| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86683557 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86683557/large |
| LITERAL ELEMENT | INTERNATIONAL |
| 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) | |
|
INTRODUCTION This is in response to the office action mailed October 9, 2015. According to the office action, Applicant’s registration was refused under Section 2(e)(1) of the Trademark Act on the grounds that Applicant’s mark is merely descriptive. Applicant respectfully requests the Examining Attorney’s further consideration of Applicant’s registration in view of the following response and remarks. ARGUMENT I. Applicant’s mark has achieved enough recognition and acceptance in the marketplace to have acquired secondary meaning.Applicant has been using the mark INTERNATIONAL in the retail military antiques business since 1981. From 1981 to 2009 Applicant did weekly print advertising in the SHOTGUN NEWS. Currently, Applicant also advertises on AMAZON and is an Amazon-registered brand as seen at http://www.amazon.com/International-Military-Antiques-Inc/pages/7736810011. Applicant has a series of other advertisements over the years from digital, to print to web videos (ima-usa.com), Facebook (http://www.facebook.com/militaryantiques/timeline), Twitter (@IMA-USA), etc... Applicant typically attends four to six trade shows a year, typically including Shot Show (Las Vegas), Show of Shows (Louisville), Fort Indian Town Gap WWII Reenactment (Pennsylvania), Reading (PA) Air Show, and MAX Show (Pittsburgh). In other words, Applicant’s mark has, through long use through various communications channels, become more commercially significant than any merely descriptive quality about the mark. II. Applicant offers items for sale from various specific countries.The office action indicates, “It may be determined from the material in applicant’s specimens of use that the military antique goods made available for purchase in applicant’s online retail store may be international in nature, as opposed to only featuring goods from the United States. Consequently, applicant’s mark is descriptive of a feature or characteristic of applicant’s services.” The uniquely identifiable characteristics of military paraphernalia derive from the specificity of particular national armies and navies. Military antiques -- whether actual antiques or replicas -- derive from different military uses by specific countries. These military antiques are not “international in nature.” Buyers identify military uniforms, medals, firearms and other gear with specific countries. Such goods are typically unique to or at least identifiable with specific countries. The word “international” frequently connotes “non-national” or “between nations.” For example, the International Monetary Fund or the International Bank for Reconstruction and Development are institutions that are not nation-specific. International Business Machines does not sell machines that specifically correspond to particular jurisdictions. Therefore, it’s a mistake to think of Applicant’s goods offered for sale as “international in nature,” since the goods have meaning and value only because specific national military organizations made them famous. The Office Action states: The term “international” has been held merely descriptive of services that are international in scope. TMEP §1209.03(o); see In re Inst. Investor, Inc., 229 USPQ 614 (TTAB 1986) (holding INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries incapable); In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (holding BILLFISH INTERNATIONAL CORPORATION merely descriptive of corporation involved with billfish on an international scale); BankAmerica Corp. v. Int’l Travelers Cheque Co., 205 USPQ 1233 (TTAB 1979) (holding INTERNATIONAL TRAVELERS CHEQUE merely descriptive of financial consulting services that are international in scope). The three cited cases are readily distinguishable from the Applicant’s circumstances. In the three cited cases, the goods and services were intended to be thought of as transnational or not identified with any particular country. In Applicant’s case, the goods are singularly identified with particular countries. Applicant’s offering of military-related goods is not “international in scope” in the way in which the goods and services cited above were intended to be “international in scope.” The three cases do not fit the Applicant’s circumstances at all. III. The USPTO has granted registrations for numerous marks that include the word INTERNATIONAL.Many marks that feature the word INTERNATIONAL have been registered. International House of Pancakes has or has had numerous registrations despite aspirations to have restaurants in many jurisdictions. American International Group (Reg. No. 2376437) offers insurance-related services in numerous countries. By way of example, the USPTO has registered numerous marks that include “International Association.” While there are some examples of denials of registration involving the word “international” on the grounds of descriptiveness, the number of registrations for marks that include INTERNATIONAL and that involve applicants who conduct business across borders is quite substantial. IV. Revised Specimens match the applied-for mark.Attached to this response to office action are copies of published advertising from 2012 and 2013 as well as a sales brochure and a photo of trade show signage that feature INTERNATIONAL as a prominent feature of the image, along with a certification by an officer of the Applicant. These specimens show the applied-for mark in the drawing in use in commerce in International Class 35. CONCLUSION In view of the foregoing, Applicant respectfully requests that the Examining Attorney pass the subject application to publication. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| On-line retail store services featuring military-related antiques | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 12/31/1981 |
| FIRST USE IN COMMERCE DATE | At least as early as 12/31/1981 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| On-line retail store services featuring military-related antiques | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 12/31/1981 |
| FIRST USE IN COMMERCE DATE | At least as early as 12/31/1981 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, 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, or originally submitted, 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]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) |
\\TICRS\EXPORT16\IMAGEOUT 16\866\835\86683557\xml4\ ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT 16\866\835\86683557\xml4\ ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT 16\866\835\86683557\xml4\ ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT 16\866\835\86683557\xml4\ ROA0005.JPG | |
| SPECIMEN DESCRIPTION | Two print advertising pages from 2012 and 2013, a brochure and a sign at applicant's booth at a trade show |
| ADDITIONAL STATEMENTS SECTION | |
| SECTION 2(f) Claim of Acquired Distinctiveness, BASED ON EVIDENCE | The mark has become distinctive of the goods/services, as demonstrated by the attached evidence. |
| 2(f) EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | e2f-20414215610-162522236_._CRANMER_IMA_Certification-OA_response_Jan_2016_SIGNED.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\866\835\86683557\xml4\ROA0006.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\866\835\86683557\xml4\ROA0007.JPG | |
| 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 | /Noel D Humphreys/ |
| SIGNATORY'S NAME | Noel D Humphreys |
| SIGNATORY'S POSITION | Attorney of Record, New Jersey bar member |
| SIGNATORY'S PHONE NUMBER | 973-535-0500 |
| DATE SIGNED | 02/02/2016 |
| RESPONSE SIGNATURE | /Noel D Humphreys/ |
| SIGNATORY'S NAME | Noel Dm Humphreys |
| SIGNATORY'S POSITION | Attorney of record, New Jeersey Bar Member |
| SIGNATORY'S PHONE NUMBER | 973-535-0500 |
| DATE SIGNED | 02/02/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Feb 02 16:57:24 EST 2016 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20160202165724537055-8668 3557-550da2adb4598f15f516 f613efdcf73fe1eabb4dba93f 21a2c57272c4ed99f6e9-N/A- N/A-20160202162522236857 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
INTRODUCTION
This is in response to the office action mailed October 9, 2015. According to the office action, Applicant’s registration was refused under Section 2(e)(1) of the Trademark Act on the grounds that Applicant’s mark is merely descriptive. Applicant respectfully requests the Examining Attorney’s further consideration of Applicant’s registration in view of the following response and remarks.
