| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
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|---|---|---|---|---|---|---|---|---|---|
| SERIAL NUMBER | 85083013 | ||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 103 | ||||||||
| MARK SECTION (no change) | |||||||||
| ARGUMENT(S) | |||||||||
|
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
RESPONSE TO THE OFFICE ACTION The Trademark Office has requested a disclaimer of “DSS” in the applied for mark. The basis of this request is that “DSS” is an abbreviation for “digital satellite system” and thus is merely description of Applicant’s services as they relate to installation of television systems which use digital signals from satellites.
Applicant respectfully, requests that the applied for mark be registered as it is merely suggestive of the services provided. In the alternative, the mark has acquired distinctiveness by its extensive use in commerce. Suggestive Mark
A mark is merely descriptive if it describes a quality, characteristic, function, feature, purpose or use of the specified good or services. In re Gyulay, 820 F.2d1216, (Fed. Cir. 1987). The policy purpose of avoiding this type of registration is to allow companies to describe the services and goods provided.
Here, the applied for service relates to the installation and maintenance of television reception equipment used in connection with residential and business television services. The applied for mark uses the letters “DSS.”
A suggestive mark, differs from a descriptive mark in that, it does not immediately tell you something about the services. In re Shutts, 217 USPQ 363 (TTAB 1983) (Emphasis added). Use of the mark “DSS” is merely suggestive since it does not immediately describe anything about the services of Applicant.
There is no generally accepted meaning for “DSS.” Initials cannot be considered descriptive “unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith.” Modern Optics v. The Univis Lens Company 234 F.2d 504, 506 (C.C.P.A. 1956).
Upon review of the resource, AcronymFinder.com, there are 130 different potential meanings for “DSS.” (See attached Exhibit A). Further, that same resource has 250 potential definitions for “DSS.” (See attached Exhibit B). Both lists contain a multitude of terms which could suggest the types of services provided, without expressly stating the purpose, function, feature, characteristic, or use.
Without a generally accepted definition, there is no description of Applicant’s services. The suggestive use of letters would require added imagination to make a connection.
The policy purpose of preventing registration of descriptive words is to allow companies to describe their services to the public without infringement. But if there is not a necessary or obvious descriptor, the mark can be registered. Id.
Building upon the prior Section, “DSS” does not have a generally accepted definition and does not have a corresponding relationship to one set of words. Since there is no single meaning for “DSS,” it is neither necessary nor an obvious descriptor of Applicant’s services. Any of the potential words could still be used by similar companies to describe their services.
Without a generally accepted use or the need of others to use the mark as a descriptor, “DSS” is merely suggestive of the services provided and can be registered in full.
Acquired Distinctiveness
Alternatively, even if there was a generally accepted understanding for what “DSS” stood for, the mark has acquired distinctiveness through its use in commerce.
The mark, “DSS” has become distinctive of the Applicant’s services through substantially exclusive and continuous use in commerce. This use was for more five years immediately before the date of the application. In fact, the letters “DSS” have been associated with Applicant’s services since 1995. (See attached Evidence).
Use of the applied for mark for more than five years immediately before the date of application is prima facie evidence that the mark has acquired distinctiveness. Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f), 37 C.F.R. 2.41(b), In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed.Cir.1985) (quoting In re Hehr Manufacturing Co., 279 F.2d 526, 528, 126 USPQ 381, 382-83, 47 CCPA 1116 (1960)). Further, the period of use is a relevant factor to consider whether a mark has acquired distinctiveness. In re Uncle Sam Chemical Co., Inc., 229 USPQ 233 (TTAB 1986).
DSS has advertised throughout the United States including print marketing, digital marketing, radio marketing, and video marketing. Use of “DSS” has resulted in Purchasers of Applicant’s services associating “DSS” with our Applicant. (See attached Affidavit of Use).
Applicant’s use has been in commerce which is lawfully regulated by Congress. This use includes serving customers throughout the United States. (See attached Evidence).
