Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79147497 MEITUPIC (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/79147497/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant, Xiamen Meitu Technology Co., Ltd. ("Applicant"), responds as follows with respect to the Office Action that was issued by the Examining Attorney on January 20, 2015 for application Serial No. 79147497 for the mark MEITUPIC ("Applicant's Mark") in IC 009: APPLICANT'S MARK IS NOT MERELY DESCRIPTIVE: In the instant Office Action, the Examining Attorney partially refused the Applicant's Mark under Trademark Act Section 2(e)(1) on the grounds that it merely describes a feature/ characteristic of some of the Applicant"s goods, namely, "cameras" and "downloadable computer programs for use in video and picture processing." The Examiner's finding was based in large part on the translation of "meitu" provided by the Applicant. MEITU in MEITUPIC was translated as "beautiful and vivid pictures." The Examining Attorney conveniently divided Applicant's Mark into two parts, MEITU and PIC, and then applying the doctrine of foreign equivalents to MEITU using the translation "beautiful and vivid pictures," the Examiner found that Applicant's Mark merely describes a feature of Applicant's goods at least with respect to Applicant's cameras and software for video and photo processing. Applicant respectfully submits that viewing the mark MEITUPIC as a whole, as it should be, rather than in its composite parts, inexorably leads to the conclusion that it is suggestive of the goods at issue and not merely descriptive. This is especially true since the Trademark Office has recently registered Applicant's separate mark MEITU in IC 009 for cameras, camcorders, and video telephones. (See Registration No. 4746041). If MEITUPIC were merely descriptive, then Trademark Office would not have registered MEITU in IC 009 for the same and similar goods. The addition of PIC to MEITU does not significantly alter the mark in this regard. The Applicant's Mark should therefore be allowed to proceed to registration upon the Principal Register. A mark is merely descriptive if it describes the ingredient, quality, characteristic, function, feature, purpose, or use of the goods and/or services. TMEP Section 1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). In addition, in order for a mark to be non-registrable because of descriptiveness, it must not only be descriptive, it must be "merely" descriptive of the goods or services to which it relates. See TMEP Section 1209.01(b). Stated differently, to be non-registrable, the mark must do nothing other than immediately convey an understanding of the goods for which registration is sought. See In re Quik-Print Copy Shops, 205 U.S.P.Q. 505, n.7 (C.C.P.A. 1980) ("merely" descriptive means "only" descriptive); In re Colonial Stores, Inc., 157 U.S.P.Q. 382, 385 (C.C.P.A. 1968) (finding the mark nondescriptive because it "does not tell the potential purchaser only what the goods are, their function, their characteristics or their use, or . . . their ingredients"). Whether a mark is suggestive or merely descriptive must be determined, not in the abstract, but, rather, in relation to the goods or services for which registration is sought. This analysis must include consideration of the context in which the mark is used, or intended to be used, in connection with those goods or services, as well as the possible significance which the mark would have, because of that context, to the average purchaser of the goods in the market place. See TMEP Section 1209.01(b); In re Omaha Nat'l Corp., 819 F.2d 1117, 2 U.S.P.Q.2d 1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 U.S.P.Q. 215 (C.C.P.A. 1978); In re Venture Lending Assocs., 226 U.S.P.Q. 285 (T.T.A.B. 1985); In re Realistic Co., 440 F.2d 1393 (C.C.P.A. 1971) (finding CURV not merely descriptive of permanent wave curling solution); In re Waldorf Paper Prods. Co., 155 U.S.P.Q. 174 (T.T.A.B 1967) (finding STRIP-FLAP for an opening device for paper board containers not merely descriptive even through the opening device containing strips and flaps); Ex parte Great West Lubricants, Inc., 118 U.S.P.Q. 169 (Comm'r Pat. 1958) (finding TUBE-O-LUBE used on a cartridge of lubricating grease not descriptive but suggestive). As set forth below, put in the proper context, Applicant's Mark is suggestive because it does not immediately convey an understanding of the goods for which registration is sought. If a mark is incongruous and susceptible to multiple connotations or requires imagination, or the gathering of information in order for the public to perceive the significance of the term as it relates to a significant aspect of applicant's product or services, then the mark is considered suggestive rather than merely descriptive. In re Atavio Inc., 25 U.S.P.Q.2d 1361, 1362 (T.T.A.B. 1992). The following marks have been held to be suggestive and not descriptive: CHEW 'N CLEAN for dentifrice (In re Colgate-Palmolive Co., 406 F.2d 1385 (C.C.P.A. 1969)); HANDI WIPES for dusting cloths (In re Colgate-Palmolive Co., 149 U.S.P.Q. 793 (T.T.A.B. 1966)); HEARTWISE for low-fat, low-cholesterol foods (Worthington Foods, Inc. v. Kellogg Co., 732 F.Supp. 1417 (S.D. Ohio 1990)) (mark found to be suggestive because it requires imagination and multi-stage reasoning process to reach conclusion that such food is ?wise for the heart?); MOVIEBUFF for a database of movie information (Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999)) (designation does not "describe either the software product