| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78695806 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney has refused to register the mark LINKSHARE on the basis that it is “merely descriptive” of the goods and services covered by the application, namely “[m]arketing and business management services, namely, development, management, opitimization and analysis of online marketing strategies and online marketing and advertising campaigns for others; search engine marketing and e-mail marketing services for others; affiliate marketing services, namely, facilitating partnerships between affiliates and merchants in connection with online marketing campaigns and e-commerce transactions; collecting, analyzing and reporting data concerning online business-to-consumer and business-to-business commercial transactions; integrated tracking and management of online business-to-consumer and business-to-business commercial transactions; licensing of computer software for use in tracking and managing commercial transactions” in Class 35, and “[c]omputer services for others, namely, the maintenance and administration of an online affiliate marketing network, and providing customer support and training in connection therewith; application service provider services featuring software for use in collecting, analyzing and reporting data concerning online business-to-consumer and business-to-business commercial transactions.” Applicant respectfully disagrees.
It is well established that a mark shall not be refused registration on the grounds that it is “merely descriptive” of the applicant’s goods or services, 15 U.S.C. § 1052, unless it provides, in a “ clear and precise way,” Airco, Inc. v. Air Products and Chemicals, Inc., 196 U.S.P.Q. 832, 835 (T.T.A.B. 1977), an “immediate idea” of the goods or services offered in connection with the mark, In re Morton‑Norwich Products, Inc., 209 U.S.P.Q. 791, 791 (T.T.A.B. 1981). In contrast, a “suggestive” mark only indirectly suggests these things, and requires the exercise of some thought or imagination to link the mark to the goods or services with which it is used. See, e.g., In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (TENNIS IN THE ROUND not merely descriptive of tennis facility with courts arranged in a circular configuration). Moreover, “a minor degree of descriptiveness does not destroy the suggestive, or trademark, significance” of a term, since “[o]bviously, there must be a shade of descriptive meaning present or the suggestion process will not occur.” J. Gilson, Trademark Protection and Practice § 2.04 (1994). Thus, even where a mark may indicate or describe something about the goods or services with which the mark is used, it is suggestive, not descriptive, if further thought or imagination is required for the consumer to clearly understand the nature of those goods or services. In re Abcor Development Corp., 200 USPQ 215 (CCPA 1978). It has long been the position of the PTO that the term "merely descriptive" means "only descriptive." Id.
It is equally settled that where at the examining stage any doubts at all exist regarding whether a mark is “merely descriptive,” those doubts must be resolved in favor of the applicant and the mark permitted to proceed to publication. See In re Shop‑Vac Corp., 219 U.S.P.Q. 470, 472 (T.T.A.B. 1 983) (“At the very least . . . we have doubts about the ‘merely descriptive’ character of the mark before us and, unlike the situation in determining likelihood of confusion . . . it is clear that such doubts are to be resolved in favor of applicants.”); In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972) (noting that “any doubt” concerning the possibly descriptive nature of a mark should be “resolved in applicant’s behalf”).
When the mark LINKSHARE is considered in light of these settled principles, it is apparent that the mark is not “merely descriptive” of the services with which it will be used. The Examining Attorney concludes, based on a survey of third-party websites that use terms such as “link sharing,” “link-share” and “link share,” that “the phrase ‘link share’ refers to the practice of allowing links to be placed on websites in situations mutually beneficial to the owners of both websites.” However, although the mark LINKSHARE may be suggestive generally of a product or service involving mutually beneficial links to Internet websites, the mark does not immediately and directly convey to consumers specific information about even the most basic characteristics of Applicant’s services. Specifically, the mark will not inform consumers that Applicant’s services involve advertising and marketing, or e-commerce, or the collection, analyzing and reporting of data concerning online business-to-consumer and business-to-business commercial transactions, or tracking and management of online business-to-consumer and business-to-business commercial transactions, or computer software licensing. Nor does “link share” or the mark LINKSHARE describe Applicant’s computer services or application service provider services. The limited information the mark is likely to convey about Applicant’s services simply does not render the mark “merely descriptive” of those services. See, e.g., Physicians Formula Cosmetics Inc. v. West Cabot Cosmetics, Inc., 857 F.2d 80, 82 (2d Cir. 1988) (PHYSICIAN’S FORMULA not descriptive for skin creams and lotions, even though the company that originally marketed the products was founded by a physician, because the mark "does little to identify the product other than to locate it in the realm of medicine”); The Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 674 (7th Cir. 1982) (THE MONEY STORE suggestive, not descriptive, of money‑lending services, because although the mark “conveys the idea of a commercial establishment whose service involves supplying money . . . [it does not] necessarily convey the essence of [trademark owner’s] business, money lending”); In re Shop‑Vac Corp., 219 U.S.P.Q. 470 (T.T.A.B. 1983) (WET/DRY BROOM suggestive, not descriptive, of electric vacuum cleaners).