The portion of the mark which uses the letters “DSS” has acquired distinctiveness for the Applicant’s services. Accordingly, Applicant's mark can be registered without disclaimer. _s/Elliott Stapleton/______________ Elliott Stapleton Cornetet, Meyer, Rush & Kirzner 123 Boggs Lane Cincinnati, Ohio 45246 Phone: 513-771-2444 Fax: 513-771-2447 Email: estapleton@cmrklaw.com Counsel of Record for DSS |
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| EVIDENCE SECTION | |||||||||
| EVIDENCE FILE NAME(S) | |||||||||
| ORIGINAL PDF FILE | evi_706114514-090602687_._DSS.History_of_Online_Use.pdf | ||||||||
| CONVERTED PDF FILE(S) (8 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0002.JPG | ||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0003.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0004.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0005.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0006.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0007.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0008.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0009.JPG | |||||||||
| ORIGINAL PDF FILE | evi_706114514-090602687_._Exhibit_A.pdf | ||||||||
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0010.JPG | ||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0011.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0012.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0013.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0014.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0015.JPG | |||||||||
| ORIGINAL PDF FILE | evi_706114514-090602687_._Exhibit_B.pdf | ||||||||
| CONVERTED PDF FILE(S) (8 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0016.JPG | ||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0017.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0018.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0019.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0020.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0021.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0022.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0023.JPG | |||||||||
| ORIGINAL PDF FILE | evi_706114514-090602687_._BBB_Registration.pdf | ||||||||
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0024.JPG | ||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0025.JPG | |||||||||
| ORIGINAL PDF FILE | evi_706114514-090602687_._Radio_Advertisements.pdf | ||||||||
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0026.JPG | ||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0027.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0028.JPG | |||||||||
| \\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0029.JPG | |||||||||
| ORIGINAL PDF FILE | evi_706114514-090602687_._4.21.2011.Affidavit_of_Use.pdf | ||||||||
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT11\IMAGEOUT11\850\830\85083013\xml5\ROA0030.JPG | ||||||||
| DESCRIPTION OF EVIDENCE FILE | History of Online use for the mark, Proof of Radio Advertisements, Better Business Bureau Registrations, Exhibit A (List of Uses for DSS), Exhibit B (List of Definitions for DSS), and Affidavit of Use. | ||||||||
| GOODS AND/OR SERVICES SECTION (current) | |||||||||
| INTERNATIONAL CLASS | 037 | ||||||||
| DESCRIPTION | |||||||||
| Installation and maintenance of residential and business television services | |||||||||
| FILING BASIS | Section 1(a) | ||||||||
| FIRST USE ANYWHERE DATE | At least as early as 12/31/1995 | ||||||||
| FIRST USE IN COMMERCE DATE | At least as early as 12/31/1995 | ||||||||
| GOODS AND/OR SERVICES SECTION (proposed) | |||||||||
| INTERNATIONAL CLASS | 037 | ||||||||
| TRACKED TEXT DESCRIPTION | |||||||||
| FINAL DESCRIPTION | |||||||||
| Installation and maintenance of television reception equipment used in connection with residential and business television services | |||||||||
| FILING BASIS | Section 1(a) | ||||||||
| FIRST USE ANYWHERE DATE | At least as early as 12/31/1995 | ||||||||
| FIRST USE IN COMMERCE DATE | At least as early as 12/31/1995 | ||||||||
| STATEMENT TYPE | "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. | ||||||||
| SPECIMEN FILE NAME(S) |
\\TICRS\EXPORT11\IMAGEOUT 11\850\830\85083013\xml5\ ROA0031.JPG | ||||||||
| SPECIMEN DESCRIPTION | a business card. | ||||||||
| ADDITIONAL STATEMENTS SECTION | |||||||||
| SECTION 2(f) | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. | ||||||||
| COLOR(S) CLAIMED (If applicable) |
The color(s) blue, white and light blue is/are claimed as a feature of the mark. | ||||||||
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the letters DSS in white outlined in blue overlaying a light blue arc. The remainder of the white in the mark is background area which is not a part of the mark. | ||||||||
| SIGNATURE SECTION | |||||||||
| DECLARATION SIGNATURE | /Elliott Stapleton/ | ||||||||
| SIGNATORY'S NAME | Elliott Stapleton | ||||||||
| SIGNATORY'S POSITION | Attorney of record, Ohio 0082857 | ||||||||
| DATE SIGNED | 04/26/2011 | ||||||||
| RESPONSE SIGNATURE | /Elliott Stapleton/ | ||||||||
| SIGNATORY'S NAME | Elliott Stapleton | ||||||||
| SIGNATORY'S POSITION | Attorney of record, Ohio 0082857 | ||||||||
| DATE SIGNED | 04/26/2011 | ||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||
| FILING INFORMATION SECTION | |||||||||
| SUBMIT DATE | Tue Apr 26 09:32:13 EDT 2011 | ||||||||
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 110426093213569010-850830 13-480785a0612d886d7f4f78 9cc6d0b698c9-N/A-N/A-2011 0426090602687643 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
|
APPLICATION SERIAL NO. 85083013 MARK: DSS |
*85083013* |
|
CORRESPONDENT ADDRESS: ELLIOTT STAPLETON LUTZ, CORNETET, MEYER & RUSH 123 BOGGS LN CINCINNATI, OH 45246-3117
|
|
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APPLICANT: DSS Installations, Ltd.
|
|
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CORRESPONDENT E-MAIL ADDRESS: estapleton@lcmrlaw.com |
|
RESPONSE TO THE OFFICE ACTION
The Trademark Office has requested a disclaimer of “DSS” in the applied for mark. The basis of this request is that “DSS” is an abbreviation for “digital satellite system” and thus is merely description of Applicant’s services as they relate to installation of television systems which use digital signals from satellites.
