| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87405849 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87405849/mark.png |
| LITERAL ELEMENT | CLARI-T |
| 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) | |
|
This responds to the July 22, 2017 Office Action (“Office Action”), wherein the Trademark Office (“the Office”) initially refused registration based on the following alleged issues: (a) Section 2(d) Refusal – Likelihood of Confusion; and (b) Section 2(e)(1) Refusal - Merely Descriptive. Likewise, the Office Action issued an advisory regarding prior pending applications. Applicant addresses these issues as follows. Section 2(d) Refusal and Advisory The Office has initially refused registration of the present application under Section 2(d) (likelihood of confusion) in view of the mark CLAR8TY in U.S. Trademark Registration No. 4593987. Regarding, the Section 2(d) refusal, however, Applicant contends that there is not a likelihood of confusion created with respect to the cited registration. The Examining Attorney has the initial burden to bring forth evidence to establish a likelihood of confusion. See, e.g., In re Giovanni Food Co., 97 USPQ2d at 1991 (finding the Office had not met its burden of proving likelihood of confusion where the marks were JUMPIN’ JACKS for barbeque sauce and JUMPIN JACK’S for catering services, because evidence indicating that some restaurants also provide catering services and sell barbeque sauce was not sufficient to establish catering services alone are related to barbeque sauce); In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together). Applicant contends that there is not a likelihood of confusion in view of the differences between Applicant’s mark and the mark set forth in the cited registration and other factors as explained herein. Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “[T]here is no mechanical test for determining likelihood of confusion and ‘each case must be decided on its own facts.’ Du Pont, 476 F.2d at 1361, 177 USPQ at 567. In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods/services are related, because . . . the presence in the marketplace of a significant number of similar marks in use on similar goods/services . . . or another established fact probative of the effect of use.” MPEP 1207.01. As noted in TMEP 1207.01(b), the Court of Appeals for the Federal Circuit has provided the following guidance for evaluating the marks: The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, . . . there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (footnotes omitted) (citations omitted). In the present circumstances, the comparison is between the marks CLAR8TY and CLARI-T. Significantly, the marks carry a different appearance, sound, and commercial impression. These differences are even more significant considering the highly diluted character of the purported common term “clarity”. First, the term “8” or “eight” in between “CLAR” and “TY” in the cited mark gives a significant different appearance to the marks, particularly in view of the awkward appearance of the number “8” in the middle of the letters. Second, the marks have different sounds. For example, the number 8 (eight) sounds like “ate”. No similar sound is found in Applicant’s mark. To the contrary, the second syllable of Applicant’s mark sounds like “it”. Third, the commercial impressions are different. For example, the number 8 in the cited mark carries a double entendre. It carries the commercial impression that the associated goods or services have eight characteristics or elements. This is supported by statements from the registrations website discussing the 8 elements of the registrants goods/services associated with their mark. See accompanying screenshots of third party registrant’s website. Also, the number 8 is also symbolically the infinity sign thus suggesting the infinite possibilities of the registrant’s goods/services. This is also supported by statements from the registrations website discussing the infinity sign and infinite possibilities of the 8 elements of CLAR8TY. See accompanying screenshots of third-party registrant’s website. Furthermore, additions or deletions to marks can be sufficient to avoid a likelihood of confusion if the matter common to the marks is diluted or the marks have different commercial impressions. TMEP 1207.01(b)(iii). See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely cause confusion, based, in part, on findings that the phrase "City Bank" is frequently used in the banking industry and that "CAPITAL" is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" is descriptive as applied to the relevant goods and thus has no source-indicating significance); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the shared descriptive wording "SPORTSMAN’S WAREHOUSE," this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and stylization in the respective marks); In re Farm Fresh Catfish Co., 231 USPQ 495, 495-96 (TTAB 1986) (holding CATFISH BOBBERS (with "CATFISH" disclaimed) for fish, and BOBBER for restaurant services, not likely to cause confusion, because the word "BOBBER" has different connotation when used in connection with the respective goods and services); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with "GOLD’N CRUST" disclaimed) for coating and seasoning for food items, not likely to cause