| 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 | 88059009 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88059009/mark.png |
| LITERAL ELEMENT | SMOK |
| 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) | |
|
This is in response to the Office Action dated November 20, 2016, wherein the Examining Attorney refused to register the mark SMOK (“Applicant’s Mark”) under 15 U.S.C. § 1052(e)(1) on the grounds that it is merely descriptive of Applicant’s goods and services. The Examining Attorney also required clarification of the identifications of goods for International Classes 9 and 34. In light of the amendment and arguments below, Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal to register on these grounds. IDENTIFICATION OF GOODS Applicant hereby adopts the following amended identification of goods in International Class 9: Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; Battery covers in the nature of battery cases for electronic cigarettes. Applicant hereby adopts the following amended identification of goods in International Class 34: Electronic cigarettes; Oral vaporizers for smokers; Smokers’ oral vaporizer refill cartridges sold empty; Electronic cigarette atomizers sold empty; Electronic cigarette refill cartridges sold empty; Component parts of electronic cigarettes in the nature of tanks for electronic cigarettes, coils for electronic cigarettes, drip tips for electronic cigarettes, tank tubes for electronic cigarettes, and silicone rings for electronic cigarettes. ARGUMENT I. Applicant’s Mark Is Not Merely Descriptive. The Examining Attorney has initially refused registration of Applicant’s Mark under Section 2(e)(1) of the Lanham Act on the grounds that the mark is merely descriptive of Applicant’s goods and services, namely, “Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; battery covers in the nature of battery cases for electronic cigarettes” (as amended) in International Class 9 (“Applicant’s Class 9 Goods”), “Electronic cigarettes; Oral vaporizers for smokers; Smokers’ oral vaporizer refill cartridges sold empty; Electronic cigarette refill cartridges sold empty; Component parts of electronic cigarettes in the nature of tanks for electronic cigarettes, coils for electronic cigarettes, drip tips for electronic cigarettes, tank tubes for electronic cigarettes, and silicone rings for electronic cigarettes” (as amended) in International Class 34 (“Applicant’s Class 34 Goods,” and collectively with Applicant’s Class 9 Goods, “Applicant’s Goods”), and “On-line retail store services featuring electronic cigarettes, oral vaporizers for smokers, smokers articles and accessories for the foregoing” in International Class 35 (“Applicant’s Services”). For a mark to be merely descriptive, it must “immediately convey[] information concerning a quality, characteristic, function, ingredient, attribute or feature” of the good or service. In re Venture Lending Assocs., 226 U.S.P.Q. 285, 1985 WL 72117, *1 (T.T.A.B. 1985) (emphasis added). That immediate idea must be conveyed with a “degree of particularity.” In re TMS Corp of the Americas, 200 U.S.P.Q. 57, 59 (T.T.A.B. 1978) (emphasis added); In re Entenmann’s, Inc., 15, U.S.P.Q.2d 1750, 1751 (T.T.A.B. 1990). If any thought or imagination is necessary to connect the plain meaning of a phrase to an attribute of the goods or services, the phrase is not considered merely descriptive. McCarthy § 11:67. The determination of whether a mark is merely descriptive must be made solely on the basis of the goods or services specified in the application. Id. at § 11:51. As used in connection with Applicant’s Goods and Applicant’s Services, the mark SMOK is suggestive (and therefore registrable). The Trademark Trial and Appeal Board applies an “imagination test” to distinguish between descriptive and suggestive marks: As a general rule, if a mark imparts or conveys an immediate idea of the qualities or characteristics of the goods, the term is descriptive, while the term would be considered suggestive if, as applied to the goods, it requires imagination, thought or perception to reach a conclusion as to the nature thereof. In re The Rank Organization, 222 U.S.P.Q. 324, 326 (T.T.A.B. 1984); see also TMEP § 1219.01(a) (“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services”) (citing In re George Weston Ltd., 228 U.S.P.Q. 57 (T.T.A.B. 1985). A mark is suggestive