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. 88009038 QUICKRELEASE(Standard Characters, see http://uspto.report/TM/88009038/mark.png) has been amended as follows:

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

THE MARK IS NOT MERELY DESCRIPTIVE

The Office Action (p. 2) asserts that Applicant’s mark is merely descriptive because:

The word “quick” means moving or functioning rapidly and energetically; speedy. The word “release” means to set free from physical restraint or binding; let go. Please see the attached definitions from the American Heritage Dictionary. When combined, the wording “QUICK RELEASE” describes a feature of the goods, which can be released from the wall rapidly or quickly.

Applicant contends, however, that Applicant’s mark “QUICKRELEASE” does not merely (or only) describe Applicant’s goods. 

Applicant’s mark does not merely describe the goods, and is at most only a suggestive term.  A mark is suggestive when it requires some imagination, thought, and perception to reach a conclusion as to the nature of the goods or services designated by the mark.  See Vision Center v. Opticks, Inc., 596 F.2d 111, 115-16 (5th Cir. 1979); In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382, 383 (C.C.P.A. 1968).  “To be characterized as ‘descriptive,’ a term must directly give some reasonably accurate or tolerably distinct knowledge of the characteristic of a product.”  J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition, § 11:19 (4th ed. 2010).  Applicant contends, however, that Applicant’s mark “QUICKRELEASE” does not merely (or only) describe Applicant’s goods, but is at most only suggestive. 

A word is capable of functioning as a trademark even if the word is suggestive of qualities of the product or service, but not entirely descriptive.  See Playboy Enters., Inc. v. Chuckleberry Publ’g. Inc., 687 F.2d 563 (2^nd Cir. 1982) (finding the mark PLAYBOY not merely descriptive despite the court’s admission that the word does describe at least some aspects of the magazine’s readership).  Indeed, a descriptive term immediately and clearly conveys characteristics of a product, whereas a suggestive term only indirectly conveys these things.  See, e.g., Levi Strauss & Co. v. R. Josephs Sportswear, 28 U.S.P.Q.2d 1464 (T.T.A.B. 1993) (finding ACTION SLACKS for pants not merely descriptive).  Thus, Applicant submits that imagination, thought, and perception are required to reach a conclusion as to the nature of Applicant’s services.

In resolving whether a mark is “merely descriptive,” the term “merely” means “only.”  See In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A. 1968).  In other words, when considered with the particular service, a merely descriptive mark does nothing but describe the goods or services.  See id. (emphasis added).  Applicant’s mark does not directly describe, but at most onlysuggests characteristics of Applicant’s goods and services. In fact, in order to reach a conclusion about the precise nature of Applicant’s goods and services, a consumer would necessarily need to use imagination, thought, and perception. Accordingly, Applicant’s mark is not merely descriptive.

In a case involving the descriptiveness inquiry, Oreck Holdings, LLC v. BISSELL Homecare, Inc., Opposition No. 91173831 (T.T.A.B. Feb. 16, 2010) (not precedential), the TTAB dismissed the opposition on the grounds that the mark HEALTHY HOME VACUUM (“vacuum” disclaimed) is not merely descriptive for vacuum cleaners.  In rendering its decision, the TTAB discussed the “fine line” that often exists between descriptive and suggestive marks. 

In alleging that the mark was descriptive in the Oreck case, Oreck asserted that the mark was associated with vacuum cleaners that are intended to create a “healthy home” through the use of advanced filtration.  Bissell, however, argued that the mark was, at most, suggestive of a possible result of using the product, thereby necessitating thought and imagination on the part of consumers.  The Board determined that Bissell’s mark fell on the suggestive side of the line because it did not immediately describe a characteristic or feature of Bissell’s vacuum cleaners with any degree of particularity—rather, the mark at most indirectly suggested that “use of applicant’s vacuum cleaner somehow [would] result in an environment-friendly home.”

