Response to Office Action

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)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88002177 RANGE PRO(Standard Characters, see http://uspto.report/TM/88002177/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney bears the burden of presenting a prima facie case that a mark is merely descriptive before the Examining Attorney can properly reject the mark. In re Microsoft Corp., 68 USPQ2d 1195, 1200-1201 (TTAB 2003). To carry this burden, the Examining Attorney must present substantial evidence that the mark is merely descriptive. Id. Even when doubts exist as to whether a term is descriptive as applied to the goods or services for which registration is sought, it is the practice of the Trademark Trial and Appeal Board to resolve those doubts in favor of the Applicant, and allow the mark to register. In re Grand Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994). Here, the descriptiveness refusal is inappropriate because the meaning of Applicant?s RANGE PRO mark is too vague and nebulous to immediately describe a significant feature or characteristic of the identified ?firearms? goods with the required degree of particularity. Rather, when an average consumer encounters the Applicant?s RANGE PRO mark in connection with firearms, they are left to wonder what, if anything, might be ?range? and/or ?pro? and/or ?RANGE PRO? about Applicant?s goods, especially as amended. If consumers must employ a multi-stage reasoning process, rather than finding an instantaneous understanding from the mark of an attribute of the product, then the mark is suggestive and not merely descriptive. See Nautilus Group Inc. v. ICON Health and Fitness Inc., 372 F2d 1330, 71 USPQ2d 1173 (Fed. Cir. 2004) and cases cited therein. The line between a suggestive mark and a descriptive mark is never absolutely clear, and is usually subjectively defined. The Trademark Trial and Appeal Board has adopted a three-part test to help determine whether or not a mark is descriptive or suggestive. The test consists of the degree of imagination necessary to understand the product, the competitor's need to use the same terms, and the competitors who currently use the same terms. See No Nonsense Fashions, Inc. v Consolidated Food Corp., 226 U.S.P.Q. 502 (TTAB 1985). Under the degree of imagination test, the more imagination that is required by a consumer to get some direct description of the product or service from the mark, the more likely the term is suggestive, see Railroad Salvage of Connecticut, Inc. v. Railroad Salvage, Inc., 561 Fed. 1014 (D.C.R.I. 1983). When a consumer sees or hears the mark RANGE PRO, he or she may have a vague understanding that this is related to firearms or even things having to do with firearm accessories, but there is no instantaneous connection with firearms or firearm accessories or gun cases. In this case, the term merely suggests that the goods might be associated with firearms in some fashion. More importantly, the term is not descriptive when applied to the goods because there is no instantaneous mental connection between RANGE PRO and Applicant?s goods. Since there are many different possible interpretations for this term with regard to the goods, this means that the term cannot be said to ?merely? describe the goods. Moreover, to refuse registration of a mark based on descriptiveness under the Lanham Act, the mark must be merely descriptive, in other words, it must tell a potential customer only what the goods are or what their function is. If it does not clearly tell the potential customer what the goods are and what there is, then it is not merely descriptive. See In re Colonial Stores Inc., 157 U.S.P.Q. 382 (CCPA 1968). Since there is no instantaneous connection, it is far more likely that the mark is suggestive than descriptive, see Stix Products, Inc. v United Merchants and Manufacturers, Inc., 295 Fed. Supp. 479 (S.D.N.Y. 1968). The second test in the descriptiveness analysis is the competitor?s need. This test inquires into the probability that a competitor may need the mark to fairly describe his goods or services. If the competitor is likely to need the mark, it is more likely that the mark is descriptive, see Educational Development Corp. v. Economy Company, 562 Fed.2d 26 (10th Cir. 1977). Applicant contends that this is unlikely for RANGE PRO. There are many other words that would be far easier to use to convey a direct description of Applicant?s goods, many of which would be far more easily understood and require fewer mental gymnastics than the mark chosen by the Applicant. It is highly unlikely that any competitor needs the words RANGE PRO to describe its goods or services. The third test used to determine whether a mark is descriptive or suggestive is the competitor?s use test. Under this test, if competitors are not already using a term to describe their goods or services, this is evidence that the term is neither a natural nor obvious way to describe the goods or services, see Firestone Tire and Rubber Company v. Good Year Tire and Rubber Company, 186 U.S.P.Q. 557 (TTAB 1975). The fact that the Examining Attorney found no prior similar registrations is certainly one indication that no competitors are using the complete mark, as is the lack of evidence of any kind of use by third parties. The Applicant is not aware of any competitors who use this mark in the industry, which is an indication that the mark is not a natural or obvious way to describe the goods in question. Essentially, all three of the tests indicate that the mark is suggestive. An application of the degree of imagination test indicates that the consumer does not get an immediate idea of the features, functions, qualities or characteristics of the goods. The competitor?s needs test shows that there are many other names which the competitor could use and probably would use in order to convey an immediate understanding of the goods, and the fact that no competitors apparently use these same terms indicates that it is not a natural or obvious way to describe the type of goods in question. Thus, reconsideration of the present application and placement of Applicant's mark RANGE PRO on the Principal Register is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 013 for Firearm accessories
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Firearm accessories; Firearm accessories, namely, gun casesClass 013 for Firearm accessories, namely, gun cases
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Trent C. Keisling/     Date: 04/08/2019
Signatory's Name: Trent C. Keisling
Signatory's Position: Attorney of Record, AR bar member

Signatory's Phone Number: 479-251-0800

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88002177
Internet Transmission Date: Mon Apr 08 16:40:31 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201904081640319
48147-88002177-620eb616c40869efd995e9d5f
9c1a8a89d80188f9113ec2ff098542698bb128ad
a-N/A-N/A-20190408163623900310