| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78694644 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
I. Descriptive Refusal The Examining Attorney refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act on the grounds that the mark merely describes the subject matter and theme of the Applicant’s goods and services. The Applicant respectfully disagrees with the Examiner’s decision and makes the following arguments in favor of registration: Applicant respectfully submits that the mark ROME is not merely descriptive in relation to the identified goods and/or services and is, instead suggestive. The test for determining whether a mark is descriptive or suggestive is as follows:
A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods. Stix Products Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 160 U.S.P.Q. 777 (S.D.N.Y. 1968). Here, imagination, thought and perception is required to ascertain the nature of the goods and/or services. Indeed, the word ROME is meant to invoke the imagery and history of the Roman Empire and not the physical city of Rome. The mark is also vague as to what aspects of the Roman Empire are included in the series. II. Geographically Descriptive Refusal The Examiner has refused registration of the Applicant's mark alleging that the mark is primarily geographically descriptive of the Applicant's goods and services under section 2(e)(2) of the Trademark Act. The Applicant respectfully disagrees with the Examiner's decision and requests reconsideration based on the following arguments: The fact that a term can be the name of a geographic place does not mean that it is automatically primarily geographically descriptive under Section 2(e)(2). TMEP §1210.02 (b)(i); See Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951), aff'd, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953). A geographic term that is used in such a way that its primary significance is not geographic, is not primarily geographically descriptive. A geographic term may be used in an arbitrary or suggestive manner as applied to the goods or services at issue. In re RJR Foods Inc., 189 USPQ 622 (TTAB 1975) (HAWAIIAN MAID for soft-drinks concentrate held not to be primarily geographically descriptive or deceptively misdescriptive); See also, National Lead Co. v. Wolfe, 105 USPQ 462 (9th Cir. 1955), cert denied, 107 USPQ 362 (1955) (DUTCH BOY held to be used in "fictitious, arbitrary, and fanciful manner" for paint). Applicant's mark when viewed as a whole is arbitrary or suggestive in that ROME is not, primarily geographically descriptive of the Applicant's goods and services, namely, dvd’s, video and computer games, ring tones, ring backs, downloadable audio and video clips, and an original television series. It is the impact of the mark on the minds of prospective consumers that is controlling. Rockland Mortgage Corp. v. Shareholders Funding, Inc., 835 F. Supp. 182 (1993); 30 USPQ 2d 1270 (D. Del. 1993). Prospective consumers of the Applicant's goods and services would not immediately know the nature of those goods and services. While the mark may suggest something about the Applicant's goods and services, it requires imagination, thought and perception to reach a conclusion as to the nature of the services. In re Southern National Bank of North Carolina, 219 USPQ 1231 (TTAB 1983). Here for example, it is not clear from the mark alone, the time period of the program, the characters, the setting etc. “Mental gymnastics” are required. It is Applicant's understanding that Trademark Office policy has been to resolve issues of doubt with respect to "merely descriptive" or "suggestive" marks in favor of the Applicant. (Re Gourmet Bakers, Inc. (1972, TTAB) 173 USPQ 565; Accord: Re Morton-Norwich Products, Inc. (1981, TTAB) 209 USPQ 791). Applicant respectfully requests such favorable treatment for its mark here. III. Geographic Location – Requirement for Information The Examining Attorney has requested additional information about whether Applicant’s services will be rendered in, the location named in the mark. Applicant’s goods and services are not performed in the city of ROME, per se. The mark merely identifies the television series, dvd’s video and computer games, ring tones, ring backs, downloadable audio and video clips, etc., associated with the series that happens to take place during the time period of the Roman Empire. In light of the foregoing arguments, the Applicant respectfully requests that the Examiner withdraw the refusal to register the mark under Sections 2(e)(1) and 2(e)(2) and its mark be passed on for publication. |
|
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| pre-recorded audiotapes, videotapes, compact discs, dvd's and multimedia software recorded on CD-ROM, video and computer game tapes, video and computer game discs, video and computer game cassettes, video and computer game cartridges, video and computer game CD-ROMs, video and computer game software, interactive video game programs and computer game cartridges; images held in electronic format; electronic games; ring tones, ring backs, pre-recorded video clips, pre-recorded audio clips, animated ringers, video ringers, audio shorts, video shorts, animated screensavers; downloadable prerecorded audio, video, text and graphics held in electronic personal computers and handheld wireless devices featuring content from or relating to Applicant's dramatic television series of the same name | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| pre-recorded audiotapes, video tapes, compact discs, dvd's and multimedia software recorded on CD-ROM featuring content from or relating to Applicant's dramatic television series of the same name; video and computer game tapes, video and computer game discs, video and computer game cassettes, video and computer game cartridges, video and computer game CD-ROMs, video and computer game software, interactive video game programs and computer game cartridges; images held in electronic format, namely, images related to a dramatic television series in the nature of downloadable electrnoic photographs, electronic photographs and graphics stored or recorded on electronic or computer media; electronic games; ring tones, ring backs, pre-recorded video clips, pre-recorded audio clips, animated ringers, video ringers, audio shorts, video shorts, animated screensavers; downloadable prerecorded audio, video, text and graphics held in electronic personal computers and handheld wireless devices featuring content from or relating to Applicant's dramatic television series of the same name | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (041)(no change) | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Erin S. Hennessy/ |
| SIGNATORY'S NAME | Erin S. Hennessy |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 05/25/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 25 14:07:56 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20070525140756736109-7869 4644-37060bdac6130de27e77 d9fb2fc79af379f-N/A-N/A-2 0070525135312497368 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
I. Descriptive Refusal
The Examining Attorney refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act on the grounds that the mark merely describes the subject matter and theme of the Applicant’s goods and services. The Applicant respectfully disagrees with the Examiner’s decision and makes the following arguments in favor of registration:
Applicant respectfully submits that the mark ROME is not merely descriptive in relation to the identified goods and/or services and is, instead suggestive.
