Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

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. 85974629 PLAYR(Standard Characters, see http://uspto.report/TM/85974629/mark.png) has been amended as follows:

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

            This is in response to the Office Action dated October 17, 2013.  That Office Action has been reviewed in depth, and this Amendment is intended to address the Examining Attorney’s stated concerns and place the application into condition for publication.  Applicant notes, however, that the Examining Attorney has deferred a search of the Office records for similar registered or pending marks that would bar registration under 15 U.S.C. § 1052(d).  Applicant looks forward to a considered evaluation of any potential refusal on that basis.

 I.                  Amendments to the Identification of Goods and Services

Further to the Examining Attorney Attorney’s requirements regarding the identification of goods and services, Applicant has entered amendments herein.

II.                  The PLAYR mark is Not Merely Descriptive

            The Examining Attorney has refused registration of the PLAYR mark on the ground that the mark is merely descriptive of Applicant’s goods and services.  As discussed below, Applicant’s PLAYR mark is not a commonly recognized term; and it does not merely describe Applicant’s goods and services.  Applicant therefore respectfully requests that the Examining Attorney reconsider this position.

            Whether a term has some significance to the public as an indication of the nature or class of the article is not determinative as to whether a mark is descriptive; instead, it is whether that is its principle significance that determines whether the mark is descriptive.  Stix Products, Inc. v. United Merchants & Co., Inc., 160 U.S.P.Q. 777, 786-787 (SDNY 1968).  The PLAYR, mark however, is not merely descriptive because a purchaser would be unable to determine that the principle significance of PLAYR relates to the array of goods and services intended to be provided by Applicant.

a.      PLAYR Is Not A Recognized Term

            The PLAYR term has no commonly recognized meaning.  In order to be deemed merely descriptive, a term must convey a readily understood meaning to the average purchaser of the goods.  In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979).  The Office bears the burden of presenting a prima facie case of descriptiveness.  In re Box Solutions Corp., 79 U.S.P.Q.2d 1953 (T.T.A.B. 2006)(“The burden is initially on the United States Patent and Trademark Office to make a prima facie showing that the mark or word in question is descriptive from the vantage point of purchasers of applicant’s goods”).  Here, the Examining Attorney has adduced no evidence that supports the conclusion that the mark is merely descriptive, and, in particular, has not adduced any evidence of the use of the PLAYR mark whatsoever.  In fact, the Examining Attorney has only entered the following as evidence:

·         A Dictionary.com definition of PLAYER;

·         A two-paragraph Engadget article about the launch of a WhatsApp voice messaging feature along with nine pages of user comments.   The phrase, “plays audio within the app instead of opening a media player.” appears in the article;

·         An online listing for a Samsung Smart WiFi 3d Bluray Disc Player;

·         A Microsoft XBOX article referencing the WINDOWS MEDIA PLAYER software product; and,

·         A Google search for XBOX PLAYER

While the Examining Attorney has adduced five references showing that the PLAYER term is sometimes used in connection with technology products, there is no evidence in the record to support the conclusion that the PLAYR term is used in connection with these goods too.  Nor has the Examining Attorney adduced any evidence to support the conclusion that PLAYER can be interpreted as PLAYR.  Simply, the Examining Attorney has not met the evidentiary burden here.    

Indeed, the Applicant asserts that there is evidence to support the conclusion that there is no commonly understood meaning to PLAYR.  A search of Dictonary.com for PLAYR returns “no dictionary results.”  See, http://dictionary.reference.com/browse/playr?s=t  A search on Google likewise only reveals nominal uses of the PLAYR term, none of which appear to equate PLAYER with PLAYR.   See, http://www.google.com/#q=playr  If any commonly understood meaning existed, surely the Internet would reveal it.

            Moreover, the test for registerability is not whether a mark contains a descriptive term, but rather whether it is merely descriptive.  The Coca-Cola Co. v. The 7-Up Co., 497 F.2d 1351 (C.C.P.A. 1974).  A descriptive connotation will not preclude registration where the mark is not merely descriptive of the goods or services.  Id. at 1354.  The descriptive connotation of the mark PLAYR cannot be held to be merely descriptive, as it has no commonly recognized meaning. 

b.      The Imagination Test Is Satisfied

            One test of whether a mark is suggestive rather than descriptive is the "imagination test."  If imagination is required to comprehend the attributes of Applicant's goods, then the mark is suggestive, not descriptive, and thus suitable for registration. TMEP, §1209; Airco, Inc. v. Air Products & Chemicals, Inc., 196 U.S.P.Q. 832 (T.T.A.B. 1977) (allowing registration of AIR CARE for preventative maintenance services related to medical anesthesia equipment).  When the public sees the term PLAYR in an advertisement, more information than the mark itself is required to comprehend what the mark conveys -- and that additional element is imagination.  The PLAYR mark does not readily convey that Applicant intends to offer everything from “online comparison shopping services” in Class 35 to the “design, creation, hosting, and maintenance of websites for others” in Class 42.  Indeed, one would be hard pressed to even ascribe any merely descriptive meaning to this mark in connection with these services.     Consequently, a consumer could interpret the mark to mean many different things, which leads to the result that the PLAYR mark is not merely descriptive of the broad array of goods and services intended to be offered by Applicant.  To reach that conclusion requires imagination, thought, and a considerable leap.  In any case, there must be something descriptive in almost any suggestion or the suggesting process will not take place.  Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 146 (3rd Cir. 1953). 

a.      Where, As Here, There Is Doubt As To Descriptiveness, The Application Should Be Allowed

