| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78526708 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In Office Action No. 1, the Examining Attorney refused registration of applicant's proposed mark on the basis that the proposed mark merely describes a characteristic or function of applicant's goods. Applicant respectfully requests that the Examining Attorney's reconsider this initial refusal in light of the fact that the components of applicant's mark combine to create a unitary mark which is registrable due to the mark's distinctive sound pattern. This distinctive sound pattern or alliteration creates a unitary mark, evoking a unique commercial impression and rendering it not merely descriptive of applicant's goods. "A mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning . . . ." T.M.E.P. §1209.03(d). Alliterations, sometimes called "head rhymes" or "initial rhymes," See Webster's Ninth New Collegiate Dictionary 72 (1990), often create unitary marks worthy of trademark protection. See T.M.E.P. §1213.05(e). The subject mark contains a very strong and distinctive sound pattern in which the only two elements of the mark, LOGGER and LUG, share the "L" and hard "G" sounds in the same order and same position within each element. This repetition of the first two consonants gives the mark a distinctive rhyming sound that encourages consumers to perceive it as a distinctive element of the mark. See In re Kraft, 218 U.S.P.Q. 571, 573 (T.T.A.B. 1983). With such a strong and unique alliteration, applicant's mark will be viewed as a trademark, not merely as descriptive wording. Sound patterns such as alliteration and rhymes contribute to the distinctiveness of marks. See, e.g., In re Star Metal Corp., 150 U.S.P.Q. 133 (T.T.A.B. 1966) (VITTLE VENDOR not merely descriptive of food displaying and dispensing equipment); In re David Crystal, Inc., 145 U.S.P.Q. 95 (T.T.A.B. 1965) (SPORTSWEAR FOR EVERYWHERE not merely descriptive of dresses and suits). There are currently many such marks registered on the Principal Register, including several for goods in the same class as that covered in the subject application. Some of the Class 12 marks include: DESERT DUELER (Reg. No. 1140707), ROAD ROLLER (Reg. No. 2575393), STREET SURFER (Reg. No. 2674229) and TRAIL TRAC (1874617). If phrases such as these have been deemed distinctive, it would seem that an alliteration such as LOGGER LUG, would almost certainly be distinctive as well. The shared initial consonants alone would dictate such a status. In the event the Examining Attorney has any doubt, applicant respectfully requests that its mark pass to publication to determine if anyone would truly be damaged by registration of the mark. See In re Grand Metropolitan Foodservice Inc., 30 U.S.P.Q.2d 1974, 1976 (T.T.A.B. 1994) (any doubt with respect to whether a mark is descriptive or suggestive must be resolved in favor of the applicant, and borderline cases should pass to publication). Applicant believes that it has responded fully to the Office Action. Applicant further believes that its application is in a proper condition to be passed on to publication, and favorable action is therefore respectfully requested. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Nicholas J. Valenziano, Jr./ |
| SIGNATORY NAME | Nicholas J. Valenziano, Jr. |
| SIGNATORY POSITION | Trademark Attorney |
| SIGNATURE DATE | 01/11/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jan 11 16:56:29 EST 2006 |
| TEAS STAMP | USPTO/ROA-XX.X.XXX.XXX-20 060111165629106858-785267 08-3206eddc2495df0dcc496e 32c9d9aab7d75-N/A-N/A-200 60111163654757520 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
In Office Action No. 1, the Examining Attorney refused registration of applicant's proposed mark on the basis that the proposed mark merely describes a characteristic or function of applicant's goods. Applicant respectfully requests that the Examining Attorney's reconsider this initial refusal in light of the fact that the components of applicant's mark combine to create a unitary mark which is registrable due to the mark's distinctive sound pattern. This distinctive sound pattern or alliteration creates a unitary mark, evoking a unique commercial impression and rendering it not merely descriptive of applicant's goods.
"A mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning . . . ." T.M.E.P. §1209.03(d). Alliterations, sometimes called "head rhymes" or "initial rhymes," See Webster's Ninth New Collegiate Dictionary 72 (1990), often create unitary marks worthy of trademark protection. See T.M.E.P. §1213.05(e).
The subject mark contains a very strong and distinctive sound pattern in which the only two elements of the mark, LOGGER and LUG, share the "L" and hard "G" sounds in the same order and same position within each element. This repetition of the first two consonants gives the mark a distinctive rhyming sound that encourages consumers to perceive it as a distinctive element of the mark. See In re Kraft, 218 U.S.P.Q. 571, 573 (T.T.A.B. 1983). With such a strong and unique alliteration, applicant's mark will be viewed as a trademark, not merely as descriptive wording.
Sound patterns such as alliteration and rhymes contribute to the distinctiveness of marks. See, e.g., In re Star Metal Corp., 150 U.S.P.Q. 133 (T.T.A.B. 1966) (VITTLE VENDOR not merely descriptive of food displaying and dispensing equipment); In re David Crystal, Inc., 145 U.S.P.Q. 95 (T.T.A.B. 1965) (SPORTSWEAR FOR EVERYWHERE not merely descriptive of dresses and suits). There are currently many such marks registered on the Principal Register, including several for goods in the same class as that covered in the subject application. Some of the Class 12 marks include: DESERT DUELER (Reg. No. 1140707), ROAD ROLLER (Reg. No. 2575393), STREET SURFER (Reg. No. 2674229) and TRAIL TRAC (1874617). If phrases such as these have been deemed distinctive, it would seem that an alliteration such as LOGGER LUG, would almost certainly be distinctive as well. The shared initial consonants alone would dictate such a status.
In the event the Examining Attorney has any doubt, applicant respectfully requests that its mark pass to publication to determine if anyone would truly be damaged by registration of the mark. See In re Grand Metropolitan Foodservice Inc., 30 U.S.P.Q.2d 1974, 1976 (T.T.A.B. 1994) (any doubt with respect to whether a mark is descriptive or suggestive must be resolved in favor of the applicant, and borderline cases should pass to publication).
Applicant believes that it has responded fully to the Office Action. Applicant further believes that its application is in a proper condition to be passed on to publication, and favorable action is therefore respectfully requested.