| 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 | 88042582 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88042582/mark.png |
| LITERAL ELEMENT | READY IN 90 SECONDS |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
The Trademark Examining Attorney has requested a disclaimer of the words “READY IN 90 SECONDS” because they are considered to be descriptive of a characteristic of applicant’s goods. The Trademark Examining Attorney supported the objection by stating that “[t]he attached evidence shows this wording means applicant’s tortillas are ready to be consumed after ninety seconds of preparation time. See http://www.reasors.com/shop?product_id=578556#!/?product_id=578556. Thus, the wording merely describes applicant’s goods because they describe how quickly applicant’s food can be prepared for optimal taste.”
Attached is the page referred to by the Trademark Examining Attorney. This page does not contain a description of applicant’s product as being quick to prepare for optimal taste and is not support for the Trademark Examining Attorney’s statement. In fact, the page says “No Lard Locally baked and delivered fresh your Guerrero Bakery Ready in 90 Seconds.” “Ready in 90 Seconds” is not followed by any words which indicate the fast cook time for applicant’s products, nor is there any reference how applicant’s goods should be prepared for optimal taste.
The words “ready in 90 seconds” have a number of different meanings in relation to applicant’s goods; for example, it takes 90 seconds to cook a tortilla or the package of tortillas, or it takes 90 seconds to heat a tortilla or the package of tortillas, or it takes 90 seconds to prepare a tortilla or the package of tortillas for cooking, heating or eating, or it takes 90 seconds to make a meal out of a package of tortillas. There is no clear meaning about applicant’s goods from the wording in its mark.
When a mark is capable of many interpretations with respect to the goods or services with which it is used or intended to be used, then even more mental activity is required to discern the nature of the goods or services to be or associated with the mark. A mark with more than one meaning with respect to goods or services is suggestive, and not merely descriptive. See, McCarthy, McCarthy on Trademarks and Unfair Competition, §11.19 at 11-31 (2006).
It is submitted that while the words “ready in 90 seconds” may be suggestive, they are not merely descriptive of applicant’s goods. The words do not directly indicate the character of the goods. A mark which is suggestive and not merely descriptive is registrable on the Principal Register.
Applicant also draws the Trademark Examining Attorney’s attention to the following marks which have been registered for foods and which contain similar word strings to applicant’s mark, and which have been registered without disclaimer of the similar word strings. Printouts from the TESS database for each of these registrations is attached.
1. TORTILLA FRESCA READY IN SECONDS & Design, Registration No. 4511397, for tortillas – A disclaimer of “tortilla fresca” was entered. Registered on the Principal Register.
2. SMOKED FOR HOURS, READY IN MINUTES, Registration No. 3641131, for meat, pork. No disclaimer. Registered on the Principal Register.
3. SMOKE FOR HOURS, READY IN MINUTES, Registration No. 39051113, for poultry. Registered on the Principal Register.
4. PRET-A-ALLUMER, Registration No. 4974826 (which means ready to light), for candles, candles containing insect repellent, perfumed candles, scented candles. Registered on the Principal Register.
5. READY IN A SNAP, Registration No. 5238161, for wine. No disclaimer. Registered on the Principal Register.
Any doubt about the descriptive versus the suggestive nature of applicant’s mark should be resolved in favor of applicant.
Because the line between merely descriptive and only suggestive is “so nebulous”, the Trademark Board takes the position that doubt is resolved in favor of the applicant on the assumption that competitors have the opportunity to oppose the registration once published and to present evidence that is usually in ex parte examination.
McCarthy, McCarthy on Trademarks and Unfair Competition, §11.51 at 11.12-.3 (2006); accord, In re Gourmet Bakers, 173 U.S.P.Q. 565 (T.T.A.B. 1972). See also, In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1983) (doubts under §2(e) about the merely descriptive nature of a term are resolved in favor of the applicant, unlike the situation in resolving §2(d) likely confusion disputes).