Likewise, Applicant’s QUICKRELEASE mark does not directly describe, but at most only suggests, characteristics of Applicant’s goods. As previously indicated, a word is capable of functioning as a trademark even if the word is suggestive of qualities of the services and goods, but not entirely descriptive.  Indeed, a descriptive term immediately and clearly conveys characteristics of a product, whereas a suggestive term only indirectly conveys these things.  Applicant respectfully submits that the mark “QUICKRELEASE,” when taken in the abstract, does not immediately and directly indicate “safety gate mounting” or “safety rail mountings.”

The Office Action alleges that “the wording ‘QUICK RELEASE’ describes a feature of the goods.”  Office Action, p. 2.  Applicant respectfully disagrees and submits that a consumer would not consider the mark “QUICKRELEASE,” when read together as a complete mark, as merely descriptive of the identified goods.  Rather, a consumer would have to make a mental leap between these goods and the mark “QUICKRELEASE.” 

Indeed, the Office Action appears to assume that “QUICKRELEASE” is a readily understood phrase that has a particular meaning.  `However, “where the mark is a phrase, the examining attorney cannot simply cite definitions and generic uses of the individual components of the mark, but must provide evidence of the meaning of the composite mark as a whole.”  TMEP 1209.01(c)(i) (emphasis added).  Here, the Office Action cites definitions for the terms “QUICK” and “RELEASE” separately, without providing any supporting evidence of the mark as a whole.  Instead, the Office Action parses out the mark into its separate components, “quick” and “release,” and then alleges that when these terms are combined, they are descriptive of Applicant’s goods.  This is inappropriate to support a rejection that a mark comprising multiple terms is merely descriptive as a whole. 

The fact that each of the terms “quick” and “release” is found separately in the dictionary does not render the QUICKRELEASE mark as a whole merely descriptive.  In fact, none of these terms, individually or as a whole, immediately convey information about Applicant’s goods or services.  Applicant notes that while the Office Action includes dictionary definitions for both “quick” and “release,” the evidence provided by the Office Action illustrates that there are multiple, incongruous meanings for both the terms “quick” and “release.”  For example, the dictionary definitions provided by the Office Action for the terms “quick” and “release” indicate that there are at least six different definitions for “quick” and at least four different definitions for “release.”  As such, the terms “quick” and “release” have multiple, incongruous meanings.  Indeed, none of these definitions alone or in combination would immediately convey “dietary supplements” or “breath fresheners.”    

Indeed, [i]t has been held that a mark that connotes at least two meanings, one possibly descriptive and the other suggestive of some other association, should be deemed suggestive rather than descriptive, as the mark is not "merely descriptive." For example, the mark POLY PITCHER on polyethylene pitchers both connotes a description of the polyethylene ingredient of the product and also is reminiscent or suggestive of Molly Pitcher of Revolutionary time.  Bliss Craft of Hollywood v. United PlasticsCo., 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).  The court concluded that the mark was "an incongruous expression" and has the "characteristics of a coined or fanciful mark.”  Id.

