| 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 | 88013741 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88013741/mark.png |
| LITERAL ELEMENT | POLICE |
| 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) | |
| APPLICANT BASE PRODUCT COMPANY LLC?s RESPONSE TO JANUARY 8, 2019 OFFICE ACTION ABOUT APPLICANT?S TRADEMARK APPLICATION APPLICANT SERIAL NO. 88013741 MARK: POLICE CORRESPONDENT E-MAIL: david@lilenfeld.com; kg@lilenfeld.com; robin@lilenfeld.com RESPONSE TO OFFICE ACTION Applicant Base Product Company, LLC (?Applicant?), submits this response to the January 8, 2019 Office Action issued by the Examining Attorney refusing registration for POLICE, Serial No. 85720339 (?Applicant?s Mark?). The examining attorney has refused registration of POLICE on the Principal Register, on the grounds that Applicant?s Mark merely describes the Applicant?s goods. For the reasons set forth below, Applicant respectfully disagrees. ARGUMENT AND CITATION TO AUTHORITY A mark or term is merely descriptive under Section 2(e)(1) of the Act only if it immediately describes an attribute, quality, characteristic, function, feature, purpose or use of the relevant goods or services. (In re: Driven Innovations, Inc., 674 Fed. Appx. 996, 998 (Fed. Cir. 2017)). The attribute must be described with "some particularity," otherwise it is not ?descriptive.? (RJR Foods, Inc. v. Ocean Spray Cranberries, Inc., 174 U.S.P.Q. 244 (T.T.A.B. 1972)). Alternatively, when one must use imagination, mature thought, or follow a multistage reasoning process to determine what characteristics a term identifies, it is suggestive and registrable. (Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1126 (9th Cir. 2014). Additionally, for a refusal to register based on descriptiveness, the Examining Attorney bears the burden of demonstrating the descriptiveness of a mark for which registration is sought. (Booking.com B.V. v. United States Patent and Trademark Office, 915 F.3d 171, 179 (4th Cir. 2019)). Applying these standards, applicant respectfully submits that the Mark POLICE is not merely descriptive for stun guns. Section 2(e)(1) Applicant?s Mark is not merely descriptive. Rather it is at least suggestive, because the Mark does not describe any attribute, quality, characteristic, function, feature, purpose, or use of Applicant?s goods with ?some particularity.? Indeed, the Mark does not describe the goods at all. Instead, the Mark requires consumers to use additional thought, perception, or imagination to comprehend the significance of the Mark in relation to Applicant?s goods. (See Pom Wonderful, 775 F.3d at 1126 (finding that the word ?POM? is suggestive for pomegranate flavored drinks because ?the word ?POM? which is not ascribed independent pomegranate-related meaning by conventions dictionaries ? requires customers to use some additional imagination to decipher the nature of Pom Wonderful?s goods.?)). A consumer would not immediately perceive that the Mark refers to stun guns. First and foremost, it is not apparent from the Mark what Applicant?s goods are: the Mark does not use the terms ?stun? or ?gun?. Additionally, the term POLICE has a large number of possible meanings. As with ?POM,? consumers would not immediately be able to perceive that the Mark refers to stun guns. In fact, conventional dictionaries do not define the term police with reference to stun guns. The Merriam Webster definition of ?police? (attached as Exhibit A), does not include the term ?stun guns?. Nor does the American Heritage Dictionary. (Attached as Exhibit B). As such, the term POLICE does not immediately call to mind ?stun guns.? Indeed, because the term POLICE has several meanings, it falls short of describing Applicant?s services in any degree of particularity. See In re TMS Corp. of the Americas, 200 USPQ 57 (TTAB 1978) (finding THE MONEY SERVICE suggestive of financial services providing transfer of funds); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 952 (TTAB 1981) (finding THE AMERICAN CAF? not merely descriptive of a caf? offering restaurant services because the concept of ?American food? is too vague and nebulous). In In re TMS Corp. of the Americas, the court found that After considering carefully applicant's mark ?THE MONEY SERVICE? in relation to the services set forth in its application papers, namely, financial