In view of the foregoing, reconsideration and acceptance of applicant’s applicant is requested.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_7218067103-20190220121056116482_._190220_TESS_records_marks_in_argument.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\425\88042582\xml6\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\880\425\88042582\xml6\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\425\88042582\xml6\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\425\88042582\xml6\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\425\88042582\xml6\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\425\88042582\xml6\ROA0007.JPG | |
| ORIGINAL PDF FILE | evi_7218067103-20190220121056116482_._181203_product_id_578556.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\425\88042582\xml6\ROA0008.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\880\425\88042582\xml6\ROA0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | product page and TESS records referred to in argument |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /johnmcone/ |
| SIGNATORY'S NAME | John M. Cone |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 972-826-4436 |
| DATE SIGNED | 02/20/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Feb 20 12:13:29 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0190220121329092428-88042 582-6203ea4ef4cd331e68296 a5308caf8fb55b368a5fe5d17 96eec09ec28948e16499-N/A- N/A-20190220121056116482 |
| 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) |
The Trademark Examining Attorney has requested a disclaimer of the words “READY IN 90 SECONDS” because they are considered to be descriptive of a characteristic of applicant’s goods. The Trademark Examining Attorney supported the objection by stating that “[t]he attached evidence shows this wording means applicant’s tortillas are ready to be consumed after ninety seconds of preparation time. See http://www.reasors.com/shop?product_id=578556#!/?product_id=578556. Thus, the wording merely describes applicant’s goods because they describe how quickly applicant’s food can be prepared for optimal taste.”
Attached is the page referred to by the Trademark Examining Attorney. This page does not contain a description of applicant’s product as being quick to prepare for optimal taste and is not support for the Trademark Examining Attorney’s statement. In fact, the page says “No Lard Locally baked and delivered fresh your Guerrero Bakery Ready in 90 Seconds.” “Ready in 90 Seconds” is not followed by any words which indicate the fast cook time for applicant’s products, nor is there any reference how applicant’s goods should be prepared for optimal taste.
The words “ready in 90 seconds” have a number of different meanings in relation to applicant’s goods; for example, it takes 90 seconds to cook a tortilla or the package of tortillas, or it takes 90 seconds to heat a tortilla or the package of tortillas, or it takes 90 seconds to prepare a tortilla or the package of tortillas for cooking, heating or eating, or it takes 90 seconds to make a meal out of a package of tortillas. There is no clear meaning about applicant’s goods from the wording in its mark.
When a mark is capable of many interpretations with respect to the goods or services with which it is used or intended to be used, then even more mental activity is required to discern the nature of the goods or services to be or associated with the mark. A mark with more than one meaning with respect to goods or services is suggestive, and not merely descriptive. See, McCarthy, McCarthy on Trademarks and Unfair Competition, §11.19 at 11-31 (2006).
It is submitted that while the words “ready in 90 seconds” may be suggestive, they are not merely descriptive of applicant’s goods. The words do not directly indicate the character of the goods. A mark which is suggestive and not merely descriptive is registrable on the Principal Register.
Applicant also draws the Trademark Examining Attorney’s attention to the following marks which have been registered for foods and which contain similar word strings to applicant’s mark, and which have been registered without disclaimer of the similar word strings. Printouts from the TESS database for each of these registrations is attached.
1. TORTILLA FRESCA READY IN SECONDS & Design, Registration No. 4511397, for tortillas – A disclaimer of “tortilla fresca” was entered. Registered on the Principal Register.
2. SMOKED FOR HOURS, READY IN MINUTES, Registration No. 3641131, for meat, pork. No disclaimer. Registered on the Principal Register.
3. SMOKE FOR HOURS, READY IN MINUTES, Registration No. 39051113, for poultry. Registered on the Principal Register.
4. PRET-A-ALLUMER, Registration No. 4974826 (which means ready to light), for candles, candles containing insect repellent, perfumed candles, scented candles. Registered on the Principal Register.
5. READY IN A SNAP, Registration No. 5238161, for wine. No disclaimer. Registered on the Principal Register.
Any doubt about the descriptive versus the suggestive nature of applicant’s mark should be resolved in favor of applicant.
Because the line between merely descriptive and only suggestive is “so nebulous”, the Trademark Board takes the position that doubt is resolved in favor of the applicant on the assumption that competitors have the opportunity to oppose the registration once published and to present evidence that is usually in ex parte examination.
McCarthy, McCarthy on Trademarks and Unfair Competition, §11.51 at 11.12-.3 (2006); accord, In re Gourmet Bakers, 173 U.S.P.Q. 565 (T.T.A.B. 1972). See also, In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1983) (doubts under §2(e) about the merely descriptive nature of a term are resolved in favor of the applicant, unlike the situation in resolving §2(d) likely confusion disputes).
In view of the foregoing, reconsideration and acceptance of applicant’s applicant is requested.
