| 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 |
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| SERIAL NUMBER | 86730985 | ||||||||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 103 | ||||||||||||||||||||||||
| MARK SECTION | |||||||||||||||||||||||||
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86730985/large | ||||||||||||||||||||||||
| LITERAL ELEMENT | BARE TRAPS REBOUND TECHNOLOGY | ||||||||||||||||||||||||
| 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) | |||||||||||||||||||||||||
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APPLICANT’S RESPONSE TO OFFICE ACTION APPLICATION NO. 86730985 The Examining Attorney has required a disclaimer of “REBOUND TECHNOLOGY” in Applicant’ s mark – BARE TRAPS REBOUND TECHNOLOGY - on the basis that it is merely descriptive. Applicant respectfully disagrees and submits that its mark is not descriptive because it contains an incongruous combination of terms, requiring consumers to use their imagination in order to determine the nature of the goods. Moreover, the mark is a unitary mark that creates a single and distinct commercial impression. A term is considered to be merely descriptive of goods only if it immediately describes an ingredient, quality, characteristic or feature of the goods or if it directly conveys information regarding the nature, function, purpose or use of the goods. In re Tekdyne Inc., 33 U.S.P.Q.2d 1949 (TTAB 1994); In re H.U.D.D.L.E., 216 U.S.P.Q. 358 (TTAB 1982). Courts have held that a term is suggestive if it requires consumers to use imagination, thought and perception to reach a conclusion as to the nature of the goods. See Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 160 U.S.P.Q. 777 (S.D.N.Y. 1968). Moreover, combinations of arguably descriptive components are registerable without disclaimers if the pairing or juxtaposition of the words is inventive or has an incongruous meaning as applied to the goods or services. See TMEP 1213.05(d); see also In re DeSoto, Inc., 172 USPQ 497 (TTAB 1972); In Re Colonial Stores, Inc., 394 F.2d 549, 552 (CCPA 1968) (SUGAR & SPICE is not merely descriptive of bakery products, although the individual terms describe ingredients of the goods); In Re Shutts, 217 USPQ 363 (TTAB 1983) (the mark SNO-RAKE was not merely descriptive of a snow removal tool, where the goods associated with the mark were not "rakes" as used in gardening tasks); In re Delaware Punch Company, 186 USPQ 63, 1975 WL 20822 (TTAB 1975) (the mark THE SOFT PUNCH in connection with beverages, could be perceived as meaning a non-alcoholic punch or an indication that the applicant's drink had an impact like a soft punch or pleasing hit.)
In re Sears Brand LLC 2010 WL 5522986 (TTAB 2010) is also on point. In that case, the Board reversed the Examiner’s requirement of a disclaimer of “SERVICE CREW”, although the Examiner had submitted various definitions of “service crew,” concluding:
The term “Service Crew” possesses enough incongruity to raise doubts as to its mere descriptiveness because its meaning would not be grasped without some measure of imagination and “mental pause.” Accordingly, the term “Service Crew” as used in the mark SEARS BLUE SERVICE CREW in connection with retail department store services does not readily and immediately evoke an impression and understanding of the services or the people rendering the services.
The Board further noted:
The term “Service Crew” used in the mark SEARS BLUE SERVICE CREW to identify retail department store services is incongruous because the term “service crew” does not immediately call to mind retail department store services or its employees. For example, retail employees are commonly referred to as a sales staff, sales team, salesman or saleswoman, sales force, sales or account representatives, sales corps or sales help. “Service Crew” is not the usual or normal way that consumers refer to a retail department store or its employees. All the above-noted evidence of record demonstrating the use of the term “Service Crew” was in connection with installing services or repair and maintenance services. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (online sources are useful for determining consumer perceptions).
Id. Here, while the Examiner has submitted individual definitions of “rebound” and “technology”, there are no examples of those terms being used in combination. Moreover, there is nothing to suggest that “rebound technology” is the usual way that consumers refer to footwear or to insoles for footwear. Indeed, the definitions submitted by the Examiner for the term “rebound” demonstrate that consumers would not ordinarily associate the terms with these goods (“to come back from a slump”; “rebound from an illness”; “rebound from an economic recession”; “spring away from an impact; return to former condition”). Moreover, when viewed in the context of Applicant’s mark in its entirety, the meaning of the wording is even less clear. As used within the mark BARE TRAPS REBOUND TECHNOLOGY, the wording REBOUND TECHNOLOGY may convey a multitude of meanings. First, as noted above, the term REBOUND has many possible meanings and connotations. The fact that Applicant’s mark, as a whole, includes BARE TRAPS and REBOUND TECHNOLOGY may also suggest to Applicant’s customers the idea of a “trap” “snapping” into place, or it could be suggestive of athletics, or it could have some other meaning altogether. Applicant submits that the third party web evidence uncovered by the Examiner is not relevant to the analysis at hand regarding Applicant’s trademark, because the third party evidence does not incorporate Applicant’s mark as a whole, or indicate that Applicant’s mark is commonly used in the industry.