Applicant respectfully, requests that the applied for mark be registered as it is merely suggestive of the services provided. In the alternative, the mark has acquired distinctiveness by its extensive use in commerce.
Suggestive Mark
A mark is merely descriptive if it describes a quality, characteristic, function, feature, purpose or use of the specified good or services. In re Gyulay, 820 F.2d1216, (Fed. Cir. 1987). The policy purpose of avoiding this type of registration is to allow companies to describe the services and goods provided.
Here, the applied for service relates to the installation and maintenance of television reception equipment used in connection with residential and business television services. The applied for mark uses the letters “DSS.”
A suggestive mark, differs from a descriptive mark in that, it does not immediately tell you something about the services. In re Shutts, 217 USPQ 363 (TTAB 1983) (Emphasis added).
Use of the mark “DSS” is merely suggestive since it does not immediately describe anything about the services of Applicant.
There is no generally accepted meaning for “DSS.” Initials cannot be considered descriptive “unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith.” Modern Optics v. The Univis Lens Company 234 F.2d 504, 506 (C.C.P.A. 1956).
Upon review of the resource, AcronymFinder.com, there are 130 different potential meanings for “DSS.” (See attached Exhibit A). Further, that same resource has 250 potential definitions for “DSS.” (See attached Exhibit B). Both lists contain a multitude of terms which could suggest the types of services provided, without expressly stating the purpose, function, feature, characteristic, or use.
Without a generally accepted definition, there is no description of Applicant’s services. The suggestive use of letters would require added imagination to make a connection.
The policy purpose of preventing registration of descriptive words is to allow companies to describe their services to the public without infringement. But if there is not a necessary or obvious descriptor, the mark can be registered. Id.
Building upon the prior Section, “DSS” does not have a generally accepted definition and does not have a corresponding relationship to one set of words. Since there is no single meaning for “DSS,” it is neither necessary nor an obvious descriptor of Applicant’s services. Any of the potential words could still be used by similar companies to describe their services.
Without a generally accepted use or the need of others to use the mark as a descriptor, “DSS” is merely suggestive of the services provided and can be registered in full.
Acquired Distinctiveness
Alternatively, even if there was a generally accepted understanding for what “DSS” stood for, the mark has acquired distinctiveness through its use in commerce.
The mark, “DSS” has become distinctive of the Applicant’s services through substantially exclusive and continuous use in commerce. This use was for more five years immediately before the date of the application. In fact, the letters “DSS” have been associated with Applicant’s services since 1995. (See attached Evidence).
Use of the applied for mark for more than five years immediately before the date of application is prima facie evidence that the mark has acquired distinctiveness. Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f), 37 C.F.R. 2.41(b), In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed.Cir.1985) (quoting In re Hehr Manufacturing Co., 279 F.2d 526, 528, 126 USPQ 381, 382-83, 47 CCPA 1116 (1960)). Further, the period of use is a relevant factor to consider whether a mark has acquired distinctiveness. In re Uncle Sam Chemical Co., Inc., 229 USPQ 233 (TTAB 1986).
DSS has advertised throughout the United States including print marketing, digital marketing, radio marketing, and video marketing. Use of “DSS” has resulted in Purchasers of Applicant’s services associating “DSS” with our Applicant. (See attached Affidavit of Use).
Applicant’s use has been in commerce which is lawfully regulated by Congress. This use includes serving customers throughout the United States. (See attached Evidence).
The portion of the mark which uses the letters “DSS” has acquired distinctiveness for the Applicant’s services. Accordingly, Applicant's mark can be registered without disclaimer.
_s/Elliott Stapleton/______________
Elliott Stapleton
Cornetet, Meyer, Rush & Kirzner
123 Boggs Lane
Cincinnati, Ohio 45246
Phone: 513-771-2444
Fax: 513-771-2447
Email: estapleton@cmrklaw.com
Counsel of Record for DSS