confusion, noting that, because "GOLDEN CRUST" and "GOLD’N CRUST" are highly suggestive as applied to the respective goods, the addition of "ADOLPH’S" is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN RIVER" is sufficient to avoid a likelihood of confusion); see also TMEP §1207.01(b)(viii). The purported common matter between Applicant’s mark and the mark in the cited registration is the term “clarity”. However, “clarity” is a highly diluted term. For example, there are 503 live registrations/applications of record with the USPTO for marks using the term CLARITY. Of those, there are 34 active registrations/applications in Class 005 alone. Also, there are also 9 active registrations/applications for marks containing CLARITY where the description of goods is for “supplements”. Also telling is that there are 11 live registrations/applications for marks containing KLARITY, four of which are in Class 005, at least one of which is for dietary supplements. See USPTO TESS search results provided herewith. Thus, in view of the diluted use for “clarity” and other factors discussed above, consumers are not likely to confuse Applicant’s mark with the mark set forth in the cited registration. For similar reasons, Applicant further contends that there is not a likelihood of confusion between Applicant’s mark and the marks set forth in the trademark application cited under the Prior-Filed Applications Advisory. Accordingly, Applicant respectfully requests that the Section 2(d) refusal and Advisory be withdrawn and that the present application be approved for publication. Section 2(e)(1) – Merely Descriptive Refusal The Trademark Office bears the burden of showing that a mark is merely descriptive of the relevant goods and services. In re Merrill, Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q. 1141, 1143 (Fed. Cir. 1987). Moreover, where there are doubts regarding the line between descriptive and suggestive, the doubts must be resolved in favor of Applicant. See, e.g., In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983)(doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972)(doubts to be resolved in favor of publication; refusal reversed). Also, marks that have been refused registration based on grounds of descriptiveness may be registrable under §2(f). See, e.g., TMEP §1209.04; TMEP § 1212.02(a); 15 U.S.C. §1052(f). Moreover, “[a]n applicant may argue the merits of an examining attorney’s refusal and, in the alternative, claim that the matter sought to be registered has acquired distinctiveness under §2(f).” See TMEP § 1212.02(c). Applicant contends that its mark CLARI-T is not descriptive of the goods identified in the Application, as explained hereafter. The Office asserts that the term “clarity” is descriptive. The term “clarity” has multiple meanings. See sample definitions provided herewith. In context of the various definitions, “clarity” is no more than suggestive as relates to Applicant’s goods. In any event, Applicant’s mark is CLARI-T, not CLARITY. And to the extent the suggested meaning of CLARI-T is “clarity”, the term “clarity” can be disclaimed apart from the mark. As noted above, where there are doubts regarding the line between descriptive and suggestive, the doubts must be resolved in favor of Applicant. See, e.g., In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983)(doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972)(doubts to be resolved in favor of publication; refusal reversed). For the foregoing reasons, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn and that the present application be approved for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| JPG FILE(S) | \\TICRS\EXPORT17\IMAGEOUT 17\874\058\87405849\xml5\ ROA0021.JPG |
| ORIGINAL PDF FILE | evi_65126120226-20180122185600693108_._2018-01-22-CLAR8TY-8-Elements.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
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| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_65126120226-20180122185600693108_._2018-01-22-CLAR8TY-Infinity.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
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| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0007.JPG | |
| ORIGINAL PDF FILE | evi_65126120226-20180122185600693108_._2018-01-22-TESS-Clarity-503-Live.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
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| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0009.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0011.JPG | |
| ORIGINAL PDF FILE | evi_65126120226-20180122185600693108_._2018-01-22-TESS-Clarity-IC-005-34-Live.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0012.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0013.JPG | |
| ORIGINAL PDF FILE | evi_65126120226-20180122185600693108_._2018-01-22-TESS-Clarity-Supp-9-Live.pdf |
| CONVERTED PDF FILE(S) (1 page) |
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| ORIGINAL PDF FILE | evi_65126120226-20180122185600693108_._2018-01-22-TESS-Klarity-11-Live.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0015.JPG |
| ORIGINAL PDF FILE | evi_65126120226-20180122185600693108_._2018-01-22-Definition-MERR_Clarity.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
