| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79100879 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=79100879 |
| LITERAL ELEMENT | MPPE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Applicant Veolia Water Solutions & Technologies Support seeks to register the mark MPPE for fixed and mobile water and wastewater treatment units, namely water purification units and water treatment units for removing hydrocarbons contained in wastewater using a macro-porous polymer. The Trademark Office has refused registration maintaining that the mark merely describes a characteristic of Applicant’s goods. For the reasons set forth below, the Trademark Office is respectfully requested to reconsider the present application. The Examiner is correct in that MPPE is an acronym that stands for “macro-porous polymer extraction”. Further, the Examiner notes that an acronym of a merely descriptive term is also merely descriptive if it is readily understood by the relevant purchasers to be “substantially synonymous” with the merely descriptive wording for which it represents. In this case it is respectfully urged that MPPE is not readily understood by the relevant purchasers as being synonymous with macro-porous polymer extraction. If the acronym MPPE is not readily understood as being synonymous with macro-porous polymer extraction, then the proposed is not descriptive. Somewhat related to whether the acronym is readily understood as standing for a particular meaning is the concept that for a mark to be descriptive it must immediately and forthwith convey the nature or characteristics of the underlying goods. That is if it requires relevant purchasers to stop and think and go through mental steps to arrive at the connection, then the mark is suggestive - not descriptive. In re Abcor Dev. Corp., 200 USPQ 215 (CCPA 1978). Not only must the quality, characteristic, or feature be immediately conveyed, but it must be conveyed with a “degree of particularity”. In re TMS Corp. of America, 200 USPQ 57, 59 (TTAB 1978). In this case it is respectfully urged that relevant purchasers do not readily appreciate that MPPE stands for macro-porous polymer extraction. It is urged that ordinary consumers of wastewater treatment systems will not immediately and forthwith view the acronym MPPE as describing a characteristic of Applicant’s wastewater treatment systems. As noted above, the Examiner is correct in finding that in one case at least MPPE stands for macro-porous polymer extraction. However, the acronym MPPE stands for many other terms and phrases, one of which is highly recognized and the others, like macro-porous polymer extraction, are obscure and infrequently used among people in general. All of this goes to the issue of whether ordinary consumers readily understand that MPPE stands for macro-porous polymer extraction. Attached as Exhibit 1 is a document taken from “Abbreviations.com”. In a search at Abbreviations.com for the acronym MPPE, the search turned up 10 different meanings and the search generally indicates a degree of popularity for each of the meaning. As can be seen from Exhibit 1, by far the most popular meaning of MPPE is “Microsoft Point-to-Point Encryption”. This is a well-known encryption technology that Microsoft promotes. “Microsoft Point-to-Point Encryption” is by far the most recognized meaning of MPPE. Exhibit 1 lists nine other meanings for MPPE. These include: (1) “Microsoft Pointto Point Encryption”, (2) “Mean Percentage of Parenchymal Enhancement”; (3) “Myanma Petroleum Products Enterprise”, (4) “My Personal Pic Editor”, (5) “Mercury Plasma Particle Experiment”, (6) “Multifocal Posterior Pigment Epitheliopathy”, (7) “Materials Processing and Product Engineering”, (8) “Macro Porous Polymer Extraction”, and (9) “Maximizing Participation Project Extension”. As Exhibit 1 indicates, the popularity of “Microsoft Point-to-Point Encryption” is greater than any of the other nine meanings set forth. Indeed the popularity of the remaining nine meanings pale in comparison to “Microsoft Point-to-Point Encryption”. It may be difficult to conclude with certainty what “by popularity” means in the Abbreviations.com analysis of MPPE. However, it seems appropriate to equate popularity as set forth in Abbreviations.com with recognition. Hence, it is believed that the popularity scale indicates that by far the general public recognizes MPPE to refer to “Microsoft Point-to-Point