services wherein funds are transferred to and from a savings account from locations remote from the associated financial institution, it is our opinion that because the mark ?THE MONEY SERVICE? is composed of commonly used words of the English language, it suggests a number of things, but yet falls short of describing applicant's services in any one degree of particularity. To effect a readily understood connection between applicant's mark and its services requires the actual or prospective customer to use thought, imagination and perhaps an exercise in extrapolation. (200 USPQ at 59). In Holiday Inns, the court found that ?while it may be highly suggestive, ?THE AMERICAN CAFE? falls short of being merely descriptive? in connection with restaurant services. (212 USPQ at 952). ?In order to be termed descriptive, the name must immediately tell a potential customer what to expect in the sum total of these concepts, that is the typical ?American? Cafe. Given the wide variety of ethnic groups that have contributed to our national heritage, and whose dishes, d?cor, attitudes, customs and costumes have been blended and refined into what is considered typically American, it appears that the use of that term is nebulous at best.? (Id. (emphasis added)) Additionally, the word ?police? is not highly descriptive of stun guns. The Examiner has concluded that POLICE ?is highly descriptive of stun guns which are categorized as police-grade ? or stun guns for use by police?. However, not all stun guns are categorized as police-grade or for use by police. Exhibit C (attached) describes the Avenger Defense Portable Stun Gun as ?Extremely Powerful Rechargeable Stun Gun for Self-Defense and Protection ? Built-In Flashlight and Carrying Case ? Intimidating and Comfortable Design ? Loud Noise?. Exhibit D (attached) describes the RBS Emporium Stun Gun w/Flashlight as ?Panic alarm, Rechargeable Internal Battery with LED Power Indicator, Safety Pin, Wrist Strap, Heavy Duty Carry Case. Includes Quick Set-up and How to Guides?. Exhibit E ? J (attached) additionally all provide descriptions of stun guns that do not contain the word ?police?. Because of the numerous meanings and interpretations of the mark POLICE, consumers encountering Applicant?s Mark would need to use a multi-step reasoning process to understand Applicant?s Mark and its connection to Applicant?s goods. See Nautilus Group Inc. v. ICON Health and Fitness Inc., 372 F.3d 1330, 71 USPQ2d 1173 (Fed. Cir. 2004). ?There is a certain amorphous quality about the words, and no specific information about any quality or characteristic of the goods is conveyed with a degree of particularity.? In re Cuban Cigar Brands, N.V., Serial Nos. 7855795 and 78554967 (October 19, 2007) [not precedential]. Thus, consumers would need to use additional thought, imagination, or perception to perceive any significance of the word POLICE as it relates to Applicant?s goods. TMEP ? 1209.01(a). Essentially, a consumer seeing or hearing POLICE would have to make a mental leap to perceive the Mark as relating to stun guns. A consumer could see or hear the Mark to interpret it as an officer, department, handcuffs, 911 call, taser, shooting, academy, station, jail, prison, body armor, gun, holster, nightstick, portable breath analyzer, patrol car, security, baton, and a myriad of other things. The general public understands the primary significance of Applicant?s Mark as identifying the source of Applicant?s goods thereby giving it acquired distinctiveness. Although Applicant recognizes that each case must stand on its own merits, the TTAB and the courts have found a number of marks to be suggestive rather than descriptive in factual situations that are more extreme than this case. 2 McCarthy, at ?11:72. For example, some of the marks that have been deemed at least suggestive include: ? DIAL-A-MATTRESS for mattress sales, Dial-A-Mattress Operating Corp. v. Mattress Madness, 33 U.S.P.Q2d 1961 (E.D.N.Y 1994); ? SPRAY 'N VAC for a no scrub rug cleaner, Glamorene Products Corp. v. Boyle-Midway, Inc., 188 U.S.P.Q. 145 (S.D.N.Y 1975); ? LOC-TOP for container closures ?in the nature of bottle caps having a cap portion adapted to be secured to a container and a spout mounted on the cap portion so as to be capable of being rotated between open and closed positions,? In re Polytop