Indeed, that the mark LINKSHARE is inherently descriptive of the services is reflected by the fact that in 2001 the Patent and Trademark Office issued to Applicant a registration for the mark LINKSHARE covering similar services, without resort to Section 2(f).
Consideration of the nature of Applicant’s services makes clear that the mark is suggestive, not descriptive; at a minimum, there is sufficient basis for doubt about whether the mark is merely descriptive to warrant passing the mark to publication. Accordingly, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn. |
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| GOODS AND/OR SERVICES SECTION (035)(current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Marketing and business management services, namely, development, management, opitimization and analysis of online marketing strategies and online marketing and advertising campaigns for others; search engine marketing and e-mail marketing services for others; affiliate marketing services, namely, facilitating partnerships between affiliates and merchants in connection with online marketing campaigns and e-commerce transactions; collecting, analyzing and reporting data concerning online business-to-consumer and business-to-business commercial transactions; integrated tracking and management of online business-to-consumer and business-to-business commercial transactions; licensing of computer software for use in tracking and managing commercial transactions | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 10/29/1997 |
| FIRST USE IN COMMERCE DATE | At least as early as 10/29/1997 |
| GOODS AND/OR SERVICES SECTION (035)(proposed) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Advertising, marketing and business management services, namely, development, management, opitimization and analysis of online marketing strategies and online marketing and advertising campaigns for others; advertising and marketing services, search engine marketing and e-mail marketing services for others; affiliate marketing services, namely, facilitating partnerships between affiliates and merchants in connection with online marketing campaigns and e-commerce transactions; collecting, analyzing and reporting data concerning online business-to-consumer and business-to-business commercial transactions; integrated tracking and management of online business-to-consumer and business-to-business commercial transactions; licensing of computer software for use in tracking and managing commercial transactions | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 10/29/1997 |
| FIRST USE IN COMMERCE DATE | At least as early as 10/29/1997 |
| GOODS AND/OR SERVICES SECTION (042)(no change) | |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Robert J. Driscoll/ |
| SIGNATORY'S NAME | Robert J. Driscoll |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 09/05/2006 |
| RESPONSE SIGNATURE | /Robert J. Driscoll/ |
| SIGNATORY'S NAME | Robert J. Driscoll |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 09/05/2006 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Sep 05 16:46:03 EDT 2006 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20060905164603295049-7869 5806-340986bf7d59066a6e42 6718c4cd6288-N/A-N/A-2006 0905164009953100 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney has refused to register the mark LINKSHARE on the basis that it is “merely descriptive” of the goods and services covered by the application, namely “[m]arketing and business management services, namely, development, management, opitimization and analysis of online marketing strategies and online marketing and advertising campaigns for others; search engine marketing and e-mail marketing services for others; affiliate marketing services, namely, facilitating partnerships between affiliates and merchants in connection with online marketing campaigns and e-commerce transactions; collecting, analyzing and reporting data concerning online business-to-consumer and business-to-business commercial transactions; integrated tracking and management of online business-to-consumer and business-to-business commercial transactions; licensing of computer software for use in tracking and managing commercial transactions” in Class 35, and “[c]omputer services for others, namely, the maintenance and administration of an online affiliate marketing network, and providing customer support and training in connection therewith; application service provider services featuring software for use in collecting, analyzing and reporting data concerning online business-to-consumer and business-to-business commercial transactions.” Applicant respectfully disagrees.
