| 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 | 88037510 |
| LAW OFFICE ASSIGNED | LAW OFFICE 122 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88037510/mark.png |
| LITERAL ELEMENT | ATF PRO |
| 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) | |
|
RESPONSE TO OFFICE ACTION Applicant seeks to register the word mark ATF PRO (“Applicant’s Mark”) for “Transmission fluid; automatic transmission fluids; chemical additive treatment for transmission fluid” in International Class 001. The USPTO issued a Priority Action on November 13, 2018, requiring disclaimer of the wording “ATF”, asserting that it is not inherently distinctive. Applicant appreciates that the USPTO recognized in the Priority Action that “the mark as a whole appears to be registerable” but disagrees with USPTO that ATF is merely descriptive of the applicant’s goods. While the Priority Action provided a screen capture of a website called “Acronym Finder” to support the conclusion that “ATF” may mean “automatic transmission fluid,” that same evidence also showed that there are multiple possible other plausible meanings for ATF in connection with Applicant’s goods. Additionally, the evidence provided did not appear to meet the legal standard necessary to show that: “(1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents.” See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)); TMEP § 1209.03(h). As such, Applicant submits that the USPTO has not established that ATF is readily understood to be substantially synonymous with “automatic transmission fluid” under Applicant’s Mark. Nonetheless, solely in the interest of further prosecution of the present application, and without conceding that ATF is merely descriptive, Applicant submits the following disclaimer statement: No claim is made to the exclusive right to use “ATF” apart from the mark as shown. Applicant believes that the present Application is now in a condition for allowance. Applicant does not believe any fee is due for the filing of this Response. However, the Commissioner is hereby authorized to charge payment of any required fees associated with any of the papers submitted herewith or to credit any overpayment to Haynes and Boone, LLP’s Deposit Account No. 08-1394. Respectfully submitted, Haynes and Boone, LLP
/Alexander B. Lutzky/ Alexander B. Lutzky, Reg. No. 76,598 112 E. Pecan Street, Suite 1200 San Antonio, TX 78205 Telephone: (210) 978-7411 Facsimile: (210) 554-0455 |
|
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use ATF apart from the mark as shown. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Alexander B. Lutzky/ |
| SIGNATORY'S NAME | Alexander B. Lutzky |
| SIGNATORY'S POSITION | Attorney of Record, Texas Bar Member |
| SIGNATORY'S PHONE NUMBER | 210-978-7411 |
| DATE SIGNED | 02/08/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 08 18:04:33 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190208180433759504-8803 7510-62047484cada32bfe34a 46185a3ff3d2a847fec3ce5cc 2bf8ea39cd44e31ff9-N/A-N/ A-20190208150902366053 |
| 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
Applicant seeks to register the word mark ATF PRO (“Applicant’s Mark”) for “Transmission fluid; automatic transmission fluids; chemical additive treatment for transmission fluid” in International Class 001. The USPTO issued a Priority Action on November 13, 2018, requiring disclaimer of the wording “ATF”, asserting that it is not inherently distinctive.
Applicant appreciates that the USPTO recognized in the Priority Action that “the mark as a whole appears to be registerable” but disagrees with USPTO that ATF is merely descriptive of the applicant’s goods. While the Priority Action provided a screen capture of a website called “Acronym Finder” to support the conclusion that “ATF” may mean “automatic transmission fluid,” that same evidence also showed that there are multiple possible other plausible meanings for ATF in connection with Applicant’s goods. Additionally, the evidence provided did not appear to meet the legal standard necessary to show that: “(1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents.” See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)); TMEP § 1209.03(h). As such, Applicant submits that the USPTO has not established that ATF is readily understood to be substantially synonymous with “automatic transmission fluid” under Applicant’s Mark.
Nonetheless, solely in the interest of further prosecution of the present application, and without conceding that ATF is merely descriptive, Applicant submits the following disclaimer statement:
No claim is made to the exclusive right to use “ATF” apart from the mark as shown.
Applicant believes that the present Application is now in a condition for allowance. Applicant does not believe any fee is due for the filing of this Response. However, the Commissioner is hereby authorized to charge payment of any required fees associated with any of the papers submitted herewith or to credit any overpayment to Haynes and Boone, LLP’s Deposit Account No. 08-1394.
Respectfully submitted,
Haynes and Boone, LLP
/Alexander B. Lutzky/
Alexander B. Lutzky, Reg. No. 76,598
112 E. Pecan Street, Suite 1200
San Antonio, TX 78205
Telephone: (210) 978-7411
Facsimile: (210) 554-0455