| 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 | 86826062 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK FILE NAME | http://tmng-al.gov.uspto.report/resting2/api/img/86826062/large |
| LITERAL ELEMENT | WD-40 EZ-REACH FLEXIBLE STRAW |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) yellow, blue, white, red, silver is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of WD-40 in blue inside a yellow shield with the words "EZ-REACH" below in white lettering on a top line and the words "FLEXIBLE STRAW" in white lettering inside a red rectangular design on the line below with a silver colored tube coming out the right side of the rectangle and running clockwise around all words with the top of the tube having a nozzle above the right side of "EZ-REACH". |
| ARGUMENT(S) | |
|
The Examining Attorney has rejected Applicant’s application for WD-40 EZ REACH FLEXIBLE STRAW and Design ( Applicant’s Mark”). The basis for this rejection is an alleged likelihood of confusion with a registration for EZ REACH (the “Registered Mark” or “Registrant’s Mark”). Applicant disagrees with the Examining Attorney because the sound, appearance and meaning of Applicant’s Mark is significantly different from the Registered Mark. The only words that both marks share are the merely descriptive words “EZ REACH”. Moreover, Applicant’s Mark is dominated by “WD-40” within a yellow shield. The “WD-40” as well as the yellow shield are long standing famous marks and it this portion of Applicant’s Mark that primarily controls the overall commercial impression of Applicant’s Mark. Applicant’s Mark also contains additional words not found in the Registered Mark, “FLEXIBLE STRAW” as well as a substantial design element - a winding tube which further contribute to the commercial impression of Applicant’s mark and distinguish it from the Registered Mark. The Examining Attorney has required that the words “FLEXIBLE STRAW” be disclaimed. Applicant has disclaimed the word “FLEXIBLE” but not “STRAW” because it is Applicant’s position that “STRAW” as used by Applicant is not merely descriptive. The online dictionary, Merriam-Webster, defines “straw” as 1. the dry stems of wheat and other grain plants; 2. a single dry stem of a grain plant ; or 3. a thin tube used for sucking up a drink. None of these definitions describes Applicant’s product or application system or an aspect thereof. While “STRAW” may be suggestive, it is not merely descriptive. Applicant has submitted a disclaimer of the words “EZ-REACH” because these words, as stated above, are merely descriptive of an aspect of Applicant’s goods. “EZ”, according to the online Urban Dictionary means “easy”. EZ-REACH is understood to mean “easy to reach”. The online Thesaurus.com equates “easy to reach” as indicating “accessible” and “handy”. A feature of Applicant’s product as shown in the documentation attached to the Office Action taken from Applicant’s website, is that areas that need application of Applicant’s product that are hard to “reach” can be accessed easily- easy to reach- “EZ REACH”. A term is merely descriptive and therefore unregistrable under Section 2(e)(1) of the Trademark Act if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services with which it is used or is intended to be used. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978. Also a term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant feature, attribute, function, property, ingredient, quality, characteristic, purpose or use of the goods or services. In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986); In re The Weather Channel, Inc., 229 USPQ 854 (TTAB 1985); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973) and TMEP §1209.01(b)). Further, the question of whether a particular term is merely descriptive must be determined, not in the abstract, but in relation to the goods or services for which registration is sought, the context in which the mark is used or is intended to be used, and the possible significance that the mark is likely to have for the average purchaser encountering the goods or services in the marketplace. See In re Abcor Development Corp., supra; In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Here, EZ-REACH is descriptive and therefore has been properly disclaimed. The TTAB has determined that additional distinctive elements may avoid likely confusion where the marks in their entireties convey significantly different commercial impressions or the matter common to the marks is so suggestive or weak that any source-indicating value it has is overwhelmed by the addition of an arbitrary, distinctive element. See, e.g., Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011) (ZU ELEMENTS (stylized) not confusingly similar to ELEMENTS in connection with identical clothing goods due, in part, to suggestiveness of term "elements"); and Knight Textile Corp. v. Jones Investment Co., 75 USPQ 1313 (TTAB 2005) (the mark ESSENTIALS found so highly suggestive that addition of house mark NORTON McNAUGHTON sufficed to distinguish the marks). In this case, Applicant’s mark contains it’s famous house brand “WD-40” and the yellow shield as well as a distinctive design of a winding tube and the words “FLEXIBLE STRAW”. The common words in this case, “EZ REACH” do not even reach a level of “suggestive”, they are merely descriptive. These marks are not confusingly similar and the consuming public will not be confused. In addition to the above, a search of the Internet under “EZ REACH” shows multiple uses of this descriptive phrase. Third-party use of a term in the marketplace may be offered as evidence of a term’s weakness and dilution with respect to a particular field and weighs in favor of narrowing the scope of its protection against subsequent applications. See Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). For the reasons set forth above, Applicant respectfully requests that the rejection be withdrawn and that its application be allowed to proceed to registration. |
|
| GOODS AND/OR SERVICES SECTION (class deleted) | |
| GOODS AND/OR SERVICES SECTION (class added) Original Class (006) | |
| INTERNATIONAL CLASS | 007 |
| DESCRIPTION | |
| Flexible tube application system comprised of a flexible applicator for application of multi-purpose oil-based lubricating and protecting spray, for use in home, garden, automotive, construction, and for skilled tradesmen | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 07/10/2015 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/10/2015 |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use "EZ-REACH" and "FLEXIBLE" apart from the mark as shown. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of "WD-40" in blue inside a yellow shield with the words "EZ-REACH" below in white lettering on a top line and the words "FLEXIBLE STRAW" in white lettering inside a red rectangular design on the line below with a silver colored tube coming out the right side of the rectangle and running clockwise around all words with the top of the tube having a nozzle above the right side of "EZ-REACH". All elements appear on a field of white that represents background and is not a feature of the mark. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kathleen A. Brown/ |
| SIGNATORY'S NAME | Kathleen A. Brown |
| SIGNATORY'S POSITION | Attorney of record, CA bar member |
| SIGNATORY'S PHONE NUMBER | 619 525 3827 |
| DATE SIGNED | 09/14/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 14 20:21:25 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20160914202125892526-868 26062-550ba3236da71d9bbf5 0af7f1fdcb96789ecd88f2fa1 7ad12b58dee0e28c14d246-N/ A-N/A-2016091419342340866 5 |
| 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 Applicant’s application for WD-40 EZ REACH FLEXIBLE STRAW and Design ( Applicant’s Mark”). The basis for this rejection is an alleged likelihood of confusion with a registration for EZ REACH (the “Registered Mark” or “Registrant’s Mark”).