Encryption” far greater than any other possible meaning. It is noted that the analysis applied by Abbreviations.com is in general agreement with the evidence presented by the Trademark Office. Note that in the evidence submitted by the Trademark Office, that MPPE was most widely known as an acronym referring to “Microsoft Point-to-Point Encryption”. Again, this is understandable, especially in view of the strength and power of the Microsoft name and the ubiquitous use of Microsoft products by a large segment of consumers in the United States and throughout the world for that matter. This evidence suggests that an ordinary purchaser of wastewater treatment equipment would not readily appreciate that MPPE stands for macro-porous polymer extraction. There are just too many other possibilities and that, coupled with the fact of the prominence of the “Microsoft Point-to-Point Encryption” technology makes it unlikely that ordinary consumers would connect MPPE with macro-porous polymer extraction. Even if ordinary consumers connected MPPE with macro-porous polymer extraction, that alone does not describe a characteristic of Applicant’s wastewater treatment systems. To discern the characteristic, the ordinary consumer would have to appreciate more than simply the name “macro-porous polymer extraction”. The consumer would have to understand that macro-porous polymer extraction technology, which can be used in many different fields in many different ways, could be used in a wastewater treatment system to extract hydrocarbons. Extracting hydrocarbons is not readily apparent from the phrase macro-porous polymer extraction. And further, it is urged that when an ordinary consumer sees MPPE associated with a wastewater treatment system or process that consumer does not immediately and forthwith arrive at a conclusion that one characteristic of the wastewater treatment system is that it removes hydrocarbons through a marco-porous polymer extraction technology. In reality, macro-porous polymer technology is a rather sophisticated and complicated technology that is far from the common knowledge of ordinary consumers involved in procuring wastewater treatment equipment. Hence, a large and appreciable number of ordinary consumers involved in selecting and purchasing wastewater treatment equipment would not have heard of the term macro-porous polymer extraction. The Federal Circuit has adopted the standard for merely descriptiveness as set forth in Abcor. See Bose Corp. v. Int’l Jensen, Inc., 22 USPQ2d 1704, 1706 (Fed. Cir. 1992). The TTAB has, of course, long followed Abcor. In the process, the TTAB has further expounded upon the merely descriptive issue and has announced additional tests for distinguishing between suggestive and merely descriptive marks. If one must exercise mature thought or follow a multi-stage reasoning process to determine attributes of the goods or services, then the mark is suggestive - not descriptive. See In re Tennis in the Round, Inc., 199 USQP 496 (TTAB 1978). The TTAB, in In re Tennis in the Round, noted that if the mental leap between the mark and attributes of the goods or services is not almost instanteous, this strongly indicates suggestiveness, not direct descriptiveness. See also McCarthy on Trademarks § 11:67 (Sept. 1997). In this case, two factors contribute to the suggestiveness of the MPPE mark. First, the low recognition that MPPE stands for macro-porous extraction polymers supports the contention that the mark is suggestive, not descriptive. Secondly, the maco-porous extraction technology is not a common technology employed in wastewater treatment units and there is no evidence that ordinary consumers of wastewater treatment equipment would understand and appreciate the significance of macro-porous polymer extraction technology. Further, the TTAB has endorsed other other tests to distinguish between suggestive and merely descriptive marks. For example, the TTAB has endorsed the “competitors use test” and the “competitors need test” that has long been advanced by Professor McCarthy. See No Nonsense Fashion, Inc. v. Consol. Foods Corp., 226 USPQ 502, 507, n. 13 & 14 (TTAB 1985). Clearly in this case there is no need for competitors to use the acronym MPPE. Finally, submitted herewith is additional evidence that the mark MPPE is not descriptive. Attached is Declaration from Genevieve Boissonnade, the IP Manager of the Applicant. Ms. Boissonnade