Corporation, 167 U.S.P.Q. 383 (T.T.A.B. 1970); ? CHEW' N CLEAN for dentifrices, In re Colgate-Palmolive Co., 160 U.S.P.Q 733 (C.C.P.A. 1969); ? SUGAR & SPICE for bakery goods, In re Colonial Stores Incorporated, 157 U.S.P.Q. 382 (C.C.P.A. 1968); and ? HANDI WIPES for dusting cloths, In re Colgate-Palmolive Co., 149 U.S.P.Q 793 (T.T.A.B. 1966). As with the cases, the Mark POLICE fails to immediately call to mind stun guns. Instead, additional thought, imagination or perception is required. Thus, the term is suggestive and registerable. Section 2(f) Acquired Distinctiveness The Examining Attorney found that Applicant?s evidence of acquired distinctiveness was insufficient ?because the applied-for mark is highly descriptive of applicant?s goods and/or services.? As described above, however, the mark is not highly descriptive but rather suggestive of the goods. Applicant has submitted evidence of acquired distinctiveness in the alternative but submits that because the mark is suggestive, the Examining Attorney has no need to reach this issue. In the Office Action, the Examining Attorney stated that ?[w]ith regard to the 5,500 ?likes? applicant received on Facebook?, ?it is not possible to determine the degree to which applicant?s Facebook ?likes? are significant.? Applicant has attached a competitor?s (Cutting Edge Product?s Inc.) Facebook page (Exhibit K). A comparison of Applicant?s Facebook (Exhibit L) page with its competitor?s Facebook page shows that Application has acquired distinctiveness. Application has nearly 5,500 ?likes? compared to its competitor?s mere 481 likes. That is 5 times the amount of ?likes.? Thus, this is a significant showing. CONCLUSION Because of the numerous possible interpretations of Applicant?s Mark require consumers to use additional thought, imagination, or perception, as well as the numerus cited registrations and pending applications, the mere descriptiveness refusal should be withdrawn, and Applicant?s mark should proceed to publication. Applicant need only establish a prima facie case to warrant publication of Applicant?s Mark for opposition, and the Applicant respectfully submits that it has met this burden. (Yamaha, 840 F. 2d at 1576). Therefore, Applicant?s Mark is suggestive. Alternatively, the Mark has acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. ? 1052(f). Applicant respectfully submits that the Mark is entitled to registration on the Principal Registrar. Should the Examining Attorney have any questions, she is encouraged to contact the undersigned at (404) 201-2520. Sincerely, /David M. Lilenfeld/ | |
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_665610238-20190708173201700202_._Combined_-_Exhibits.pdf |
| CONVERTED PDF FILE(S) (15 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0009.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0012.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0013.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0014.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0015.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\137\88013741\xml7\ROA0016.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - Meriam-Webster definition for Police; Exhibit B - The American Heritage definition for Police; Exhibit C-J - Amazon screenshots; Exhibit K-L - Facebook Screenshots |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | DAVID M. LILENFELD LILENFELD PC 3379 PEACHTREE ROAD NE, SUITE 980 ATLANTA Georgia US 30326 |
| NEW CORRESPONDENCE SECTION | |
| NAME | DAVID M. LILENFELD |
| FIRM NAME | LILENFELD PC |
| STREET | 3379 PEACHTREE ROAD NE, SUITE 980 |
| CITY | ATLANTA |
| STATE | Georgia |
| ZIP/POSTAL CODE | 30326 |
| COUNTRY | United States |
| PHONE | 404-201-2520 |
| david@lilenfeld.com;kg@lilenfeld.com; angela@lilenfeld.com; robin@lilenfeld.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /David M. Lilenfeld/ |
| SIGNATORY'S NAME | David M. Lilenfeld |
| SIGNATORY'S POSITION | Attorney of record, Georgia bar member |
| SIGNATORY'S PHONE NUMBER | 4042012520 |
| DATE SIGNED | 07/08/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 08 17:41:03 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 190708174103302284-880137 41-62072baff753f1cffd01ff d56691aea248f3266f6ca3441 e72f3044b62852705b-N/A-N/ A-20190708173201700202 |
| 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) |