Applicant disagrees with the Examining Attorney because the sound, appearance and meaning of Applicant’s Mark is significantly different from the Registered Mark. The only words that both marks share are the merely descriptive words “EZ REACH”. Moreover, Applicant’s Mark is dominated by “WD-40” within a yellow shield. The “WD-40” as well as the yellow shield are long standing famous marks and it this portion of Applicant’s Mark that primarily controls the overall commercial impression of Applicant’s Mark. Applicant’s Mark also contains additional words not found in the Registered Mark, “FLEXIBLE STRAW” as well as a substantial design element - a winding tube which further contribute to the commercial impression of Applicant’s mark and distinguish it from the Registered Mark.
The Examining Attorney has required that the words “FLEXIBLE STRAW” be disclaimed. Applicant has disclaimed the word “FLEXIBLE” but not “STRAW” because it is Applicant’s position that “STRAW” as used by Applicant is not merely descriptive. The online dictionary, Merriam-Webster, defines “straw” as 1. the dry stems of wheat and other grain plants; 2. a single dry stem of a grain plant ; or 3. a thin tube used for sucking up a drink. None of these definitions describes Applicant’s product or application system or an aspect thereof. While “STRAW” may be suggestive, it is not merely descriptive.
Applicant has submitted a disclaimer of the words “EZ-REACH” because these words, as stated above, are merely descriptive of an aspect of Applicant’s goods. “EZ”, according to the online Urban Dictionary means “easy”. EZ-REACH is understood to mean “easy to reach”. The online Thesaurus.com equates “easy to reach” as indicating “accessible” and “handy”. A feature of Applicant’s product as shown in the documentation attached to the Office Action taken from Applicant’s website, is that areas that need application of Applicant’s product that are hard to “reach” can be accessed easily- easy to reach- “EZ REACH”.
A term is merely descriptive and therefore unregistrable under Section 2(e)(1) of the Trademark Act if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services with which it is used or is intended to be used. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978. Also a term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant feature, attribute, function, property, ingredient, quality, characteristic, purpose or use of the goods or services. In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986); In re The Weather Channel, Inc., 229 USPQ 854 (TTAB 1985); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973) and TMEP §1209.01(b)). Further, the question of whether a particular term is merely descriptive must be determined, not in the abstract, but in relation to the goods or services for which registration is sought, the context in which the mark is used or is intended to be used, and the possible significance that the mark is likely to have for the average purchaser encountering the goods or services in the marketplace. See In re Abcor Development Corp., supra; In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Here, EZ-REACH is descriptive and therefore has been properly disclaimed.
The TTAB has determined that additional distinctive elements may avoid likely confusion where the marks in their entireties convey significantly different commercial impressions or the matter common to the marks is so suggestive or weak that any source-indicating value it has is overwhelmed by the addition of an arbitrary, distinctive element. See, e.g., Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011) (ZU ELEMENTS (stylized) not confusingly similar to ELEMENTS in connection with identical clothing goods due, in part, to suggestiveness of term "elements"); and Knight Textile Corp. v. Jones Investment Co., 75 USPQ 1313 (TTAB 2005) (the mark ESSENTIALS found so highly suggestive that addition of house mark NORTON McNAUGHTON sufficed to distinguish the marks). In this case, Applicant’s mark contains it’s famous house brand “WD-40” and the yellow shield as well as a distinctive design of a winding tube and the words “FLEXIBLE STRAW”. The common words in this case, “EZ REACH” do not even reach a level of “suggestive”, they are merely descriptive. These marks are not confusingly similar and the consuming public will not be confused.
In addition to the above, a search of the Internet under “EZ REACH” shows multiple uses of this descriptive phrase. Third-party use of a term in the marketplace may be offered as evidence of a term’s weakness and dilution with respect to a particular field and weighs in favor of narrowing the scope of its protection against subsequent applications. See Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005).
For the reasons set forth above, Applicant respectfully requests that the rejection be withdrawn and that its application be allowed to proceed to registration.