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| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0017.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0018.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0019.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0020.JPG | |
| ORIGINAL PDF FILE | evi_65126120226-20180122185600693108_._2018-01-22-Definition-VOCAB_Clarity.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
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| \\TICRS\EXPORT17\IMAGEOUT17\874\058\87405849\xml5\ROA0023.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Evidence of commercial impression Evidence of dilution Dictionary definitions re "clarity" |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Perry S. Clegg/ |
| SIGNATORY'S NAME | Perry S. Clegg |
| SIGNATORY'S POSITION | Attorney of record, member Utah State Bar |
| SIGNATORY'S PHONE NUMBER | 801-532-3040 |
| DATE SIGNED | 01/22/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jan 22 19:17:54 EST 2018 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20180122191754799894-8740 5849-510d5bbc19953b6d3815 9387f17cc9b7bf68bb331b93c 36d9dbacebf5662e769-N/A-N /A-20180122185600693108 |
| 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 09/20/2020) |
This responds to the July 22, 2017 Office Action (“Office Action”), wherein the Trademark Office (“the Office”) initially refused registration based on the following alleged issues: (a) Section 2(d) Refusal – Likelihood of Confusion; and (b) Section 2(e)(1) Refusal - Merely Descriptive. Likewise, the Office Action issued an advisory regarding prior pending applications. Applicant addresses these issues as follows.
Section 2(d) Refusal and Advisory
The Office has initially refused registration of the present application under Section 2(d) (likelihood of confusion) in view of the mark CLAR8TY in U.S. Trademark Registration No. 4593987. Regarding, the Section 2(d) refusal, however, Applicant contends that there is not a likelihood of confusion created with respect to the cited registration.
The Examining Attorney has the initial burden to bring forth evidence to establish a likelihood of confusion. See, e.g., In re Giovanni Food Co., 97 USPQ2d at 1991 (finding the Office had not met its burden of proving likelihood of confusion where the marks were JUMPIN’ JACKS for barbeque sauce and JUMPIN JACK’S for catering services, because evidence indicating that some restaurants also provide catering services and sell barbeque sauce was not sufficient to establish catering services alone are related to barbeque sauce); In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with caffeine are related goods because there was no evidence that vodka and wine emanate from a single source under a single mark or that such goods are complementary products that would be bought and used together).
Applicant contends that there is not a likelihood of confusion in view of the differences between Applicant’s mark and the mark set forth in the cited registration and other factors as explained herein.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “[T]here is no mechanical test for determining likelihood of confusion and ‘each case must be decided on its own facts.’ Du Pont, 476 F.2d at 1361, 177 USPQ at 567. In some cases, a determination that there is no likelihood of confusion may be appropriate, even where the marks are similar and the goods/services are related, because . . . the presence in the marketplace of a significant number of similar marks in use on similar goods/services . . . or another established fact probative of the effect of use.” MPEP 1207.01.
As noted in TMEP 1207.01(b), the Court of Appeals for the Federal Circuit has provided the following guidance for evaluating the marks:
The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, . . . there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (footnotes omitted) (citations omitted).
In the present circumstances, the comparison is between the marks CLAR8TY and CLARI-T. Significantly, the marks carry a different appearance, sound, and commercial impression. These differences are even more significant considering the highly diluted character of the purported common term “clarity”. First, the term “8” or “eight” in between “CLAR” and “TY” in the cited mark gives a significant different appearance to the marks, particularly in view of the awkward appearance of the number “8” in the middle of the letters. Second, the marks have different sounds. For example, the number 8 (eight) sounds like “ate”. No similar sound is found in Applicant’s mark. To the contrary, the second syllable of Applicant’s mark sounds like “it”. Third, the commercial impressions are different. For example, the number 8 in the cited mark carries a double entendre. It carries the commercial impression that the associated goods or services have eight characteristics or elements. This is supported by statements from the registrations website discussing the 8 elements of the registrants goods/services associated with their mark. See accompanying screenshots of third party registrant’s website. Also, the number 8 is also symbolically the infinity sign thus suggesting the infinite possibilities of the registrant’s goods/services. This is also supported by statements from the registrations website discussing the infinity sign and infinite possibilities of the 8 elements of CLAR8TY. See accompanying screenshots of third-party registrant’s website.