Rather, Applicant’s mark – BARE TRAPS REBOUND TECHNOLOGY - is a unitary mark that creates a single and distinct commercial impression. A mark is considered “unitary” when it creates a commercial impression separate and apart from any allegedly unregistrable component. The test when determining whether a mark is unitary inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable. See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). The inquiry focuses on “how the average purchaser would encounter the mark under normal marketing of such goods and also ... what the reaction of the average purchaser would be to this display of the mark.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)). If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052.
Here, BARE TRAPS REBOUND TECHNOLOGY will be viewed as an integrated, unitary mark rather than as separate components. In In re Sears Brand LLC, supra, the Board determined:
In the present case, we find that the mark SEARS BLUE SERVICE CREW is a unitary mark because the words have been put together to function as a unit. The term “Service Crew” does not stand out by itself pointing to the services. Consumers will not break the mark SEARS BLUE SERVICE CREW into its component parts but will regard it as a unitary mark, in part, because the mark rhymes. In any event, we find that consumers will perceive applicant’s mark, as shown in applicant’s website, as identifying applicant’s employees the BLUE SERVICE CREW or SEARS BLUE SERVICE CREW but not “Service Crew” alone. See In re J.R. Carlson Laboratories, Inc., 183 USPQ 509, 511 (TTAB 1974) (consumers will call for applicant’s product as E GEM notwithstanding the fact that they would recognize the descriptive significance of the letter “E”). For these reasons, we believe that purchasers will not go through the mental process of parsing the mark SEARS BLUE SERVICE CREW into its component parts, but will regard it as a unitary mark. Under the circumstances presented by the record before us, the registration of the mark SEARS BLUE SERVICE CREW does not create or recognize any rights in the individual elements of the mark apart from the mark as a whole. Therefore, we conclude that the requirement for a disclaimer of the term “Service Crew” is not necessary.
Similarly, here, purchasers will not parse the mark BARE TRAPS REBOUND TECHNOLOGY into its component parts but will regard it as a unitary mark because Applicant’s mark consists of an odd juxtaposition of terms that require consumers to use their imagination in order to determine the nature of the goods. The terms “BARE” and “TRAPS” certainly have no meaning in connection with footwear and constitute a double entendre, particularly when combined with “REBOUND TECHNOLOGY”. Thus, customers will view the mark as a whole without readily understanding the meaning of any of the separate components, including “rebound technology”. Does it mean that someone or something is springing away from a type of animal trap (since “bare” brings to mind “bear”)? Does the mark relate to someone bouncing back from being caught in a physical or relational “trap”? Customers are clearly required to use their imagination to understand the meaning and will not view “rebound technology” apart for the unitary mark as a whole.
Further, Applicant notes that several third parties have registered marks containing the term REBOUND for clothing or footwear on the Principal Register, and without submitting disclaimers. A sample listing of such marks is shown below:
Finally, any doubts regarding whether a term is merely descriptive should be resolved in favor of Applicant, see. In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and authority cited therein.
