| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85495801 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85495801 |
| LITERAL ELEMENT | KLIK E-CIGS |
| 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) | |
|
The Applicant respectfully notes that the prior pending application that was noted in the office action dated March 23, 2012 has been abandoned. With regard to the examiner's disclaimer requirement with respect to E-CIGS on the basis that such words are merely descriptive of the Applicant's goods, namely, electronic cigarettes, the Applicant respectfully requests reconsideration and withdrawal of said requirement based on the following discussion. The Applicant respectfully submits that the term E-CIGS is suggestive, and not merely descriptive and should not have to be disclaimed. The principles that apply to merely descriptiveness refusals apply to disclaimer requirements based on descriptiveness. Since “registrability is determined solely on the basis of the goods and services specified on the registration, the descriptiveness of the designation sought for registration is determined on the basis of the goods or services listed in the application.” 2 J. McCarthy, McCarthy On Trademarks and Unfair Competition (4th Ed. 2007) §11:51. Therefore, in categorizing trademarks, the inquiry is not whether the mark is descriptive, but whether the mark is merely descriptive when used on or in connection with the goods or services of the Applicant. 15 USC §1152(e)(1). To be considered descriptive, a mark must describe the use, size, class of users, effect upon users, or desirable characteristics of the goods or services. McCarthy, §11:51. Unless a mark gives reasonably accurate knowledge of the characteristics of a product or service, the mark does not fall within the trademark law definition of descriptiveness. Blisscraft of Hollywood v. United Plastics Co., 131 USPQ 55 (2d Cir. 1961). The word “merely” in the Act apparently means that if the mark clearly does not tell the potential customer only what the ingredients are, their function, characteristics, use or ingredients, then the mark is not “merely descriptive.”
McCarthy, §11:51. The term “merely” should be taken in its ordinary meaning of “only” or “solely” – that is, when considered with the particular goods or services the term, because of its meaning does nothing but describe them. If a term only provides some indirect or vague knowledge of the goods or services, then it is suggestive. “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re George Weston Ltd., 228 USPQ 57 (T.T.A.B. 1985) (SPEEDI BAKE for frozen dough found to fall within the category of suggestive marks because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be baked into bread); In re The Noble Co., 225 USPQ 749 (T.T.A.B. 1985) (NOBURST for liquid antifreeze and rust inhibitor for hot-water-heating systems found to suggest a desired result of using the product rather than immediately informing the purchasing public of a characteristic, feature, function, or attribute); In re Pennwalt Corp., 173 USPQ 317 (T.T.A.B. 1972) (DRI-FOOT held suggestive of anti-perspirant deodorant for feet in part because, in the singular, it is not the usual or normal manner in which the purpose of an anti-perspirant and deodorant for the feet would be described).” T.M.E.P. 1209(a). . . Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.” Id. When “information about the product or services given by the term used as a mark [that] is indirect and vague . . . indicates that the term is being used in a ‘suggestive,’ not descriptive manner.” McCarthy § 11:19 (citing Blisscraft of Hollywood v. United Plastics Co., 131 USPQ 55 (2d Cir. 1961)). As such, unlike descriptive [terms] that describe and clearly convey information about the “ingredients, qualities or characteristics of the product or service,” suggestive [terms] only “indirectly suggest” these things. McCarthy § 11:67. A [term] is, therefore, suggestive if, “when the goods or services are encountered under the mark, a multistage reasoning process, or utilization of imagination, thought or perception, is required in order to determine what attributes of the goods or services that [term] indicates.” In re On Technology Corp., 41 USPQ2d 1475, 1476 (T.T.A.B. 1996). It is not prohibited for a [term] to have the capacity to draw attention to what the product or service is or to what its characteristics are. In re Colonial Stores, Inc., 394 F.2d 549, 552 (C.C.P.A. 1968). See In re Shutts, 217 USPQ 363 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool); In re Ray J. McDermott and Co., Inc., 170 USPQ 524 (T.T.A.B. 1971) (SWIVEL-TOP for fuel transfer mooring buoys held not to be merely descriptive). Similarly, the mark “BROWN-IN-BAG,” used to identify transparent plastic film bags, the primary purpose of which was to brown meats in ovens, was found not to be merely descriptive of the goods but only suggestive and registerable. In re Reynolds Metals Co., 480 F.2d 902 (CCPA 1973). The court also noted that the fact that the mark “BROWN-IN-BAG” is informational was not fatal. Id. at 904; accord In re DC Comics, Inc., 689 F.2d 1042 (CCPA 1982) (“the fact that a symbol may impart to the prospective purchaser information concerning the physical characteristics of goods with which it is used does not perforce render the symbol incapable of functioning as trademark”). Simply because wording is informational does not mean that it is merely descriptive per se. One may be informed by suggestion as well as by description. In re Reynolds Metals Company, 480 F.2d 902, 178 U.S.P.Q. 296 (C.C.P.A. 1973). That is to say, the terms “descriptive” and “suggestive” are not mutually exclusive. There is some description in any suggestion or the suggestive process does not occur. The Applicant respectfully submits that the term E-CIGS in its KLIK E-CIGS mark does not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the goods identified in the present application, consisting of electronic cigarettes, but is instead properly characterized as suggestive. The term gives indirect and vague information with respect to electronic cigarette goods and the term E-CIGS as part of the Applicant’s mark, as applied to such goods, requires imagination, thought, or perception to reach a conclusion as to the nature of the goods, just as with the marks noted in the cases cited above. Even assuming that the term is descriptive, as noted above, descriptive and suggestive are not mutually exclusive categories. Even assuming that there is some description in the term, as is the case with any suggestive term, that does not mean that the term is merely descriptive. There is some description in any suggestive term or else the suggestive process does not occur.