            The law is clear that, “Where there is doubt on the matter, the doubt should be resolved in applicant's behalf ....”  In re Aid Laboratories, Inc., 221 U.S.P.Q. 1215, 1216 (T.T.A.B. 1983) (PEST PRUF not merely descriptive for animal shampoo with insecticide); In re American Hospital Supply Co., 219 U.S.P.Q. 949 (T.T.A.B. 1983).  Given the complete lack of evidence regarding any commonly understood meaning attributed to Applicant’s PLAYR mark, the doubt as to descriptiveness could not be more clear.  

b.      Conclusion

            For all the reasons set forth above, there is more than sufficient doubt to require the Examining Attorney to withdraw the Section 2(e)(1) refusal.  Applicant therefore respectfully urges the Examining Attorney to reconsider this position and withdraw the refusal to register Applicant’s mark under Section  2(e)(1).

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software; computer accessories and peripherals; downloaders; downloadable sound and video recordings featuring music, musical performances, and educational materials; downloadable sound and video recordings featuring music, musical performances, and educational materials; computer hardware; downloadable musical sound recordings
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Computer software; computer accessories and peripherals; computer peripherals; downloaders; downloadable sound and video recordings featuring music and musical performances; downloadable sound and video recordings featuring music, musical performances, and educational materials; downloadable sound and video recordings featuring music and musical performances; downloadable sound and video recordings featuring music, musical performances, and educational materials; computer hardware; downloadable musical sound recordingsClass 009 for Computer software; computer peripherals; downloadable sound and video recordings featuring music and musical performances; downloadable sound and video recordings featuring music and musical performances; computer hardware; downloadable musical sound recordings
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Online comparison shopping services; compiling and maintaining online commercial information directories; providing an online commercial and residential information directory on the Internet; business consulting and technical assistance regarding the operating, managing, advertising, and marketing of websites for others; business consulting services; providing a website in the field of employment opportunities and career placement which offers the exchange of information; business marketing consultation in the field of online commerce websites; providing online directory information services also featuring hyperlinks to other websites; telephone directory information; general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals; employment information services; providing information regarding coupons provided by others; providing consumer product information via the Internet; advertising and promotional services for others; dissemination of advertising matter; promoting the goods and services of others by means of operating an online shopping mall with links to the retail web sites of others; providing information via the Internet regarding the goods and services of others in the nature of a buyers' guide; calendaring and reminder services for business purposes rendered via computer networks for organizing and recording appointments and events in the nature of a website with features to organize appointments, reminders, and dates
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Online comparison shopping services; compiling and maintaining online commercial information directories; providing an online commercial and residential information directory on the Internet; business consulting and technical assistance regarding the operating, managing, advertising, and marketing of websites for others; business consulting services; providing a website in the field of employment opportunities and career placement which offers the exchange of information; business marketing consultation in the field of online commerce websites; providing online directory information services also featuring hyperlinks to other websites; telephone directory information; general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals; employment information services; providing information regarding coupons provided by others; providing business information regarding coupons provided by others; providing consumer product information via the Internet; advertising and promotional services for others; dissemination of advertising matter; promoting the goods and services of others by means of operating an online shopping mall with links to the retail web sites of others; providing information via the Internet regarding the goods and services of others in the nature of a buyers' guide; calendaring and reminder services for business purposes rendered via computer networks for organizing and recording appointments and events in the nature of a website with features to organize appointments, reminders, and datesClass 035 for Online comparison shopping services; compiling and maintaining online commercial information directories; providing an online commercial and residential information directory on the Internet; business consulting and technical assistance regarding the operating, managing, advertising, and marketing of websites for others; business consulting services; providing a website in the field of employment opportunities and career placement which offers the exchange of information; business marketing consultation in the field of online commerce websites; providing online directory information services also featuring hyperlinks to other websites; telephone directory information; general business networking referral services, namely, promoting the goods and services of others by passing business leads and referrals; employment information services; providing business information regarding coupons provided by others; providing consumer product information via the Internet; advertising and promotional services for others; dissemination of advertising matter; promoting the goods and services of others by means of operating an online shopping mall with links to the retail web sites of others; providing information via the Internet regarding the goods and services of others in the nature of a buyers' guide
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design, creation, hosting, and maintenance of websites for others; providing temporary use of online non-downloadable software; providing customized online web pages; domain name registration services; online computer mapping services; mapping services; computer services; searching and retrieving information, sites, and other resources available on computer networks for others; search engine services for others
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Design, creation, hosting, and maintenance of websites for others; providing temporary use of online non-downloadable software; providing customized online web pages; domain name registration services; online computer mapping services; mapping services; searching and retrieving information, sites, and other resources available on computer networks for others; computer services; search engine services for othersClass 042 for Design, creation, hosting, and maintenance of websites for others; providing temporary use of online non-downloadable software; providing customized online web pages; online computer mapping services; mapping services; searching and retrieving information, sites, and other resources available on computer networks for others; search engine services for others
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Anthony J. Malutta/     Date: 04/17/2014
Signatory's Name: Anthony J. Malutta
Signatory's Position: Attorney of record, California State Bar member

Signatory's Phone Number: 415-576-0200

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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.

        
Serial Number: 85974629
Internet Transmission Date: Thu Apr 17 19:49:02 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201404171949022
04726-85974629-5008a2a74c7ea5f102327ee75
66e1ccb696922e1ad178d58da92a238bec491ed1
0-N/A-N/A-20140417193432249278