rather than descriptive if one must “follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates.” In re Tennis in the Round Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (holding TENNIS IN THE ROUND not descriptive of tennis facilities). Applicant respectfully submits that the term SMOK does not immediately convey the qualities, characteristics, functionality, or purpose of Applicant’s Goods. The Examining Attorney cites the following dictionary definition of the term “smoke”: “the process of smoking something, especially a cigarette.” But this definition uses the word “smoking” to define “smoke,” rendering the definition circular (and therefore unhelpful). A more instructive definition from the same source cited by the Examining Attorney is “a gray, black, or white cloud produced by something that is burning.” So smoke is produced only by something that is burning. But Applicant’s Goods do not burn anything. Instead, Applicant’s electronic cigarettes contain a coil that is heated on command, which in turn heats e-liquid in order to produced vapor. The heated e-liquid in Applicant’s electronic cigarettes does not produce smoke any more than a pot of boiling water produces smoke. In both instances, nothing is burning, and no smoke is produced. Further, the industry and consumer term for the consumption of electronic cigarettes is “vaping,” not “smoking.” Here again, the Examining Attorney’s own evidence is instructive. The first web page cited by the Examining Attorney describes electronic cigarettes as “[a] cost-effective product which is easy to use and will make your transition from smoking regular cigarettes to vaping very satisfactory.” The second web page cited by the Examining Attorney encourages potential consumers of e-cigarettes to “[j]ust charge the battery, screw on a flavor cartridge and vape!” None of the web pages cited by the Examining Attorney uses “smoke” or “smoking” to refer to any quality, characteristic, functionality, or purpose of the advertised e-cigarette goods. Applicant also respectfully submits that the term SMOK does not immediately convey the qualities, characteristics, functionality, or purpose of Applicant’s Services, which produce neither vapor nor smoke. So Applicant’s Services are a further step removed from the vapor created by Applicant’s Goods. As to the “smoke” registrations cited by the Examining Attorney that either disclaim the term “smoke,” were registered under Section 2(f), or were registered on the Supplemental Register, Applicant respectfully contends that those registrations were based on a misunderstanding of the byproduct created when a consumer vapes an e-cigarette. Moreover, decisions involving prior registrations are not controlling because each case must be decided on its own facts. TMEP § 1216.01. Here, the facts are that Applicant’s Goods produce no smoke. Thus, “smoke” is not descriptive of Applicant’s Goods or Applicant’s Services. With respect to both Applicant’s Goods and Applicant’s Services, consumers must engage in a multi-step reasoning process to proceed from the term “SMOK” in Applicant’s Mark to the vapor produced by Applicant’s Goods, and then to Applicant’s Goods themselves. And with respect to Applicant’s Services, consumers must engage in an additional step to proceed from Applicant’s Goods themselves to Applicant’s sale of those goods. This is precisely the type of mental activity required under the imagination test set forth by the T.T.A.B. for distinguishing a suggestive mark from a descriptive one. The Board and various federal courts have held marks suggestive in other situations requiring a similar multi-step reasoning process. See, e.g.:
See also McCarthy § 11:72 (noting that each of the following was held suggestive and not merely descriptive: ACTION SLACKS for pants, CITIBANK for an urban bank, EQUINE TECHNOLOGIES for horse hoof care products, FLORIDA TAN for suntan lotion, HANDI WIPES for dusting cloths, HULA HOOP for plastic hoops, POLY PITCHER for polyethylene plastic pitchers, RAPID-SHAVE for shaving cream, STYLE for hair care products, and WET/DRY BROOM for electric vacuum cleaners) (internal citations omitted). Applicant respectfully suggests that like SPEEDI BAKE, DIET-TABS, DIAL-A-MATTRESS, BATHERAPY, DRI-FOOT, PHONE FORWARD, and the other marks referenced above, the mark SMOK is at least suggestive because consumers viewing the mark must