Conclusion Based on the foregoing, it is Applicant’s belief the referenced application is in condition for publication, without the requirement of a disclaimer, and such action is respectfully requested. |
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| SIGNATURE SECTION | |||||||||||||||||||||||||
| RESPONSE SIGNATURE | /arkadia olson/ | ||||||||||||||||||||||||
| SIGNATORY'S NAME | Arkadia DeLay Olson | ||||||||||||||||||||||||
| SIGNATORY'S POSITION | Attorney of record, Missouri bar member | ||||||||||||||||||||||||
| SIGNATORY'S PHONE NUMBER | 314-480-1500 | ||||||||||||||||||||||||
| DATE SIGNED | 02/10/2016 | ||||||||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||||||||||||||
| FILING INFORMATION SECTION | |||||||||||||||||||||||||
| SUBMIT DATE | Wed Feb 10 13:34:54 EST 2016 | ||||||||||||||||||||||||
| TEAS STAMP | USPTO/ROA-XX.XX.X.X-20160 210133454741715-86730985- 550d64b85e4c3f02a47649604 d9627de975173a5b0d224dea9 7e5945fcaeea71ff-N/A-N/A- 20160127160541131923 |
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| 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) |
APPLICANT’S RESPONSE TO OFFICE ACTION
APPLICATION NO. 86730985
The Examining Attorney has required a disclaimer of “REBOUND TECHNOLOGY” in Applicant’ s mark – BARE TRAPS REBOUND TECHNOLOGY - on the basis that it is merely descriptive. Applicant respectfully disagrees and submits that its mark is not descriptive because it contains an incongruous combination of terms, requiring consumers to use their imagination in order to determine the nature of the goods. Moreover, the mark is a unitary mark that creates a single and distinct commercial impression.
A term is considered to be merely descriptive of goods only if it immediately describes an ingredient, quality, characteristic or feature of the goods or if it directly conveys information regarding the nature, function, purpose or use of the goods. In re Tekdyne Inc., 33 U.S.P.Q.2d 1949 (TTAB 1994); In re H.U.D.D.L.E., 216 U.S.P.Q. 358 (TTAB 1982). Courts have held that a term is suggestive if it requires consumers to use imagination, thought and perception to reach a conclusion as to the nature of the goods. See Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 160 U.S.P.Q. 777 (S.D.N.Y. 1968). Moreover, combinations of arguably descriptive components are registerable without disclaimers if the pairing or juxtaposition of the words is inventive or has an incongruous meaning as applied to the goods or services. See TMEP 1213.05(d); see also In re DeSoto, Inc., 172 USPQ 497 (TTAB 1972); In Re Colonial Stores, Inc., 394 F.2d 549, 552 (CCPA 1968) (SUGAR & SPICE is not merely descriptive of bakery products, although the individual terms describe ingredients of the goods); In Re Shutts, 217 USPQ 363 (TTAB 1983) (the mark SNO-RAKE was not merely descriptive of a snow removal tool, where the goods associated with the mark were not "rakes" as used in gardening tasks); In re Delaware Punch Company, 186 USPQ 63, 1975 WL 20822 (TTAB 1975) (the mark THE SOFT PUNCH in connection with beverages, could be perceived as meaning a non-alcoholic punch or an indication that the applicant's drink had an impact like a soft punch or pleasing hit.)
In re Sears Brand LLC 2010 WL 5522986 (TTAB 2010) is also on point. In that case, the Board reversed the Examiner’s requirement of a disclaimer of “SERVICE CREW”, although the Examiner had submitted various definitions of “service crew,” concluding:
The term “Service Crew” possesses enough incongruity to raise doubts as to its mere descriptiveness because its meaning would not be grasped without some measure of imagination and “mental pause.” Accordingly, the term “Service Crew” as used in the mark SEARS BLUE SERVICE CREW in connection with retail department store services does not readily and immediately evoke an impression and understanding of the services or the people rendering the services.
The Board further noted:
The term “Service Crew” used in the mark SEARS BLUE SERVICE CREW to identify retail department store services is incongruous because the term “service crew” does not immediately call to mind retail department store services or its employees. For example, retail employees are commonly referred to as a sales staff, sales team, salesman or saleswoman, sales force, sales or account representatives, sales corps or sales help. “Service Crew” is not the usual or normal way that consumers refer to a retail department store or its employees. All the above-noted evidence of record demonstrating the use of the term “Service Crew” was in connection with installing services or repair and maintenance services. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (online sources are useful for determining consumer perceptions).
Id.
Here, while the Examiner has submitted individual definitions of “rebound” and “technology”, there are no examples of those terms being used in combination. Moreover, there is nothing to suggest that “rebound technology” is the usual way that consumers refer to footwear or to insoles for footwear. Indeed, the definitions submitted by the Examiner for the term “rebound” demonstrate that consumers would not ordinarily associate the terms with these goods (“to come back from a slump”; “rebound from an illness”; “rebound from an economic recession”; “spring away from an impact; return to former condition”).