Additionally, since the “line between merely descriptive and only suggestive terms is ‘so nebulous,’ the Trademark Trial and Appeal Board takes the position that doubt is resolved in favor of the applicant on the assumption that competitors have the opportunity to oppose the registration once published and to present evidence that is usually not present in ex parte examination.” McCarthy § 11:51; see also In re Conductive Systems, Inc., 220 USPQ 84 (T.T.A.B. 1983) (doubts under §2(e) about the merely descriptive nature of a term are resolved in favor of the applicant, unlike the situation in resolving §2(d) likely confusion disputes); In re Shutts, 217 USPQ 363 (any doubts as to whether a term is merely descriptive are to be resolved in favor of applicants); see also In re Mobile Ray, Inc., 224 USPQ 247, 248 (T.T.A.B. 1984) (“[W]e believe this record established sufficient doubt concerning the descriptiveness of applicant’s mark that the mark should be published for opposition”). The Applicant respectfully submits that there is more than sufficient doubt with respect to the alleged mere descriptiveness of the term E-CIGS and requests that any doubt as to the suggestiveness of the term be resolved in favor of Applicant. In sum, the Applicant respectfully submits that term E-CIGS in the Applicant’s mark KLIK E-CIGS is not merely descriptive when used with electronic cigarettes, but rather is suggestive and registrable on the Principal Register without a disclaimer being required. It is respectfully requested that the Examiner withdraw the disclaimer requirement, conclude examination of the application and approve it for publication.
|
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Manuel Valcarcel/ |
| SIGNATORY'S NAME | Manuel Valcarcel |
| SIGNATORY'S POSITION | Attorney for Applicant, Florida Bar member |
| SIGNATORY'S PHONE NUMBER | 3055790812 |
| DATE SIGNED | 06/28/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jun 28 18:18:21 EDT 2012 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 120628181821783242-854958 01-49031b9226918c0deb2238 c28fc4e57e6-N/A-N/A-20120 628175500252461 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Applicant respectfully notes that the prior pending application that was noted in the office action dated March 23, 2012 has been abandoned.
With regard to the examiner's disclaimer requirement with respect to E-CIGS on the basis that such words are merely descriptive of the Applicant's goods, namely, electronic cigarettes, the Applicant respectfully requests reconsideration and withdrawal of said requirement based on the following discussion.
The Applicant respectfully submits that the term E-CIGS is suggestive, and not merely descriptive and should not have to be disclaimed. The principles that apply to merely descriptiveness refusals apply to disclaimer requirements based on descriptiveness. Since “registrability is determined solely on the basis of the goods and services specified on the registration, the descriptiveness of the designation sought for registration is determined on the basis of the goods or services listed in the application.” 2 J. McCarthy, McCarthy On Trademarks and Unfair Competition (4th Ed. 2007) §11:51. Therefore, in categorizing trademarks, the inquiry is not whether the mark is descriptive, but whether the mark is merely descriptive when used on or in connection with the goods or services of the Applicant. 15 USC §1152(e)(1). To be considered descriptive, a mark must describe the use, size, class of users, effect upon users, or desirable characteristics of the goods or services. McCarthy, §11:51. Unless a mark gives reasonably accurate knowledge of the characteristics of a product or service, the mark does not fall within the trademark law definition of descriptiveness. Blisscraft of Hollywood v. United Plastics Co., 131 USPQ 55 (2d Cir. 1961).
The word “merely” in the Act apparently means that if the mark clearly does not tell the potential customer only what the ingredients are, their function, characteristics, use or ingredients, then the mark is not “merely descriptive.”
McCarthy, §11:51. The term “merely” should be taken in its ordinary meaning of “only” or “solely” – that is, when considered with the particular goods or services the term, because of its meaning does nothing but describe them.