The test for determining whether a mark is descriptive or suggestive is as follows:
A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.
Stix Products Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 160 U.S.P.Q. 777 (S.D.N.Y. 1968).
Here, imagination, thought and perception is required to ascertain the nature of the goods and/or services. Indeed, the word ROME is meant to invoke the imagery and history of the Roman Empire and not the physical city of Rome. The mark is also vague as to what aspects of the Roman Empire are included in the series.
II. Geographically Descriptive Refusal
The Examiner has refused registration of the Applicant's mark alleging that the mark is primarily geographically descriptive of the Applicant's goods and services under section 2(e)(2) of the Trademark Act. The Applicant respectfully disagrees with the Examiner's decision and requests reconsideration based on the following arguments:
The fact that a term can be the name of a geographic place does not mean that it is automatically primarily geographically descriptive under Section 2(e)(2). TMEP §1210.02 (b)(i); See Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (S.D.N.Y. 1951), aff'd, 204 F.2d 223, 97 USPQ 246 (2d Cir. 1953), cert. denied, 346 U.S. 827, 99 USPQ 491 (1953). A geographic term that is used in such a way that its primary significance is not geographic, is not primarily geographically descriptive. A geographic term may be used in an arbitrary or suggestive manner as applied to the goods or services at issue. In re RJR Foods Inc., 189 USPQ 622 (TTAB 1975) (HAWAIIAN MAID for soft-drinks concentrate held not to be primarily geographically descriptive or deceptively misdescriptive); See also, National Lead Co. v. Wolfe, 105 USPQ 462 (9th Cir. 1955), cert denied, 107 USPQ 362 (1955) (DUTCH BOY held to be used in "fictitious, arbitrary, and fanciful manner" for paint). Applicant's mark when viewed as a whole is arbitrary or suggestive in that ROME is not, primarily geographically descriptive of the Applicant's goods and services, namely, dvd’s, video and computer games, ring tones, ring backs, downloadable audio and video clips, and an original television series.
It is the impact of the mark on the minds of prospective consumers that is controlling. Rockland Mortgage Corp. v. Shareholders Funding, Inc., 835 F. Supp. 182 (1993); 30 USPQ 2d 1270 (D. Del. 1993). Prospective consumers of the Applicant's goods and services would not immediately know the nature of those goods and services. While the mark may suggest something about the Applicant's goods and services, it requires imagination, thought and perception to reach a conclusion as to the nature of the services. In re Southern National Bank of North Carolina, 219 USPQ 1231 (TTAB 1983). Here for example, it is not clear from the mark alone, the time period of the program, the characters, the setting etc. “Mental gymnastics” are required.
It is Applicant's understanding that Trademark Office policy has been to resolve issues of doubt with respect to "merely descriptive" or "suggestive" marks in favor of the Applicant. (Re Gourmet Bakers, Inc. (1972, TTAB) 173 USPQ 565; Accord: Re Morton-Norwich Products, Inc. (1981, TTAB) 209 USPQ 791). Applicant respectfully requests such favorable treatment for its mark here.
III. Geographic Location – Requirement for Information
The Examining Attorney has requested additional information about whether Applicant’s services will be rendered in, the location named in the mark. Applicant’s goods and services are not performed in the city of ROME, per se. The mark merely identifies the television series, dvd’s video and computer games, ring tones, ring backs, downloadable audio and video clips, etc., associated with the series that happens to take place during the time period of the Roman Empire.
In light of the foregoing arguments, the Applicant respectfully requests that the Examiner withdraw the refusal to register the mark under Sections 2(e)(1) and 2(e)(2) and its mark be passed on for publication.