states in her Declaration that to the best of Applicant’s knowledge that no competitors use the acronym MPPE to identify competing or closely related goods, which is in this case wastewater treatment systems. In addition, Ms. Boissonnade states that the term MPPE is not commonly used in the wastewater field to identify or refer to wastewater treatment units or any processes carried out in wastewater treatment units. Furthermore, Ms. Boissonnade states that the acronym MPPE would not immediately and forthwith describe the quality or characteristics of Applicant’s wastewater treatment systems. The rationale here, as discussed above, is that even if MPPE was readily understood by the relevant purchasers as standing for macro-porous polymer extraction, that an ordinary consumer still would not immediately and forthwith connect MPPE to a characteristic of a wastewater treatment unit because the term macro-porous polymer extraction refers to a very sophisticated and highly technical technology that is not routinely employed in wastewater treatment systems. At present, none of the facts set forth in Ms. Boissonnade’s Declaration is contradicted or drawn into question. It is respectfully urged that her testimony should be accepted as factual. Applicant urges that there is no doubt that the mark MPPE as used in conjunction with Applicant’s wastewater treatment systems is not descriptive. However, if there were doubt, any doubt must be resolved in favor of the Applicant. In re Grand Metro. Food Service, 30 USPQ2d 1974, 1976 (TTAB 1994). The burden of proving descriptiveness is on the United States Patent and Trademark Office. Respectfully, the evidence that has been produced by the Patent Office does not prove that the mark MPPE as used in conjunction with wastewater treatment systems is descriptive. For the foregoing reasons, the Trademark Office is respectfully urged to withdraw the descriptiveness refusal and to allow the present application to pass to publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_66195200201-154332272_._MPPE_Exhibit_1.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT11\IMAGEOUT11\791\008\79100879\xml7\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_66195200201-154332272_._Declaration_of_Genevieve_Boissonnade.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT11\IMAGEOUT11\791\008\79100879\xml7\ROA0003.JPG |
| DESCRIPTION OF EVIDENCE FILE | Exhibit 1 and a Declaration of Genevieve Boissonnade |
| NEW ATTORNEY SECTION | |
| NAME | Larry L. Coats |
| FIRM NAME | Coats & Bennett, P.L.L.C. |
| INDIVIDUAL ATTORNEY DOCKET/REFERENCE NUMBER |
4195-095 |
| INTERNAL ADDRESS | Suite 300 |
| STREET | 1400 Crescent Green |
| CITY | Cary |
| STATE | North Carolina |
| ZIP/POSTAL CODE | 27518 |
| COUNTRY | United States |
| PHONE | 919-854-1844 |
| FAX | 919-854-2084 |
| jsleeper@coatsandbennett.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | CABINET VIDON; MARQUES & JURIDIQUE PI TECHNOPÔLE ATALANTE - 16B RUE DE JOUANET - BP 90333 F-35703 RENNES CEDEX 7 FR |
| NEW CORRESPONDENCE SECTION | |
| NAME | Larry L. Coats |
| FIRM NAME | Coats & Bennett, P.L.L.C. |
| DOCKET/REFERENCE NUMBER | 4195-095 |
| INTERNAL ADDRESS | Suite 300 |
| STREET | 1400 Crescent Green |
| CITY | Cary |
| STATE | North Carolina |
| ZIP/POSTAL CODE | 27518 |
| COUNTRY | United States |
| PHONE | 919-854-1844 |
| FAX | 919-854-2084 |
| jsleeper@coatsandbennett.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /LLC/ |
| SIGNATORY'S NAME | Larry L. Coats |
| SIGNATORY'S POSITION | Attorney of record: 25,620 |
| SIGNATORY'S PHONE NUMBER | 919-854-1844 |
| DATE SIGNED | 02/21/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 21 16:04:06 EST 2012 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20120221160406482920-7910 0879-490d6a71e0d32470fa0e 327f6288786b0-N/A-N/A-201 20221154332272539 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Applicant Veolia Water Solutions & Technologies Support seeks to register the mark MPPE for fixed and mobile water and wastewater treatment units, namely water purification units and water treatment units for removing hydrocarbons contained in wastewater using a macro-porous polymer. The Trademark Office has refused registration maintaining that the mark merely describes a characteristic of Applicant’s goods. For the reasons set forth below, the Trademark Office is respectfully requested to reconsider the present application.