engage in a “multi-stage reasoning process” to make a connection between the term “SMOK” and the goods and services Applicant offers thereunder. II. All Doubts Concerning Registration Should be Resolved In Applicant’s Favor. Finally, Applicant submits that the Board has held that if there is any doubt as to whether a mark is merely descriptive, “it is clear that such doubts are to be resolved in favor of applicants.” In re Shutts, 217 U.S.P.Q. at 365. The line between marks that are suggestive and those that are descriptive is often a fine one. in re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1983). For this reason, the Board takes the position that the “suggestive” threshold is relatively low In re Southern Nat’l Bank of N.C., 219 U.S.P.Q. 1231 (T.T.A.B. 1983) (test requires only “some degree of imagination”; MONEY 24 held suggestive for automated teller services; refusal of registration reversed). Applicant submits that Applicant’s Mark clearly falls on the suggestive side of the line. But even if a reasonable person were to believe that SMOK was near the border between suggestive and descriptive when used in connection with Applicant’s Goods and Applicant’s Services, this matter still should be resolved in Applicant’s favor, and Applicant’s Mark should be published for opposition. See In re Morton Norwich Products, Inc., 209 U.S.P.Q. 791 (T.T.A.B. 1981) (“where reasonable men may differ, it is the Board’s practice to resolve the doubt in applicant’s favor and publish the mark for opposition”; COLOR CARE held suggestive for laundry bleach); in re Sweet Victory, Inc., 228 U.S.P.Q. 959, 961 (T.T.A.B. 1986) (“we elect to resolve any doubt that we may have on this question in favor of publishing the mark for opposition”). SECTION 2(F) AMENDMENT If the Examining Attorney is not inclined to accept the arguments that Applicant’s Mark is suggestive of Applicant’s Goods and Applicant’s Services, then Applicant hereby seeks permission to amend its application to include the following Section 2(f) claim with respect to Applicant’s Goods and Applicant’s Services: The term “SMOK” in the mark has become distinctive of the goods and services though applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement. Applicant first adopted the term SMOK in June 2013 for use on Applicant’s Goods. Applicant has used the term SMOK in connection with these goods continuously over the past five and a half years. Therefore, to the extent that Applicant’s Mark is not inherently distinctive with respect to Applicant’s Goods, it has now acquired such distinctiveness. And given that Applicant’s Mark has acquired distinctiveness with respect to Applicant’s Goods, it stands to reason that it also has acquired distinctiveness with respect to Applicant’s Services, which constitute the online retail sale of Applicant’s Goods. CONCLUSION For the reasons set forth above, Applicant believes that Applicant’s Mark is entitled to be registered and respectfully requests that Applicant’s Mark be approved for publication. |
|
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; Battery covers for electronic cigarettes | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/12/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/26/2013 |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| Chargers for electronic cigarettes; Batteries for electronic cigarettes;
Battery chargers for electronic cigarettes; |
|
| FINAL DESCRIPTION | |
| Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; Battery covers in the nature of battery cases for electronic cigarettes | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/12/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/26/2013 |
| GOODS AND/OR SERVICES SECTION (034)(current) | |
| INTERNATIONAL CLASS | 034 |
| DESCRIPTION | |
| Electronic cigarettes; Oral vaporizers for smokers; Smokers' oral vaporizer refill cartridges sold empty; Electronic cigarette atomizers sold empty; Electronic cigarette refill cartridges sold empty; Tanks for electronic cigarettes; Coils for electronic cigarettes; Drip tips for electronic cigarettes; Tank tubes for electronic cigarettes; Silicone rings for electronic cigarettes | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/12/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/26/2013 |
| GOODS AND/OR SERVICES SECTION (034)(proposed) | |
| INTERNATIONAL CLASS | 034 |
| TRACKED TEXT DESCRIPTION | |
