would suggest satellite involvement to many" because "the nature of such involvement would not be at all clear … without imagination, perception or reflection o the part of potential customers"); In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983) (holding that "SNO-RAKE" for a snow removal hand tool did not "readily and immediately evoke an impression and understanding of applicant's implement as a snow removal device"); In re Kelly Co., Inc., 162 U.S.P.Q. 128 (T.T.A.B. 1969); In re John H. Breck, Inc., 150 U.S.P.Q. 397 (T.T.A.B. 1966).

           Since the USPTO registrations and the caselaw cited above support the proposition that a mark which describes one possible finished product is not necessarily descriptive of one component of such finished product, Applicant respectfully submits that the Examining Attorney should withdraw the refusal and approve the mark VERANDA for publication.

2.        Doubts Resolved in Favor of the Applicant

           Cases dealing with the merely descriptive nature of a mark have consistently held that doubts are to be resolved in the Applicant's favor.  See In re Conductive Sys., Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983); accord In re Aid Labs., Inc., 221 U.S.P.Q. 1215, 1216 (T.T.A.B 1984); In re Bel Paese Sales Co., 1 U.S.P.Q.2d 1233 (T.T.A.B. 1986); In re Merrill Lynch, Pierce Fenner & Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987).  Therefore, if the Examining Attorney still waivers on the question of the distinctiveness of the mark sought to be registered, it is submitted that any doubt should be resolved in favor of Applicant.  See In re Gourmet Bakers, 173 U.S.P.Q. 565 (T.T.A.B. 1972).

            In light of Applicant's revised identification of goods, we assert that the mark VERANDA is not descriptive of building materials that would be sold in a home improvement store.  Applicant does not sell prefabricated verandas.  Applicant through its retail stores is selling building materials.   Finally, Applicant respectfully submits that this application is in a condition for publication and respectfully requests that the refusal be withdrawn.   If a telephone conference would expedite the publication of this application, the Examining Attorney is requested to contact the undersigned at (302) 798-0620.