| 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 | 86715425 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86715425/large |
| LITERAL ELEMENT | MADE FOR SEWERS. BY SEWERS |
| 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 examining attorney has rejected registration of the mark MADE FOR SEWERS. BY SEWERS under Section 2(e)(1) on grounds that the applied-for mark is merely descriptive, the first element purportedly being descriptive of the goods and the second element of their source. Applicant respectfully submits that the mark as a whole is not merely descriptive but instead is a suggestive composite mark and thus not the proper subject of a Section 2(e)(1) refusal.
While the first part of the applied-for mark (MADE FOR SEWERS) is admittedly descriptive with respect to the goods identified in the registration, Applicant submits that the second part (BY SEWERS) is not merely descriptive of the source of the goods. Applicant is a company that designs, makes and sells sewing related products but there is nothing in the record demonstrating that the officers or employees of Applicant are actually “sewers” or an association of “sewers.” Thus, the examining attorney’s reliance on In re Major League Umpires, 60 USPQ32d 1059, 1060 (TTAB 2001), in concluding that the second part of the applied-for mark is merely descriptive is misplaced. In that case, there was evidence in the record that the officers and partners of the applicant were actually employed as Major League Baseball umpires, and here there is no such evidence in the record. Additionally, Applicant respectfully observes that the second part of the applied-for mark (BY SEWERS) is also distinguishable from the other marks cited as rejected as merely descriptive of source in TMEP 1209.03(q): PSYCHOLOGY PRESS, ELECTRIC CANDLE COMPANY, PAINT PRODUCTS COMPANY or THE PHONE COMPANY.
Applicant submits that the combination of the term BY SEWERS with the term MADE FOR SEWERS forms a composite mark with new and unique commercial impression that makes it suggestive as opposed to merely descriptive. Particularly, the commercial impression created by the mark is that the goods are made by those who understand the purchasers’ sewing needs and wants, not that Applicant is literally a “sewer” or an association of “sewers.” Purchasers get that impression by making an inductive leap from use of the term BY SEWERS, which is of course the hallmark of a suggestive mark.
The suggestive nature of the “made for/by” slogan formulation is corroborated by the fact that there are a number of live registrations on the Principal Register of recent origin with similar suggestive content: MADE BY SERVERS, FOR SERVERS for educational services related to the service of alcohol (see Ex. 1); MADE BY PAINTERS FOR PAINTERS for paint bags (see Ex. 2); MADE FOR PYROS.. BY PYROS!! for fireworks (see Ex. 3); MADE BY ATHLETES FOR ATHLETES for sporting mats (see Ex. 4); and MADE BY FIREMEN FOR FIREMEN for fire-fighting accessories (see Ex. 5). Applicant is not arguing that the Trademark Office is bound by these prior determinations of registrability, only that such registrations may on a case by case basis be relevant to show that a mark is suggestive rather than descriptive. E.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). It is well established that third party registrations are akin to dictionaries in that they can show how language is generally used. E.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (CCPA 1976).
In light of the foregoing, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1221914-20160212145955421898_._03557829.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_1221914-20160212145955421898_._03557832.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0004.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_1221914-20160212145955421898_._03557833.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0006.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0007.JPG | |
| ORIGINAL PDF FILE | evi_1221914-20160212145955421898_._03557834.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0008.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0009.JPG | |
| ORIGINAL PDF FILE | evi_1221914-20160212145955421898_._03557835.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0010.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\867\154\86715425\xml4\ROA0011.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibits 1-5 (copies of trademark records from USPTO) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Raymond Rundelli/ |
| SIGNATORY'S NAME | Raymond Rundelli |
| SIGNATORY'S POSITION | Attorney of record, Ohio bar member |
| SIGNATORY'S PHONE NUMBER | 216-622-8200 |
| DATE SIGNED | 02/12/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 12 16:41:29 EST 2016 |
| TEAS STAMP | USPTO/ROA-XX.X.XXX.X-2016 0212164129536260-86715425 -5504e8d95e1ac35699241622 a21dccfb13833d273d5fbeaf1 4527bae9cc64b3f74f-N/A-N/ A-20160212145955421898 |
| 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) |
The examining attorney has rejected registration of the mark MADE FOR SEWERS. BY SEWERS under Section 2(e)(1) on grounds that the applied-for mark is merely descriptive, the first element purportedly being descriptive of the goods and the second element of their source. Applicant respectfully submits that the mark as a whole is not merely descriptive but instead is a suggestive composite mark and thus not the proper subject of a Section 2(e)(1) refusal.
While the first part of the applied-for mark (MADE FOR SEWERS) is admittedly descriptive with respect to the goods identified in the registration, Applicant submits that the second part (BY SEWERS) is not merely descriptive of the source of the goods. Applicant is a company that designs, makes and sells sewing related products but there is nothing in the record demonstrating that the officers or employees of Applicant are actually “sewers” or an association of “sewers.” Thus, the examining attorney’s reliance on In re Major League Umpires, 60 USPQ32d 1059, 1060 (TTAB 2001), in concluding that the second part of the applied-for mark is merely descriptive is misplaced. In that case, there was evidence in the record that the officers and partners of the applicant were actually employed as Major League Baseball umpires, and here there is no such evidence in the record. Additionally, Applicant respectfully observes that the second part of the applied-for mark (BY SEWERS) is also distinguishable from the other marks cited as rejected as merely descriptive of source in TMEP 1209.03(q): PSYCHOLOGY PRESS, ELECTRIC CANDLE COMPANY, PAINT PRODUCTS COMPANY or THE PHONE COMPANY.
Applicant submits that the combination of the term BY SEWERS with the term MADE FOR SEWERS forms a composite mark with new and unique commercial impression that makes it suggestive as opposed to merely descriptive. Particularly, the commercial impression created by the mark is that the goods are made by those who understand the purchasers’ sewing needs and wants, not that Applicant is literally a “sewer” or an association of “sewers.” Purchasers get that impression by making an inductive leap from use of the term BY SEWERS, which is of course the hallmark of a suggestive mark.
The suggestive nature of the “made for/by” slogan formulation is corroborated by the fact that there are a number of live registrations on the Principal Register of recent origin with similar suggestive content: MADE BY SERVERS, FOR SERVERS for educational services related to the service of alcohol (see Ex. 1); MADE BY PAINTERS FOR PAINTERS for paint bags (see Ex. 2); MADE FOR PYROS.. BY PYROS!! for fireworks (see Ex. 3); MADE BY ATHLETES FOR ATHLETES for sporting mats (see Ex. 4); and MADE BY FIREMEN FOR FIREMEN for fire-fighting accessories (see Ex. 5). Applicant is not arguing that the Trademark Office is bound by these prior determinations of registrability, only that such registrations may on a case by case basis be relevant to show that a mark is suggestive rather than descriptive. E.g., In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). It is well established that third party registrations are akin to dictionaries in that they can show how language is generally used. E.g., Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917, 189 USPQ 693, 694-95 (CCPA 1976).
In light of the foregoing, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn.
