Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78774388 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Applicant has applied to register ODOR ELIMINATOR for “dishwashing detergents.”

The examining Trademark Attorney has refused to register Applicant’s mark on the ground that it is merely descriptive of the goods identified in the application.  Applicant respectfully traverses the examining Trademark Attorney’s refusal to register its mark and respectfully requests reconsideration of the same

 

ODOR ELIMINATOR is Not Descriptive of Applicant’s Goods

 The descriptiveness of a mark is properly determined by viewing the mark as applied to the goods and services as they are encountered in the marketplace, not in the abstract.  In re Disc Systems, Inc., 228 U.S.P.Q. 964, 965 (T.T.A.B. 1986) citing Abcor Development Corp, 200 U.S.P.Q. 215 (C.C.P.A. 1978).  When a consumer encounters the trademark ODOR ELIMINATOR applied to dishwashing detergents, he or she does not immediately reflect that the function of this product is to “remove odors” as the examining Trademark Attorney suggests.  The function of a dishwashing detergent is to aid the user in the act of cleaning dishes, it is not a product used to mask or remove unpleasant smells.  Therefore, a consumer would reflect: “How does the term ‘Odor Eliminator’ apply to dishwashing detergents?”  The words, “odor” and “eliminator,” when encountered together suggest an air freshening product, or some type of scented application used to extinguish or mask unpleasant smell.  This is displayed by several similar third party registrations Applicant has found in the records of the U.S. Patent and Trademark Office which have been registered or published. (Copies of all trademarks registrations and applications in the following table are attached hereto.) 

 

Trademark	U.S. Registration Application No.	Goods
FRESHDUCT ODOR ELIMINATOR	2,332,511	Industrial deodorizer that infiltrates and neutralizes odors in HVAC duct systems.
GONZO ODOR ELIMINATOR	2,394,933	Volcanic minerals in powder or rock form for use in absorbing odors for household and commercial use.
OXIFRESH ODOR ELIMINATOR	2,628,340	Air deodorant.
TD3 ODOR ELIMINATOR	2,671,894	Liquid air deodorizer; liquid odor neutralizing preparations for use on carpets, upholstery, household appliances and in bathrooms.
PETROTECH ODOR ELIMINATOR	2,865,632	Water treatment chemicals, namely, water based, biodegradable bio-chemicals used for odor elimination from treatment facilities, petroleum product discharges and other organic processes.
MAID OF HONOR SMOKE ODOR ELIMINATOR	1,885,788	Air fresheners and room deodorizers.
ITZA SHOE-IN ODOR & MOISTURE ELIMINATOR	75,115,999	Shoe deodorizers.
BP’S PET ODOR ELIMINATOR	2,121,171	Non-medicated, liquid pet deodorant. Odor neutralizing preparations for use on carpets, textiles and car seats.
UNIQUE PET ODOR & STAIN ELIMINATOR	78/ 877,402	Cleaning preparations for removing pet odors and stains from carpets and hard surfaces with enzymes; Pet odor removers.

           

            The collection of trademarks above all represent products that either directly or implicitly describe an odor preventative or combative feature. With knowledge of these products, ODOR ELIMINATOR cannot be descriptive of a dishwashing detergent.  While the examining Trademark Attorney is not bound by past Office practice, third party registrations are probative evidence of the meaning of a word.  See Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 U.S.P.Q. 151 (C.C.P.A. 1978); See Also BAF Industries v. Pro-Specialties, Inc., 206 U.S.P.Q. 166 (T.T.A.B. 1980). 

 

Applicant’s Trademark is Suggestive

               Generally, if a mark in its entirety requires imagination, thought or perception to conclusively determine the nature of the goods, then the mark is suggestive.  Stix Products Inc. v. United Merchants and Manufacturers, Inc., 160 U.S.P.Q. 777, 785 (S.D.N.Y., 1968).  See also In re Abcor Development Corp., 200 U.S.P.Q. 215 (C.C.P.A. 1978).  Applicant contends that a consumer must employ “mature thought or follow a multi-stage reasoning process” to determine the services identified by this mark, therefore the mark is not descriptive, but suggestive. 

               If a consumer encountered ODOR ELIMINATOR, he or she will not assume that this trademark would relate to a dishwashing detergent as the examining Trademark Attorney alleges.  A consumer would have to employ a multi-staged reasoning process to realize that the trademark ODOR ELIMINATOR is suggestive of a secondary or resultant feature of the product.  On encountering the trademark, a consumer would first break down ODOR ELIMINATOR into two separate words, “Odor” and “Eliminator.”  He or she would then speculate how this relates to a dish washing detergent.  Next, the consumer would wonder how a dishwashing detergent eliminates unpleasant smells.  They may erroneously determine that ODOR ELIMINATOR is a type of air freshening product such as those in the table above.  The consumer may come to the conclusion that it is not the product that directly eliminates odors at all, but merely facilitates the user in removing the smells associated with unclean dishes, by washing them.  Applicant submits that these various stages of alternative reasoning display that ODOR ELIMINATOR is not descriptive of a dishwashing detergent and a degree of imagination and reasoning is necessary to determine its suggestive meaning.

 

All Doubt Should be Resolved in Applicant’s Favor

            Finally, it is well established that if there is any doubt as to whether a mark is merely descriptive under the Trademark Act, such doubt must be resolved in favor of the Applicant, In re Metropolitan Foodservice, Inc., 30 U.S.P.Q.2d 1974, 1976 (T.T.A.B. 1994), because the line between merely descriptive and only suggestive terms is “so nebulous.” 

Based on the forgoing, Applicant submits that its mark, ODOR ELIMINATOR is not descriptive, but merely suggestive and Applicant’s mark is entitled registration absent a showing of secondary meaning.

Evidence
Evidence in the nature of TESS Search results printouts has been attached.
Original PDF file:
evi_192132225130-145031915_._ODOR_ELIMINATOR_Evidence.pdf
Converted PDF file(s) (14 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14


Response Signature
Signature: /MICHAELJSMITH/     Date: 12/06/2006
Signatory's Name: Michael J Smith
Signatory's Position: Attorney, Trademark & Copyright
        
Serial Number: 78774388
Internet Transmission Date: Wed Dec 06 14:54:05 EST 2006
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20061206145405
290068-78774388-360e34ed5b46565cbe44aae8
f725def0d5-N/A-N/A-20061206145031915937