The Examiner is correct in that MPPE is an acronym that stands for “macro-porous polymer extraction”. Further, the Examiner notes that an acronym of a merely descriptive term is also merely descriptive if it is readily understood by the relevant purchasers to be “substantially synonymous” with the merely descriptive wording for which it represents. In this case it is respectfully urged that MPPE is not readily understood by the relevant purchasers as being synonymous with macro-porous polymer extraction. If the acronym MPPE is not readily understood as being synonymous with macro-porous polymer extraction, then the proposed is not descriptive. Somewhat related to whether the acronym is readily understood as standing for a particular meaning is the concept that for a mark to be descriptive it must immediately and forthwith convey the nature or characteristics of the underlying goods. That is if it requires relevant purchasers to stop and think and go through mental steps to arrive at the connection, then the mark is suggestive - not descriptive. In re Abcor Dev. Corp., 200 USPQ 215 (CCPA 1978). Not only must the quality, characteristic, or feature be immediately conveyed, but it must be conveyed with a “degree of particularity”. In re TMS Corp. of America, 200 USPQ 57, 59 (TTAB 1978). In this case it is respectfully urged that relevant purchasers do not readily appreciate that MPPE stands for macro-porous polymer extraction. It is urged that ordinary consumers of wastewater treatment systems will not immediately and forthwith view the acronym MPPE as describing a characteristic of Applicant’s wastewater treatment systems.
As noted above, the Examiner is correct in finding that in one case at least MPPE stands for macro-porous polymer extraction. However, the acronym MPPE stands for many other terms and phrases, one of which is highly recognized and the others, like macro-porous polymer extraction, are obscure and infrequently used among people in general. All of this goes to the issue of whether ordinary consumers readily understand that MPPE stands for macro-porous polymer extraction.
Attached as Exhibit 1 is a document taken from “Abbreviations.com”. In a search at Abbreviations.com for the acronym MPPE, the search turned up 10 different meanings and the search generally indicates a degree of popularity for each of the meaning. As can be seen from Exhibit 1, by far the most popular meaning of MPPE is “Microsoft Point-to-Point Encryption”. This is a well-known encryption technology that Microsoft promotes. “Microsoft Point-to-Point Encryption” is by far the most recognized meaning of MPPE. Exhibit 1 lists nine other meanings for MPPE. These include: (1) “Microsoft Pointto Point Encryption”, (2) “Mean Percentage of Parenchymal Enhancement”; (3) “Myanma Petroleum Products Enterprise”, (4) “My Personal Pic Editor”, (5) “Mercury Plasma Particle Experiment”, (6) “Multifocal Posterior Pigment Epitheliopathy”, (7) “Materials Processing and Product Engineering”, (8) “Macro Porous Polymer Extraction”, and (9) “Maximizing Participation Project Extension”. As Exhibit 1 indicates, the popularity of “Microsoft Point-to-Point Encryption” is greater than any of the other nine meanings set forth. Indeed the popularity of the remaining nine meanings pale in comparison to “Microsoft Point-to-Point Encryption”. It may be difficult to conclude with certainty what “by popularity” means in the Abbreviations.com analysis of MPPE. However, it seems appropriate to equate popularity as set forth in Abbreviations.com with recognition. Hence, it is believed that the popularity scale indicates that by far the general public recognizes MPPE to refer to “Microsoft Point-to-Point Encryption” far greater than any other possible meaning.
It is noted that the analysis applied by Abbreviations.com is in general agreement with the evidence presented by the Trademark Office. Note that in the evidence submitted by the Trademark Office, that MPPE was most widely known as an acronym referring to “Microsoft Point-to-Point Encryption”. Again, this is understandable, especially in view of the strength and power of the Microsoft name and the ubiquitous use of Microsoft products by a large segment of consumers in the United States and throughout the world for that matter.
This evidence suggests that an ordinary purchaser of wastewater treatment equipment would not readily appreciate that MPPE stands for macro-porous polymer extraction. There are just too many other possibilities and that, coupled with the fact of the prominence of the “Microsoft Point-to-Point Encryption” technology makes it unlikely that ordinary consumers would connect MPPE with macro-porous polymer extraction.