Moreover, when viewed in the context of Applicant’s mark in its entirety, the meaning of the wording is even less clear. As used within the mark BARE TRAPS REBOUND TECHNOLOGY, the wording REBOUND TECHNOLOGY may convey a multitude of meanings. First, as noted above, the term REBOUND has many possible meanings and connotations. The fact that Applicant’s mark, as a whole, includes BARE TRAPS and REBOUND TECHNOLOGY may also suggest to Applicant’s customers the idea of a “trap” “snapping” into place, or it could be suggestive of athletics, or it could have some other meaning altogether.
Applicant submits that the third party web evidence uncovered by the Examiner is not relevant to the analysis at hand regarding Applicant’s trademark, because the third party evidence does not incorporate Applicant’s mark as a whole, or indicate that Applicant’s mark is commonly used in the industry.
Rather, Applicant’s mark – BARE TRAPS REBOUND TECHNOLOGY - is a unitary mark that creates a single and distinct commercial impression. A mark is considered “unitary” when it creates a commercial impression separate and apart from any allegedly unregistrable component. The test when determining whether a mark is unitary inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable. See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). The inquiry focuses on “how the average purchaser would encounter the mark under normal marketing of such goods and also ... what the reaction of the average purchaser would be to this display of the mark.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting In re Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)). If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is required. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052.
Here, BARE TRAPS REBOUND TECHNOLOGY will be viewed as an integrated, unitary mark rather than as separate components. In In re Sears Brand LLC, supra, the Board determined:
In the present case, we find that the mark SEARS BLUE SERVICE CREW is a unitary mark because the words have been put together to function as a unit. The term “Service Crew” does not stand out by itself pointing to the services. Consumers will not break the mark SEARS BLUE SERVICE CREW into its component parts but will regard it as a unitary mark, in part, because the mark rhymes. In any event, we find that consumers will perceive applicant’s mark, as shown in applicant’s website, as identifying applicant’s employees the BLUE SERVICE CREW or SEARS BLUE SERVICE CREW but not “Service Crew” alone. See In re J.R. Carlson Laboratories, Inc., 183 USPQ 509, 511 (TTAB 1974) (consumers will call for applicant’s product as E GEM notwithstanding the fact that they would recognize the descriptive significance of the letter “E”). For these reasons, we believe that purchasers will not go through the mental process of parsing the mark SEARS BLUE SERVICE CREW into its component parts, but will regard it as a unitary mark. Under the circumstances presented by the record before us, the registration of the mark SEARS BLUE SERVICE CREW does not create or recognize any rights in the individual elements of the mark apart from the mark as a whole. Therefore, we conclude that the requirement for a disclaimer of the term “Service Crew” is not necessary.
Similarly, here, purchasers will not parse the mark BARE TRAPS REBOUND TECHNOLOGY into its component parts but will regard it as a unitary mark because Applicant’s mark consists of an odd juxtaposition of terms that require consumers to use their imagination in order to determine the nature of the goods. The terms “BARE” and “TRAPS” certainly have no meaning in connection with footwear and constitute a double entendre, particularly when combined with “REBOUND TECHNOLOGY”. Thus, customers will view the mark as a whole without readily understanding the meaning of any of the separate components, including “rebound technology”. Does it mean that someone or something is springing away from a type of animal trap (since “bare” brings to mind “bear”)? Does the mark relate to someone bouncing back from being caught in a physical or relational “trap”? Customers are clearly required to use their imagination to understand the meaning and will not view “rebound technology” apart for the unitary mark as a whole.
Further, Applicant notes that several third parties have registered marks containing the term REBOUND for clothing or footwear on the Principal Register, and without submitting disclaimers. A sample listing of such marks is shown below:
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TM/AN/RN/Disclaimer |
Status/Key Dates |
Full Goods/Services |
Owner |
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BOGSREBOUND
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Registered
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(Int'l Class: 25)
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Weyco Group, Inc.
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OPERATION REBOUND
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Registered 8 & 15
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(Int'l Class: 25)
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Challenged Athletes, Inc.
|
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REBOUND CS
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Allowed - Intent to Use Notice of Allowance Issued
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(Int'l Class: 25)
|
Bbc International LLC
|
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REBOUND RACER
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Registered
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(Int'l Class: 25)
|
Brooks Sports, Inc.
|
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WRINKLE REBOUND
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Renewed
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(Int'l Class: 25)
|
Ammeen, James
|
Finally, any doubts regarding whether a term is merely descriptive should be resolved in favor of Applicant, see. In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and authority cited therein.
Conclusion
Based on the foregoing, it is Applicant’s belief the referenced application is in condition for publication, without the requirement of a disclaimer, and such action is respectfully requested.