or its purpose" and "requires a mental leap from the mark to the product"); RAPI-SHAVE for shaving cream (Colgate-Palmolive Co. v. House For Men, Inc., 143 U.S.P.Q. 159 (T.T.A.B. 1964)); SEASON-ALL for aluminum storm windows (Aluminum Fabricating Co. v. Season-All Window Corp., 259 F.2d 314 (2d Cir. 1958)); and SPRAY 'N VAC for aerosol rug cleaner (Glamorene Products Corp. v. Boyle-Midway, Inc., 188 U.S.P.Q. 145 (S.D.N.Y. 1975)). Here, Applicant's Mark is, at most, suggestive of something to improve picture or video quality. Applicant's Mark requires the consuming public to use imagination, thought or perception to reach a conclusion as to the nature of Applicant's goods. Indeed, Applicant's Mark is comprised of a combination of terms - two in Chinese (MEI + TU) and one in English (PIC) - that creates a unitary mark with a unique non-descriptive meaning. It is well-established that the validity of a trademark must be determined by viewing the mark as a whole and not in its composite parts. California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir. 1985) (the composite mark CALIFORNIA COOLER could not be separated into its composite parts). "Words which could not individually become a trademark may become one when taken together." Id. (quoting Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 379 (7th Cir. 1976) (the Circuit Court disagreed with the District Court that EVEREADY for batteries was merely descriptive and instead found it to be suggestive). Marks should not be cut into pieces before being analyzed. See e.g., Application of Colonial Stores, Inc., 157 U.S.P.Q. 382 (1968) (SUGAR & SPICE held not merely descriptive of bakery goods); Application of Reynolds Metals Co., 480 F.2d 902 (C.C.P.A. 1973) (BROWN-IN-BAG for transparent plastic film bags used for browning meats was not merely descriptive of the purpose of function of the goods, but was suggestive of at least one purpose for the goods); In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of snow removal hand tool). Cf. In re DSS Environmental, Inc., 113 Fed.Appx. 902, (Fed Cir. 2004) (the mark DUALSAND was found to be merely descriptive for filtration systems because "dual sand" was a term-of-art in the waste water and water treatment industry). Neither Meitu nor MEITUPIC is a term-of-art. Applicant's Mark should not be dissected, and the combination of the three parts MEI+TU+ PIC does not immediately convey the exact nature of Applicant's goods. When considered together, the term MEITUPIC has no readily ascertainable meaning. Rather MEITUPIC evokes a favorable suggestion of what the goods at issue are to be used for - enhancing picture and video quality. Indeed, "meitu" is not even a word in the Chinese language. (See Declaration of Rose Jin executed on July 18, 2015, submitted herewith). MEITU is the result of the Applicant combining two Chinese characters, MEI (beautiful) and TU (picture). (Id.). Those characters are not otherwise used together by Chinese speakers. (Id.). Clearly, the word "meitupic" has no meaning in the Chinese language. (Id.). The literal English translation of Applicant's Mark is "beautiful picture pic," which standing alone is meaningless, and is not immediately associated with any goods or services. One must not just speak both Chinese and English in order to be able to dissect the mark as the Examiner has done. It should be noted that according to the United States Census Bureau, less than fifty percent (50%) of Chinese speakers in the United States in 2011 spoke English "very well" compared to more than eighty percent (80%) for native French or German speakers. (See http://www.census.gov/prod/2013pubs/acs-22.pdf, last vised July 17, 2015). For the mark to be merely descriptive, the consumer must also be able to immediately transliterate the Anglicize wording MEITU back into those two Chinese characters intended by the Applicant - which together are not even a Chinese word - as oppose to other Chinese characters with the same Anglicized spelling and then instantaneously associate them with a camera or video software. This would not happen right away. To reach the right conclusion about the nature of Applicant's goods from Applicant's Mark requires the kind of multi-step analysis, imagination or perception by the consumer that is indicative of a suggestive mark. In other words, the unusual association of the two Chinese characters MEI and TU with the English abbreviation PIC does not create a mark that immediately conveys an understanding of the goods for which the registration is sought. Accordingly, Applicant's Mark is registrable. It is must be emphasized that the Trademark Office has recently registered Applicant's separate mark MEITU in IC 009 for cameras, camcorders, and video telephones. (See Registration No. 4746041). Fusing the English abbreviation PIC with the Chinese characters MEI and TU for the unitary mark MEITUPIC creates a mere a distinction without a difference between MEITU and MEITUPIC. If MEITU was registrable in IC 009 for cameras and video devices, so should MEITUPIC. Taken as a whole, Applicant's Mark is not merely descriptive of Applicant's goods at issue here, namely, "cameras" and "downloadable computer programs for use in video and picture processing." It is, at most, suggestive of the goods and requires the consuming public to use thought, imagination, perception, and adept skills in two languages to reach a conclusion as to the nature of the goods. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the descriptiveness refusal and allow the Mark to proceed to publication.

