| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86524850 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86524850/large |
| LITERAL ELEMENT | GREATVACS |
| 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 appreciates the Examining Attorney’s review of the present application. However, Applicant respectfully disagrees that the mark – GREATVACS – is merely descriptive of the recited services.
A. The mark is “suggestive” and not “merely descriptive.”
At most, GREATVACS is “suggestive” and, therefore, registrable on the Principal Registry. A mark should not be held descriptive where the term “requires imagination, thought and perception to reach a conclusion as to the nature of the goods” as opposed to “an immediate idea of the ingredients, qualities or characteristics of the goods.” Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479 (S.D.N.Y. 1968). Thus, where “a consumer must use more than a small amount of imagination to make the association [from term to product feature], the mark is suggestive and not descriptive.” See Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215 (9th Cir. 1987); In re TBG, Inc., 229 U.S.P.Q. 759 (TTAB 1986) (SHOWROOM ONLINE held not merely descriptive of computerized interior furnishings product information service); and In re Shutts, 217 U.S.P.Q. 363 (TTAB 1983) (SNO-RAKE not merely descriptive of a snow removal hand tool).
Applicant submits that the average consumer, upon encountering GREATVACS, would not have an immediate idea as to the “ingredients, qualities or characteristics of the [services].” That is, the average consumer would not necessarily (or even likely) equate GREATVACS with the on-line retail store services recited in the application. In fact, a consumer would need to use more than a “small amount of imagination” to make the association between GREATVACS and the on-line retail store services recited in the application. Indeed, the mark GREATVACS surely evokes a myriad of different and conflicting images in the minds of the consuming public. The mark could be said to be descriptive (under the Examiner Attorney’s reasoning) for various goods and services, including (i) “great” “vaccines” or (ii) “great” “vacations” (and a myriad of different goods / services associated with “great vacations,” such as vacation travel agents, vacation destinations, vacation photos, vacation travel providers, etc.)
The very fact that GREATVACS could, under the Examining Attorney’s reasoning, “merely describe” such a diverse collection of goods and services, indicates that the consumer would not immediately associate the GREATVACS mark with Applicant’s the on-line retail store services recited in the application. At most, GREATVACS is “suggestive” and, therefore, registrable on the Principal Registry.
B. Claim of Acquired Distinctiveness.
Notwithstanding the foregoing, Applicant hereby wishes to amend the application to seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f) by submitting the following verified statement: “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least five years immediately before the date of this statement.” 15 U.S.C. §1052(f); 37 C.F.R. §2.41; TMEP §§1212 et seq.
C. Conclusion.
In light of the foregoing remarks and amendment, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register this application under Section 2(e)(1) and approve this application for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_12825223521-20151110125100076741_._GREATVACS.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\865\248\86524850\xml7\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | a PDF copy of the arguments submitted herein. |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use | The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Robert Kelly/ |
| SIGNATORY'S NAME | Robert Kelly |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 11/10/2015 |
| RESPONSE SIGNATURE | /Robert Kelly/ |
| SIGNATORY'S NAME | Robert Kelly |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 11/10/2015 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Nov 10 12:53:58 EST 2015 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20151110125358342191-8652 4850-54022a096faec97817c6 8327aba87d494de9d908bcc5e 8ec1ba1227d1db18bdb41e-N/ A-N/A-2015111012510007674 1 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
Applicant appreciates the Examining Attorney’s review of the present application. However, Applicant respectfully disagrees that the mark – GREATVACS – is merely descriptive of the recited services.
A. The mark is “suggestive” and not “merely descriptive.”
At most, GREATVACS is “suggestive” and, therefore, registrable on the Principal Registry. A mark should not be held descriptive where the term “requires imagination, thought and perception to reach a conclusion as to the nature of the goods” as opposed to “an immediate idea of the ingredients, qualities or characteristics of the goods.” Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479 (S.D.N.Y. 1968). Thus, where “a consumer must use more than a small amount of imagination to make the association [from term to product feature], the mark is suggestive and not descriptive.” See Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215 (9th Cir. 1987); In re TBG, Inc., 229 U.S.P.Q. 759 (TTAB 1986) (SHOWROOM ONLINE held not merely descriptive of computerized interior furnishings product information service); and In re Shutts, 217 U.S.P.Q. 363 (TTAB 1983) (SNO-RAKE not merely descriptive of a snow removal hand tool).
Applicant submits that the average consumer, upon encountering GREATVACS, would not have an immediate idea as to the “ingredients, qualities or characteristics of the [services].” That is, the average consumer would not necessarily (or even likely) equate GREATVACS with the on-line retail store services recited in the application. In fact, a consumer would need to use more than a “small amount of imagination” to make the association between GREATVACS and the on-line retail store services recited in the application. Indeed, the mark GREATVACS surely evokes a myriad of different and conflicting images in the minds of the consuming public. The mark could be said to be descriptive (under the Examiner Attorney’s reasoning) for various goods and services, including (i) “great” “vaccines” or (ii) “great” “vacations” (and a myriad of different goods / services associated with “great vacations,” such as vacation travel agents, vacation destinations, vacation photos, vacation travel providers, etc.)
The very fact that GREATVACS could, under the Examining Attorney’s reasoning, “merely describe” such a diverse collection of goods and services, indicates that the consumer would not immediately associate the GREATVACS mark with Applicant’s the on-line retail store services recited in the application. At most, GREATVACS is “suggestive” and, therefore, registrable on the Principal Registry.
B. Claim of Acquired Distinctiveness.
Notwithstanding the foregoing, Applicant hereby wishes to amend the application to seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f) by submitting the following verified statement: “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least five years immediately before the date of this statement.” 15 U.S.C. §1052(f); 37 C.F.R. §2.41; TMEP §§1212 et seq.
C. Conclusion.
In light of the foregoing remarks and amendment, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register this application under Section 2(e)(1) and approve this application for publication.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