Furthermore, additions or deletions to marks can be sufficient to avoid a likelihood of confusion if the matter common to the marks is diluted or the marks have different commercial impressions. TMEP 1207.01(b)(iii). See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely cause confusion, based, in part, on findings that the phrase "City Bank" is frequently used in the banking industry and that "CAPITAL" is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" is descriptive as applied to the relevant goods and thus has no source-indicating significance); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the shared descriptive wording "SPORTSMAN’S WAREHOUSE," this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and stylization in the respective marks); In re Farm Fresh Catfish Co., 231 USPQ 495, 495-96 (TTAB 1986) (holding CATFISH BOBBERS (with "CATFISH" disclaimed) for fish, and BOBBER for restaurant services, not likely to cause confusion, because the word "BOBBER" has different connotation when used in connection with the respective goods and services); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with "GOLD’N CRUST" disclaimed) for coating and seasoning for food items, not likely to cause confusion, noting that, because "GOLDEN CRUST" and "GOLD’N CRUST" are highly suggestive as applied to the respective goods, the addition of "ADOLPH’S" is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN RIVER" is sufficient to avoid a likelihood of confusion); see also TMEP §1207.01(b)(viii).
The purported common matter between Applicant’s mark and the mark in the cited registration is the term “clarity”. However, “clarity” is a highly diluted term. For example, there are 503 live registrations/applications of record with the USPTO for marks using the term CLARITY. Of those, there are 34 active registrations/applications in Class 005 alone. Also, there are also 9 active registrations/applications for marks containing CLARITY where the description of goods is for “supplements”. Also telling is that there are 11 live registrations/applications for marks containing KLARITY, four of which are in Class 005, at least one of which is for dietary supplements. See USPTO TESS search results provided herewith.
Thus, in view of the diluted use for “clarity” and other factors discussed above, consumers are not likely to confuse Applicant’s mark with the mark set forth in the cited registration. For similar reasons, Applicant further contends that there is not a likelihood of confusion between Applicant’s mark and the marks set forth in the trademark application cited under the Prior-Filed Applications Advisory. Accordingly, Applicant respectfully requests that the Section 2(d) refusal and Advisory be withdrawn and that the present application be approved for publication.
Section 2(e)(1) – Merely Descriptive Refusal
The Trademark Office bears the burden of showing that a mark is merely descriptive of the relevant goods and services. In re Merrill, Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q. 1141, 1143 (Fed. Cir. 1987). Moreover, where there are doubts regarding the line between descriptive and suggestive, the doubts must be resolved in favor of Applicant. See, e.g., In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983)(doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972)(doubts to be resolved in favor of publication; refusal reversed).
Also, marks that have been refused registration based on grounds of descriptiveness may be registrable under §2(f). See, e.g., TMEP §1209.04; TMEP § 1212.02(a); 15 U.S.C. §1052(f). Moreover, “[a]n applicant may argue the merits of an examining attorney’s refusal and, in the alternative, claim that the matter sought to be registered has acquired distinctiveness under §2(f).” See TMEP § 1212.02(c).
Applicant contends that its mark CLARI-T is not descriptive of the goods identified in the Application, as explained hereafter. The Office asserts that the term “clarity” is descriptive. The term “clarity” has multiple meanings. See sample definitions provided herewith. In context of the various definitions, “clarity” is no more than suggestive as relates to Applicant’s goods. In any event, Applicant’s mark is CLARI-T, not CLARITY. And to the extent the suggested meaning of CLARI-T is “clarity”, the term “clarity” can be disclaimed apart from the mark.
As noted above, where there are doubts regarding the line between descriptive and suggestive, the doubts must be resolved in favor of Applicant. See, e.g., In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983)(doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972)(doubts to be resolved in favor of publication; refusal reversed). For the foregoing reasons, Applicant respectfully requests that the Section 2(e)(1) refusal be withdrawn and that the present application be approved for publication.