EVIDENCE
Evidence in the nature of Declaration of Rose Jin of the Beijing Gaowo IP Firm has been attached.
Original PDF file:
evi_1672067183-20150720181340007510_._GAOWO_declration_for_MEITUPIC_OA.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Thomas A. Telesca of Ruskin Moscou Faltischeck, P.C, having an address of
East Tower, 15th Floor 1425 RXR Plaza Uniondale, New York 11556
United States
ttelesca@rmfpc.com
5166636670
The attorney docket/reference number is GAOWO7 .


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
Xiamen Shicheng
Intellectual Property Agency Co., Ltd
Unit 1317, Building D2,
Wanda Plaza, No. 7,
Fujian Province
CN

Proposed:
Thomas A. Telesca of Ruskin Moscou Faltischeck, P.C, having an address of
East Tower, 15th Floor 1425 RXR Plaza Uniondale, New York 11556
United States
ttelesca@rmfpc.com;tommytesq@gmail.com
5166636670
The docket/reference number is GAOWO7 .



SIGNATURE(S)
Response Signature
Signature: /Thomas A. Telesca/     Date: 07/20/2015
Signatory's Name: Thomas A. Telesca
Signatory's Position: Attorney of record, New York and New Jersey bar member

Signatory's Phone Number: 516.663.6670

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Thomas A. Telesca
   Ruskin Moscou Faltischeck, P.C
   East Tower, 15th Floor
   1425 RXR Plaza
   Uniondale, New York 11556
        
Serial Number: 79147497
Internet Transmission Date: Mon Jul 20 18:50:08 EDT 2015
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X3-2015072018500829
0244-79147497-540d7ac1957eb76b5446c71f44
eb18476b5ef796eb85c31558eef39faa9275f518
2-N/A-N/A-20150720181340007510