Even if ordinary consumers connected MPPE with macro-porous polymer extraction, that alone does not describe a characteristic of Applicant’s wastewater treatment systems. To discern the characteristic, the ordinary consumer would have to appreciate more than simply the name “macro-porous polymer extraction”. The consumer would have to understand that macro-porous polymer extraction technology, which can be used in many different fields in many different ways, could be used in a wastewater treatment system to extract hydrocarbons. Extracting hydrocarbons is not readily apparent from the phrase macro-porous polymer extraction. And further, it is urged that when an ordinary consumer sees MPPE associated with a wastewater treatment system or process that consumer does not immediately and forthwith arrive at a conclusion that one characteristic of the wastewater treatment system is that it removes hydrocarbons through a marco-porous polymer extraction technology. In reality, macro-porous polymer technology is a rather sophisticated and complicated technology that is far from the common knowledge of ordinary consumers involved in procuring wastewater treatment equipment. Hence, a large and appreciable number of ordinary consumers involved in selecting and purchasing wastewater treatment equipment would not have heard of the term macro-porous polymer extraction.
The Federal Circuit has adopted the standard for merely descriptiveness as set forth in Abcor. See Bose Corp. v. Int’l Jensen, Inc., 22 USPQ2d 1704, 1706 (Fed. Cir. 1992). The TTAB has, of course, long followed Abcor. In the process, the TTAB has further expounded upon the merely descriptive issue and has announced additional tests for distinguishing between suggestive and merely descriptive marks. If one must exercise mature thought or follow a multi-stage reasoning process to determine attributes of the goods or services, then the mark is suggestive - not descriptive. See In re Tennis in the Round, Inc., 199 USQP 496 (TTAB 1978). The TTAB, in In re Tennis in the Round, noted that if the mental leap between the mark and attributes of the goods or services is not almost instanteous, this strongly indicates suggestiveness, not direct descriptiveness. See also McCarthy on Trademarks § 11:67 (Sept. 1997).
In this case, two factors contribute to the suggestiveness of the MPPE mark. First, the low recognition that MPPE stands for macro-porous extraction polymers supports the contention that the mark is suggestive, not descriptive. Secondly, the maco-porous extraction technology is not a common technology employed in wastewater treatment units and there is no evidence that ordinary consumers of wastewater treatment equipment would understand and appreciate the significance of macro-porous polymer extraction technology.
Further, the TTAB has endorsed other other tests to distinguish between suggestive and merely descriptive marks. For example, the TTAB has endorsed the “competitors use test” and the “competitors need test” that has long been advanced by Professor McCarthy. See No Nonsense Fashion, Inc. v. Consol. Foods Corp., 226 USPQ 502, 507, n. 13 & 14 (TTAB 1985). Clearly in this case there is no need for competitors to use the acronym MPPE.
Finally, submitted herewith is additional evidence that the mark MPPE is not descriptive. Attached is Declaration from Genevieve Boissonnade, the IP Manager of the Applicant. Ms. Boissonnade states in her Declaration that to the best of Applicant’s knowledge that no competitors use the acronym MPPE to identify competing or closely related goods, which is in this case wastewater treatment systems. In addition, Ms. Boissonnade states that the term MPPE is not commonly used in the wastewater field to identify or refer to wastewater treatment units or any processes carried out in wastewater treatment units. Furthermore, Ms. Boissonnade states that the acronym MPPE would not immediately and forthwith describe the quality or characteristics of Applicant’s wastewater treatment systems. The rationale here, as discussed above, is that even if MPPE was readily understood by the relevant purchasers as standing for macro-porous polymer extraction, that an ordinary consumer still would not immediately and forthwith connect MPPE to a characteristic of a wastewater treatment unit because the term macro-porous polymer extraction refers to a very sophisticated and highly technical technology that is not routinely employed in wastewater treatment systems.
At present, none of the facts set forth in Ms. Boissonnade’s Declaration is contradicted or drawn into question. It is respectfully urged that her testimony should be accepted as factual.
Applicant urges that there is no doubt that the mark MPPE as used in conjunction with Applicant’s wastewater treatment systems is not descriptive. However, if there were doubt, any doubt must be resolved in favor of the Applicant. In re Grand Metro. Food Service, 30 USPQ2d 1974, 1976 (TTAB 1994).
The burden of proving descriptiveness is on the United States Patent and Trademark Office. Respectfully, the evidence that has been produced by the Patent Office does not prove that the mark MPPE as used in conjunction with wastewater treatment systems is descriptive.
For the foregoing reasons, the Trademark Office is respectfully urged to withdraw the descriptiveness refusal and to allow the present application to pass to publication.