ARGUMENT
Applicant has been using the mark INTERNATIONAL in the retail military antiques business since 1981. From 1981 to 2009 Applicant did weekly print advertising in the SHOTGUN NEWS. Currently, Applicant also advertises on AMAZON and is an Amazon-registered brand as seen at http://www.amazon.com/International-Military-Antiques-Inc/pages/7736810011.
Applicant has a series of other advertisements over the years from digital, to print to web videos (ima-usa.com), Facebook (http://www.facebook.com/militaryantiques/timeline), Twitter (@IMA-USA), etc...
Applicant typically attends four to six trade shows a year, typically including Shot Show (Las Vegas), Show of Shows (Louisville), Fort Indian Town Gap WWII Reenactment (Pennsylvania), Reading (PA) Air Show, and MAX Show (Pittsburgh).
In other words, Applicant’s mark has, through long use through various communications channels, become more commercially significant than any merely descriptive quality about the mark.
The office action indicates, “It may be determined from the material in applicant’s specimens of use that the military antique goods made available for purchase in applicant’s online retail store may be international in nature, as opposed to only featuring goods from the United States. Consequently, applicant’s mark is descriptive of a feature or characteristic of applicant’s services.”
The uniquely identifiable characteristics of military paraphernalia derive from the specificity of particular national armies and navies. Military antiques -- whether actual antiques or replicas -- derive from different military uses by specific countries. These military antiques are not “international in nature.” Buyers identify military uniforms, medals, firearms and other gear with specific countries. Such goods are typically unique to or at least identifiable with specific countries.
The word “international” frequently connotes “non-national” or “between nations.” For example, the International Monetary Fund or the International Bank for Reconstruction and Development are institutions that are not nation-specific. International Business Machines does not sell machines that specifically correspond to particular jurisdictions. Therefore, it’s a mistake to think of Applicant’s goods offered for sale as “international in nature,” since the goods have meaning and value only because specific national military organizations made them famous.
The Office Action states:
The term “international” has been held merely descriptive of services that are international in scope. TMEP §1209.03(o); see In re Inst. Investor, Inc., 229 USPQ 614 (TTAB 1986) (holding INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries incapable); In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (holding BILLFISH INTERNATIONAL CORPORATION merely descriptive of corporation involved with billfish on an international scale); BankAmerica Corp. v. Int’l Travelers Cheque Co., 205 USPQ 1233 (TTAB 1979) (holding INTERNATIONAL TRAVELERS CHEQUE merely descriptive of financial consulting services that are international in scope).
The three cited cases are readily distinguishable from the Applicant’s circumstances. In the three cited cases, the goods and services were intended to be thought of as transnational or not identified with any particular country. In Applicant’s case, the goods are singularly identified with particular countries. Applicant’s offering of military-related goods is not “international in scope” in the way in which the goods and services cited above were intended to be “international in scope.” The three cases do not fit the Applicant’s circumstances at all.
Many marks that feature the word INTERNATIONAL have been registered. International House of Pancakes has or has had numerous registrations despite aspirations to have restaurants in many jurisdictions. American International Group (Reg. No. 2376437) offers insurance-related services in numerous countries. By way of example, the USPTO has registered numerous marks that include “International Association.” While there are some examples of denials of registration involving the word “international” on the grounds of descriptiveness, the number of registrations for marks that include INTERNATIONAL and that involve applicants who conduct business across borders is quite substantial.
Attached to this response to office action are copies of published advertising from 2012 and 2013 as well as a sales brochure and a photo of trade show signage that feature INTERNATIONAL as a prominent feature of the image, along with a certification by an officer of the Applicant. These specimens show the applied-for mark in the drawing in use in commerce in International Class 35.
CONCLUSION
In view of the foregoing, Applicant respectfully requests that the Examining Attorney pass the subject application to 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.