If a term only provides some indirect or vague knowledge of the goods or services, then it is suggestive. “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re George Weston Ltd., 228 USPQ 57 (T.T.A.B. 1985) (SPEEDI BAKE for frozen dough found to fall within the category of suggestive marks because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be baked into bread); In re The Noble Co., 225 USPQ 749 (T.T.A.B. 1985) (NOBURST for liquid antifreeze and rust inhibitor for hot-water-heating systems found to suggest a desired result of using the product rather than immediately informing the purchasing public of a characteristic, feature, function, or attribute); In re Pennwalt Corp., 173 USPQ 317 (T.T.A.B. 1972) (DRI-FOOT held suggestive of anti-perspirant deodorant for feet in part because, in the singular, it is not the usual or normal manner in which the purpose of an anti-perspirant and deodorant for the feet would be described).” T.M.E.P. 1209(a). . . Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.” Id.
When “information about the product or services given by the term used as a mark [that] is indirect and vague . . . indicates that the term is being used in a ‘suggestive,’ not descriptive manner.” McCarthy § 11:19 (citing Blisscraft of Hollywood v. United Plastics Co., 131 USPQ 55 (2d Cir. 1961)). As such, unlike descriptive [terms] that describe and clearly convey information about the “ingredients, qualities or characteristics of the product or service,” suggestive [terms] only “indirectly suggest” these things. McCarthy § 11:67. A [term] is, therefore, suggestive if, “when the goods or services are encountered under the mark, a multistage reasoning process, or utilization of imagination, thought or perception, is required in order to determine what attributes of the goods or services that [term] indicates.” In re On Technology Corp., 41 USPQ2d 1475, 1476 (T.T.A.B. 1996). It is not prohibited for a [term] to have the capacity to draw attention to what the product or service is or to what its characteristics are. In re Colonial Stores, Inc., 394 F.2d 549, 552 (C.C.P.A. 1968). See In re Shutts, 217 USPQ 363 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool); In re Ray J. McDermott and Co., Inc., 170 USPQ 524 (T.T.A.B. 1971) (SWIVEL-TOP for fuel transfer mooring buoys held not to be merely descriptive). Similarly, the mark “BROWN-IN-BAG,” used to identify transparent plastic film bags, the primary purpose of which was to brown meats in ovens, was found not to be merely descriptive of the goods but only suggestive and registerable. In re Reynolds Metals Co., 480 F.2d 902 (CCPA 1973). The court also noted that the fact that the mark “BROWN-IN-BAG” is informational was not fatal. Id. at 904; accord In re DC Comics, Inc., 689 F.2d 1042 (CCPA 1982) (“the fact that a symbol may impart to the prospective purchaser information concerning the physical characteristics of goods with which it is used does not perforce render the symbol incapable of functioning as trademark”). Simply because wording is informational does not mean that it is merely descriptive per se. One may be informed by suggestion as well as by description. In re Reynolds Metals Company, 480 F.2d 902, 178 U.S.P.Q. 296 (C.C.P.A. 1973). That is to say, the terms “descriptive” and “suggestive” are not mutually exclusive. There is some description in any suggestion or the suggestive process does not occur.
The Applicant respectfully submits that the term E-CIGS in its KLIK E-CIGS mark does not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the goods identified in the present application, consisting of electronic cigarettes, but is instead properly characterized as suggestive. The term gives indirect and vague information with respect to electronic cigarette goods and the term E-CIGS as part of the Applicant’s mark, as applied to such goods, requires imagination, thought, or perception to reach a conclusion as to the nature of the goods, just as with the marks noted in the cases cited above. Even assuming that the term is descriptive, as noted above, descriptive and suggestive are not mutually exclusive categories. Even assuming that there is some description in the term, as is the case with any suggestive term, that does not mean that the term is merely descriptive. There is some description in any suggestive term or else the suggestive process does not occur.
Additionally, since the “line between merely descriptive and only suggestive terms is ‘so nebulous,’ the Trademark Trial and Appeal Board takes the position that doubt is resolved in favor of the applicant on the assumption that competitors have the opportunity to oppose the registration once published and to present evidence that is usually not present in ex parte examination.” McCarthy § 11:51; see also In re Conductive Systems, Inc., 220 USPQ 84 (T.T.A.B. 1983) (doubts under §2(e) about the merely descriptive nature of a term are resolved in favor of the applicant, unlike the situation in resolving §2(d) likely confusion disputes); In re Shutts, 217 USPQ 363 (any doubts as to whether a term is merely descriptive are to be resolved in favor of applicants); see also In re Mobile Ray, Inc., 224 USPQ 247, 248 (T.T.A.B. 1984) (“[W]e believe this record established sufficient doubt concerning the descriptiveness of applicant’s mark that the mark should be published for opposition”). The Applicant respectfully submits that there is more than sufficient doubt with respect to the alleged mere descriptiveness of the term E-CIGS and requests that any doubt as to the suggestiveness of the term be resolved in favor of Applicant.
In sum, the Applicant respectfully submits that term E-CIGS in the Applicant’s mark KLIK E-CIGS is not merely descriptive when used with electronic cigarettes, but rather is suggestive and registrable on the Principal Register without a disclaimer being required. It is respectfully requested that the Examiner withdraw the disclaimer requirement, conclude examination of the application and approve it for publication.