It is well established that a mark shall not be refused registration on the grounds that it is “merely descriptive” of the applicant’s goods or services, 15 U.S.C. § 1052, unless it provides, in a “ clear and precise way,” Airco, Inc. v. Air Products and Chemicals, Inc., 196 U.S.P.Q. 832, 835 (T.T.A.B. 1977), an “immediate idea” of the goods or services offered in connection with the mark, In re Morton‑Norwich Products, Inc., 209 U.S.P.Q. 791, 791 (T.T.A.B. 1981). In contrast, a “suggestive” mark only indirectly suggests these things, and requires the exercise of some thought or imagination to link the mark to the goods or services with which it is used. See, e.g., In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (TENNIS IN THE ROUND not merely descriptive of tennis facility with courts arranged in a circular configuration). Moreover, “a minor degree of descriptiveness does not destroy the suggestive, or trademark, significance” of a term, since “[o]bviously, there must be a shade of descriptive meaning present or the suggestion process will not occur.” J. Gilson, Trademark Protection and Practice § 2.04 (1994). Thus, even where a mark may indicate or describe something about the goods or services with which the mark is used, it is suggestive, not descriptive, if further thought or imagination is required for the consumer to clearly understand the nature of those goods or services. In re Abcor Development Corp., 200 USPQ 215 (CCPA 1978). It has long been the position of the PTO that the term "merely descriptive" means "only descriptive." Id.
It is equally settled that where at the examining stage any doubts at all exist regarding whether a mark is “merely descriptive,” those doubts must be resolved in favor of the applicant and the mark permitted to proceed to publication. See In re Shop‑Vac Corp., 219 U.S.P.Q. 470, 472 (T.T.A.B. 1 983) (“At the very least . . . we have doubts about the ‘merely descriptive’ character of the mark before us and, unlike the situation in determining likelihood of confusion . . . it is clear that such doubts are to be resolved in favor of applicants.”); In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972) (noting that “any doubt” concerning the possibly descriptive nature of a mark should be “resolved in applicant’s behalf”).
When the mark LINKSHARE is considered in light of these settled principles, it is apparent that the mark is not “merely descriptive” of the services with which it will be used. The Examining Attorney concludes, based on a survey of third-party websites that use terms such as “link sharing,” “link-share” and “link share,” that “the phrase ‘link share’ refers to the practice of allowing links to be placed on websites in situations mutually beneficial to the owners of both websites.” However, although the mark LINKSHARE may be suggestive generally of a product or service involving mutually beneficial links to Internet websites, the mark does not immediately and directly convey to consumers specific information about even the most basic characteristics of Applicant’s services. Specifically, the mark will not inform consumers that Applicant’s services involve advertising and marketing, or e-commerce, or the collection, analyzing and reporting of data concerning online business-to-consumer and business-to-business commercial transactions, or tracking and management of online business-to-consumer and business-to-business commercial transactions, or computer software licensing. Nor does “link share” or the mark LINKSHARE describe Applicant’s computer services or application service provider services. The limited information the mark is likely to convey about Applicant’s services simply does not render the mark “merely descriptive” of those services. See, e.g., Physicians Formula Cosmetics Inc. v. West Cabot Cosmetics, Inc., 857 F.2d 80, 82 (2d Cir. 1988) (PHYSICIAN’S FORMULA not descriptive for skin creams and lotions, even though the company that originally marketed the products was founded by a physician, because the mark "does little to identify the product other than to locate it in the realm of medicine”); The Money Store v. Harriscorp Finance, Inc., 689 F.2d 666, 674 (7th Cir. 1982) (THE MONEY STORE suggestive, not descriptive, of money‑lending services, because although the mark “conveys the idea of a commercial establishment whose service involves supplying money . . . [it does not] necessarily convey the essence of [trademark owner’s] business, money lending”); In re Shop‑Vac Corp., 219 U.S.P.Q. 470 (T.T.A.B. 1983) (WET/DRY BROOM suggestive, not descriptive, of electric vacuum cleaners).
Indeed, that the mark LINKSHARE is inherently descriptive of the services is reflected by the fact that in 2001 the Patent and Trademark Office issued to Applicant a registration for the mark LINKSHARE covering similar services, without resort to Section 2(f).
Consideration of the nature of Applicant’s services makes clear that the mark is suggestive, not descriptive; at a minimum, there is sufficient basis for doubt about whether the mark is merely descriptive to warrant passing the mark to publication. Accordingly, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn.