| 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 | 88050353 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88050353/mark.png |
| LITERAL ELEMENT | CBC |
| 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) | |
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Response to Office Action Serial No. 88050353 Mark: CBC Our Matter No.: 29307.0000002 Search of Office Database Applicant acknowledges that the trademark examining attorney has searched the Office's database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).
Section 2(e)(1) Refusal Registration has been refused because the examining attorney believes the applied-for mark merely describes a feature of applicant’s goods. Applicant respectfully disagrees for at least the following reasons. The mark CBC is suggestive of its associated goods rather than merely descriptive Applicant’s applied-for mark is CBC and the mark is used in connection with “capacitors and supercapacitors.” The examining attorney alleges that the acronym CBC is used to describe a type of capacitor, namely “computer-based capacitors” and therefore the mark is merely descriptive. [1]In fact, the mark CBC refers to a new type of technology, namely, “cable-based capacitors.” However, the wording “cable based capacitors” is not merely descriptive of the goods identified in Applicant’s pending trademark application, but is instead, suggestive. A term is descriptive if it “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce, 675 F.3d 1297, 1300 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 964 (Fed. Cir. 2007)) (emphasis added). However, a mark is suggestive if it “requires imagination, thought and perception to reach a conclusion as to the nature of the goods.” In re Abcor Dev. Corp., 588 F.2d 811, 814 (C.C.P.A. 1978). Generally, a mark is descriptive if it “imparts information directly”; a mark is suggestive if it “requires some operation of the imagination to connect it with the goods.” Id. “If the mental leap between the word and the product's attribute is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.” Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1340 (Fed. Cir. 2004) (emphasis added). Applying this standard to the instant case, it is evident that a relevant consumer, viewing the term “CBC” would not almost instantaneously be aware that this acronym refers to “cable-based capacitors.” It would certainly require pause and thought for a relevant consumer to conclude that this acronym refers to cable based capacitors. Indeed, the Official Action indicates that CBC refers to “computer-based capacitors,” which it does not. A recent case decided by the Trademark Trial and Appeal Board held that an acronym is considered to be merely descriptive of the applied goods or services if: (1) the abbreviation or acronym is for specific wording; (2) the specific wording is merely descriptive of the goods or services identified in the trademark application; and (3) if relevant consumers will recognize the abbreviation of the acronym as the underlying merely descriptive wording it represents. All three elements must be present for a finding of merely descriptiveness. See In re Pre-Paid Legal Services, Inc. 2017 WL 2391860 (2017). Applying the standard of In re Pre-Paid Legal Services, particularly element (3), relevant consumers would not recognize the acronym CBC as the underlying wording (cable-based capacitors) it represents. This is due to the many possible words that the acronym CBC could represent. The abbreviation CBC has 240 meanings according to www.acronymfinder.com and 844 meanings according to www.allacronyms.com. Further, Applicant was recently issued a patent (in April, 2017) for its new technology (a copy of which is submitted herewith). It would certainly require pause and contemplation in order for a consumer to understand that the acronym refers to a new technology related to cable-based capacitors. Applicant also submits herewith, marketing material from its website describing its CBC technology. These materials indicate that the mark CBC is used as a source identifier and refers to a new technology relating to capacitors and supercapacitors. Therefore, given the fact that a relevant consumer viewing the acronym “CBC” would not instantaneously be aware that this acronym refers to “cable-based capacitors,” because cable-based capacitors are a new technology, the applied-for mark is not merely descriptive, but is instead suggestive. CBC is not a generic mark The Official Action also suggests that the mark CBC may be generic in connection with the identified goods. The issue in determining whether a mark is generic is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question. Princeton Vanguard, 786 F.3d at 965 (quoting H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989-990 (Fed.Cir.1986)). That is not the case here. Cable-based capacitors are a new technology and the relevant public cannot understand the acronym CBC to refer to a genus of capacitors that are cable-based. Conclusion The applied-for mark CBC is neither merely descriptive nor generic. Applying the standard in In re Pre-Paid Legal Services, the acronym cannot be merely descriptive because relevant consumers will not recognize the abbreviation of the acronym as referring to cable-based capacitors. Consumers would not immediately determine the nature of the goods from the mark and instead some level of mental pause or consideration is necessary to understand the nature of the goods. Because of this, the mark CBC is suggestive rather than merely descriptive, and therefore eligible for registration on the Principal Register. [1] It should be noted that the websites of Capacitechenergy and F6 that are attached to the Official Action and identified as “third party” websites are actually websites advertising Applicant’s technology. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1744752132-20190129172457400886_._Doc__32789333_v_1_pat9620298_1_.PDF |
| CONVERTED PDF FILE(S) (11 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0009.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0012.JPG | |
| ORIGINAL PDF FILE | evi_1744752132-20190129172457400886_._Doc__32789345_v_1_https___www.capacitechenergy.PDF |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0013.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0014.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0015.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0016.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\880\503\88050353\xml3\ROA0017.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Supporting Evidence |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jeffrey H. Kamenetsky/ |
| SIGNATORY'S NAME | Jeffrey H. Kamenetsky |
| SIGNATORY'S POSITION | Attorney of record, Florida bar member |
| SIGNATORY'S PHONE NUMBER | 954-414-6208 |
| DATE SIGNED | 01/29/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jan 29 17:43:24 EST 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XXX-2 0190129174324538089-88050 353-620bd16d5b0a6f6f36ab5 1a67d3592f96fcb02bf9e9f5e 669fed5c698c910d412-N/A-N /A-20190129172457400886 |
| 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
Serial No. 88050353
Mark: CBC
Our Matter No.: 29307.0000002
Search of Office Database
Applicant acknowledges that the trademark examining attorney has searched the Office's database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).
Section 2(e)(1) Refusal
Registration has been refused because the examining attorney believes the applied-for mark merely describes a feature of applicant’s goods. Applicant respectfully disagrees for at least the following reasons.
The mark CBC is suggestive of its associated goods rather than merely descriptive
Applicant’s applied-for mark is CBC and the mark is used in connection with “capacitors and supercapacitors.” The examining attorney alleges that the acronym CBC is used to describe a type of capacitor, namely “computer-based capacitors” and therefore the mark is merely descriptive. [1]In fact, the mark CBC refers to a new type of technology, namely, “cable-based capacitors.” However, the wording “cable based capacitors” is not merely descriptive of the goods identified in Applicant’s pending trademark application, but is instead, suggestive.
A term is descriptive if it “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce, 675 F.3d 1297, 1300 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 964 (Fed. Cir. 2007)) (emphasis added). However, a mark is suggestive if it “requires imagination, thought and perception to reach a conclusion as to the nature of the goods.” In re Abcor Dev. Corp., 588 F.2d 811, 814 (C.C.P.A. 1978). Generally, a mark is descriptive if it “imparts information directly”; a mark is suggestive if it “requires some operation of the imagination to connect it with the goods.” Id. “If the mental leap between the word and the product's attribute is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.” Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1340 (Fed. Cir. 2004) (emphasis added).
Applying this standard to the instant case, it is evident that a relevant consumer, viewing the term “CBC” would not almost instantaneously be aware that this acronym refers to “cable-based capacitors.” It would certainly require pause and thought for a relevant consumer to conclude that this acronym refers to cable based capacitors. Indeed, the Official Action indicates that CBC refers to “computer-based capacitors,” which it does not.
A recent case decided by the Trademark Trial and Appeal Board held that an acronym is considered to be merely descriptive of the applied goods or services if: (1) the abbreviation or acronym is for specific wording; (2) the specific wording is merely descriptive of the goods or services identified in the trademark application; and (3) if relevant consumers will recognize the abbreviation of the acronym as the underlying merely descriptive wording it represents. All three elements must be present for a finding of merely descriptiveness. See In re Pre-Paid Legal Services, Inc. 2017 WL 2391860 (2017).
Applying the standard of In re Pre-Paid Legal Services, particularly element (3), relevant consumers would not recognize the acronym CBC as the underlying wording (cable-based capacitors) it represents. This is due to the many possible words that the acronym CBC could represent. The abbreviation CBC has 240 meanings according to www.acronymfinder.com and 844 meanings according to www.allacronyms.com. Further, Applicant was recently issued a patent (in April, 2017) for its new technology (a copy of which is submitted herewith). It would certainly require pause and contemplation in order for a consumer to understand that the acronym refers to a new technology related to cable-based capacitors. Applicant also submits herewith, marketing material from its website describing its CBC technology. These materials indicate that the mark CBC is used as a source identifier and refers to a new technology relating to capacitors and supercapacitors.
Therefore, given the fact that a relevant consumer viewing the acronym “CBC” would not instantaneously be aware that this acronym refers to “cable-based capacitors,” because cable-based capacitors are a new technology, the applied-for mark is not merely descriptive, but is instead suggestive.
CBC is not a generic mark
The Official Action also suggests that the mark CBC may be generic in connection with the identified goods. The issue in determining whether a mark is generic is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question. Princeton Vanguard, 786 F.3d at 965 (quoting H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989-990 (Fed.Cir.1986)). That is not the case here. Cable-based capacitors are a new technology and the relevant public cannot understand the acronym CBC to refer to a genus of capacitors that are cable-based.
Conclusion
The applied-for mark CBC is neither merely descriptive nor generic. Applying the standard in In re Pre-Paid Legal Services, the acronym cannot be merely descriptive because relevant consumers will not recognize the abbreviation of the acronym as referring to cable-based capacitors. Consumers would not immediately determine the nature of the goods from the mark and instead some level of mental pause or consideration is necessary to understand the nature of the goods. Because of this, the mark CBC is suggestive rather than merely descriptive, and therefore eligible for registration on the Principal Register.
[1] It should be noted that the websites of Capacitechenergy and F6 that are attached to the Official Action and identified as “third party” websites are actually websites advertising Applicant’s technology.
