| 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 | 86802110 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION (current) | |
| MARK FILE NAME | http://tmng-al.gov.uspto.report/resting2/api/img/86802110/large |
| LITERAL ELEMENT | ION |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of ion in an orbit design. |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT16\IMAGEOUT 16\868\021\86802110\xml6\ ROA0002.JPG |
| LITERAL ELEMENT | ION |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR MARK | NO |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of ion in an orbit design. |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 513 x 570 |
| ARGUMENT(S) | |
|
Applicant is providing a clearer drawing as requested by the Examining Attorney.
The Examining Attorney has refused registration on the Principal Register under Trademark Act Section 2(e)(1), on the ground that the term ION is descriptive of Applicant’s goods, and on the ground that the design portion of Applicant’s Mark is not sufficiently distinctive.
Applicant respectfully submits that Applicant’s Mark is not descriptive of Applicant’s goods, which are “Hair combs and brushes.” The Examining Attorney alleges that “ION” merely describes a feature of Applicant’s goods. The Examining Attorney ignores the fact that the term ION in no way describes “hair combs and brushes.”
Applicant also submits that the design portion of Applicant’s Mark is an “orbit” design which is an integral and carefully chosen aspect of Applicant’s Mark. The design element of the mark appears to emanate from the “n” in “ion” to form an orbit-shaped oval or ellipse design. The term ION combined with this “orbit design” is a unitary mark. It is a purposeful artistic creation that reinforces a distinct impression of a comet in orbit that is wholly unrelated to Applicant’s goods.
In light of the above, Applicant submits that its application is entitled to registration on the Principal Register.
Applicant further notes that Applicant’s related application No. 85912271, for the identical ION and Design mark, has been approved for publication on the Principal Register under Section 2(f) for goods related to the goods in the subject application. Applicant respectfully submits that the subject mark, like Applicant’s related application 85912271, is also entitled to registration on the Principal Register under Section 2(f). While no Examining Attorney is bound to the decisions of earlier Examining Attorneys in other cases, an Examining Attorney may not act in an arbitrary and capricious manner or abuse discretion, as such is contrary to the Administrative Procedure Act. See also, 5 U.S. Code § 706. In the instant case, where an identical mark is deemed to be registrable for related goods, Applicant’s mark should also be passed to publication. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Janice Housey/ |
| SIGNATORY'S NAME | Peter Reynolds |
| SIGNATORY'S POSITION | Senior Attorney |
| DATE SIGNED | 05/06/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 06 00:21:21 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0160506002121439455-86802 110-55033e89cb586f7841296 2fd40cefe4bbc8838b194816a fd48cf8ab0d7b635c5-N/A-N/ A-20160505073432922088 |
| 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 is providing a clearer drawing as requested by the Examining Attorney.
The Examining Attorney has refused registration on the Principal Register under Trademark Act Section 2(e)(1), on the ground that the term ION is descriptive of Applicant’s goods, and on the ground that the design portion of Applicant’s Mark is not sufficiently distinctive.
Applicant respectfully submits that Applicant’s Mark is not descriptive of Applicant’s goods, which are “Hair combs and brushes.” The Examining Attorney alleges that “ION” merely describes a feature of Applicant’s goods. The Examining Attorney ignores the fact that the term ION in no way describes “hair combs and brushes.”
Applicant also submits that the design portion of Applicant’s Mark is an “orbit” design which is an integral and carefully chosen aspect of Applicant’s Mark. The design element of the mark appears to emanate from the “n” in “ion” to form an orbit-shaped oval or ellipse design. The term ION combined with this “orbit design” is a unitary mark. It is a purposeful artistic creation that reinforces a distinct impression of a comet in orbit that is wholly unrelated to Applicant’s goods.
In light of the above, Applicant submits that its application is entitled to registration on the Principal Register.
Applicant further notes that Applicant’s related application No. 85912271, for the identical ION and Design mark, has been approved for publication on the Principal Register under Section 2(f) for goods related to the goods in the subject application. Applicant respectfully submits that the subject mark, like Applicant’s related application 85912271, is also entitled to registration on the Principal Register under Section 2(f). While no Examining Attorney is bound to the decisions of earlier Examining Attorneys in other cases, an Examining Attorney may not act in an arbitrary and capricious manner or abuse discretion, as such is contrary to the Administrative Procedure Act. See also, 5 U.S. Code § 706. In the instant case, where an identical mark is deemed to be registrable for related goods, Applicant’s mark should also be passed to publication.