Therefore, Applicant’s mark is at most only suggestive and not merely descriptive.  Accordingly, Applicant requests that this rejection be withdrawn. 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 020 for Household safety devices such as safety gate mountings and safety rail mountings
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/01/2017 and first used in commerce at least as early as 04/01/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Household safety devices such as safety gate mountings and safety rail mountings; Household safety devices, namely, non-metal safety gate mounting brackets and non-metal safety rail mounting bracketsClass 020 for Household safety devices, namely, non-metal safety gate mounting brackets and non-metal safety rail mounting brackets
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/01/2017 and first used in commerce at least as early as 04/01/2017 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Miscellaneous Statement
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In Re Application of: Regal Lager, Inc. Examining Attorney: Katherine DuBray Serial No.: 88/009,038 Law Office: 118 Filed: June 20, 2018 Docket No.: 061804-3160 For: QUICKRELEASE RESPONSE TO OFFICE ACTION MAILED OCTOBER 24, 2018 Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 I. AMENDMENT OF IDENTICATION OF GOODS The Office Action asserts that the wording in the identification of goods is not acceptable because Applicant used the same language to describe goods in more than one class. Please amend the identification of goods for Class 020 to recite: Household safety devices, namely, non-metal such as safety gate mounting brackets and non-metal safety rail mounting brackets A clean copy is provided below for your convenience: Household safety devices, namely, non-metal safety gate mounting brackets and non-metal safety rail mounting brackets Applicant asserts that the identification of the goods is definite in view of the amended language. The amendment is consistent with the Examiner's suggested changes in the Office Action. II. CLASSIFICATION Applicant chooses to maintain class 020, but not to pursue class 006 at this time. Applicant reserves the right to pursue such classes at a later time. For at least these reasons, Applicant respectfully requests that the provisional refusal be withdrawn. III. THE MARK IS NOT MERELY DESCRIPTIVE The Office Action (p. 2) asserts that Applicant's mark is merely descriptive because: The word "quick" means moving or functioning rapidly and energetically; speedy. The word "release" means to set free from physical restraint or binding; let go. Please see the attached definitions from the American Heritage Dictionary. When combined, the wording "QUICK RELEASE" describes a feature of the goods, which can be released from the wall rapidly or quickly. Applicant contends, however, that Applicant's mark "QUICKRELEASE" does not merely (or only) describe Applicant's goods. Applicant's mark does not merely describe the goods, and is at most only a suggestive term. A mark is suggestive when it requires some imagination, thought, and perception to reach a conclusion as to the nature of the goods or services designated by the mark. See Vision Center v. Opticks, Inc., 596 F.2d 111, 115-16 (5th Cir. 1979); In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382, 383 (C.C.P.A. 1968). "To be characterized as 'descriptive,' a term must directly give some reasonably accurate or tolerably distinct knowledge of the characteristic of a product." J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition, § 11:19 (4th ed. 2010). Applicant contends, however, that Applicant's mark "QUICKRELEASE" does not merely (or only) describe Applicant's goods, but is at most only suggestive. A word is capable of functioning as a trademark even if the word is suggestive of qualities of the product or service, but not entirely descriptive. See Playboy Enters., Inc. v. Chuckleberry Publ'g. Inc., 687 F.2d 563 (2nd Cir. 1982) (finding the mark PLAYBOY not merely descriptive despite the court's admission that the word does describe at least some aspects of the magazine's readership). Indeed, a descriptive term immediately and clearly conveys characteristics of a product, whereas a suggestive term only indirectly conveys these things. See, e.g., Levi Strauss & Co. v. R. Josephs Sportswear, 28 U.S.P.Q.2d 1464 (T.T.A.B. 1993) (finding ACTION SLACKS for pants not merely descriptive). Thus, Applicant submits that imagination, thought, and perception are required to reach a conclusion as to the nature of Applicant's services. In resolving whether a mark is "merely descriptive," the term "merely" means "only." See In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A. 1968). In other words, when considered with the particular service, a merely descriptive mark does nothing but describe the goods or services. See id. (emphasis added). Applicant's mark does not directly describe, but at most only suggests characteristics of Applicant's goods and services. In fact, in order to reach a conclusion about the precise nature of Applicant's goods and services, a consumer would necessarily need to use imagination, thought, and perception. Accordingly, Applicant's mark is not merely descriptive. In a case involving the descriptiveness inquiry, Oreck Holdings, LLC v. BISSELL Homecare, Inc., Opposition No. 91173831 (T.T.A.B. Feb. 16, 2010) (not precedential), the TTAB dismissed the opposition on the grounds that the mark HEALTHY HOME VACUUM ("vacuum" disclaimed) is not merely descriptive for vacuum cleaners. In rendering its decision, the TTAB discussed the "fine line" that often exists between descriptive and suggestive marks. In alleging that the mark was descriptive in the Oreck case, Oreck asserted that the mark was associated with vacuum cleaners that are intended to create a "healthy home" through the use of advanced filtration. Bissell, however, argued that the mark was, at most, suggestive of a possible result of using the product, thereby necessitating thought and imagination on the part of consumers. The Board determined that Bissell's mark fell on the suggestive side of the line because it did not immediately describe a characteristic or feature of Bissell's vacuum cleaners with any degree of particularity-rather, the mark at most indirectly suggested that "use of applicant's vacuum cleaner somehow [would] result in an environment-friendly home." Likewise, Applicant's QUICKRELEASE mark does not directly describe, but at most only suggests, characteristics of Applicant's goods. As previously indicated, a word is capable of functioning as a trademark even if the word is suggestive of qualities of the services and goods, but not entirely descriptive. Indeed, a descriptive term immediately and clearly conveys characteristics of a product, whereas a suggestive term only indirectly conveys these things. Applicant respectfully submits that the mark "QUICKRELEASE," when taken in the abstract, does not immediately and directly indicate "safety gate mounting" or "safety rail mountings." The Office Action alleges that "the wording 'QUICK RELEASE' describes a feature of the goods." Office Action, p. 2. Applicant respectfully disagrees and submits that a consumer would not consider the mark "QUICKRELEASE," when read together as a complete mark, as merely descriptive of the identified goods. Rather, a consumer would have to make a mental leap between these goods and the mark "QUICKRELEASE." Indeed, the Office Action appears to assume that "QUICKRELEASE" is a readily understood phrase that has a particular meaning. 'However, "where the mark is a phrase, the examining attorney cannot simply cite definitions and generic uses of the individual components of the mark, but must provide evidence of the meaning of the composite mark as a whole." TMEP 1209.01(c)(i) (emphasis added). Here, the Office Action cites definitions for the terms "QUICK" and "RELEASE" separately, without providing any supporting evidence of the mark as a whole. Instead, the Office Action parses out the mark into its separate components, "quick" and "release," and then alleges that when these terms are combined, they are descriptive of Applicant's goods. This is inappropriate to support a rejection that a mark comprising multiple terms is merely descriptive as a whole. The fact that each of the terms "quick" and "release" is found separately in the dictionary does not render the QUICKRELEASE mark as a whole merely descriptive. In fact, none of these terms, individually or as a whole, immediately convey information about Applicant's goods or services. Applicant notes that while the Office Action includes dictionary definitions for both "quick" and "release," the evidence provided by the Office Action illustrates that there are multiple, incongruous meanings for both the terms "quick" and "release." For example, the dictionary definitions provided by the Office Action for the terms "quick" and "release" indicate that there are at least six different definitions for "quick" and at least four different definitions for "release." As such, the terms "quick" and "release" have multiple, incongruous meanings. Indeed, none of these definitions alone or in combination would immediately convey "dietary supplements" or "breath fresheners." Indeed, [i]t has been held that a mark that connotes at least two meanings, one possibly descriptive and the other suggestive of some other association, should be deemed suggestive rather than descriptive, as the mark is not "merely descriptive." For example, the mark POLY PITCHER on polyethylene pitchers both connotes a description of the polyethylene ingredient of the product and also is reminiscent or suggestive of Molly Pitcher of Revolutionary time. Bliss Craft of Hollywood v. United PlasticsCo., 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961). The court concluded that the mark was "an incongruous expression" and has the "characteristics of a coined or fanciful mark." Id. Therefore, Applicant's mark is at most only suggestive and not merely descriptive. Accordingly, Applicant requests that this rejection be withdrawn.


SIGNATURE(S)
Response Signature
Signature: /Randy R. Schoen/     Date: 04/24/2019
Signatory's Name: Randy R. Schoen
Signatory's Position: Attorney of record, GA bar member

Signatory's Phone Number: 770-933-9500

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: 88009038
Internet Transmission Date: Wed Apr 24 20:18:18 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019042420181843
9025-88009038-6207125848f22e4d5b2462e1a3
8d0e87bdbef614b0b5605bf377e115c063e9b116
-N/A-N/A-20190424195319456648