| Electronic cigarettes; Oral vaporizers for smokers; Smokers' oral
vaporizer refill cartridges sold empty; Electronic cigarette atomizers sold empty; Electronic cigarette refill cartridges sold empty;
|
|
| FINAL DESCRIPTION | |
| Electronic cigarettes; Oral vaporizers for smokers; Smokers' oral vaporizer refill cartridges sold empty; Electronic cigarette atomizers sold empty; Electronic cigarette refill cartridges sold empty; Component parts of electronic cigarettes in the nature of tanks for electronic cigarettes, coils for electronic cigarettes, drip tips for electronic cigarettes, tank tubes for electronic cigarettes, and silicone rings for electronic cigarettes | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/12/2011 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/26/2013 |
| GOODS AND/OR SERVICES SECTION (035)(no change) | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /scf/ |
| SIGNATORY'S NAME | Sean C. Fifield |
| SIGNATORY'S POSITION | Attorney of Record, Illinois bar member |
| SIGNATORY'S PHONE NUMBER | 312-443-1787 |
| DATE SIGNED | 05/05/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Sun May 05 12:56:32 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 190505125632938953-880590 09-6203aadd8b2fbba30af2c3 f637f31253746b16d75a39dca 1cf78b9f5f68eba65ab-N/A-N /A-20190505124458088866 |
| 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) |
This is in response to the Office Action dated November 20, 2016, wherein the Examining Attorney refused to register the mark SMOK (“Applicant’s Mark”) under 15 U.S.C. § 1052(e)(1) on the grounds that it is merely descriptive of Applicant’s goods and services. The Examining Attorney also required clarification of the identifications of goods for International Classes 9 and 34. In light of the amendment and arguments below, Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal to register on these grounds.
IDENTIFICATION OF GOODS
Applicant hereby adopts the following amended identification of goods in International Class 9:
Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; Battery covers in the nature of battery cases for electronic cigarettes.
Applicant hereby adopts the following amended identification of goods in International Class 34:
Electronic cigarettes; Oral vaporizers for smokers; Smokers’ oral vaporizer refill cartridges sold empty; Electronic cigarette atomizers sold empty; Electronic cigarette refill cartridges sold empty; Component parts of electronic cigarettes in the nature of tanks for electronic cigarettes, coils for electronic cigarettes, drip tips for electronic cigarettes, tank tubes for electronic cigarettes, and silicone rings for electronic cigarettes.
ARGUMENT
I. Applicant’s Mark Is Not Merely Descriptive.
The Examining Attorney has initially refused registration of Applicant’s Mark under Section 2(e)(1) of the Lanham Act on the grounds that the mark is merely descriptive of Applicant’s goods and services, namely, “Chargers for electronic cigarettes; Batteries for electronic cigarettes; Battery chargers for electronic cigarettes; battery covers in the nature of battery cases for electronic cigarettes” (as amended) in International Class 9 (“Applicant’s Class 9 Goods”), “Electronic cigarettes; Oral vaporizers for smokers; Smokers’ oral vaporizer refill cartridges sold empty; Electronic cigarette refill cartridges sold empty; Component parts of electronic cigarettes in the nature of tanks for electronic cigarettes, coils for electronic cigarettes, drip tips for electronic cigarettes, tank tubes for electronic cigarettes, and silicone rings for electronic cigarettes” (as amended) in International Class 34 (“Applicant’s Class 34 Goods,” and collectively with Applicant’s Class 9 Goods, “Applicant’s Goods”), and “On-line retail store services featuring electronic cigarettes, oral vaporizers for smokers, smokers articles and accessories for the foregoing” in International Class 35 (“Applicant’s Services”).
For a mark to be merely descriptive, it must “immediately convey[] information concerning a quality, characteristic, function, ingredient, attribute or feature” of the good or service. In re Venture Lending Assocs., 226 U.S.P.Q. 285, 1985 WL 72117, *1 (T.T.A.B. 1985) (emphasis added). That immediate idea must be conveyed with a “degree of particularity.” In re TMS Corp of the Americas, 200 U.S.P.Q. 57, 59 (T.T.A.B. 1978) (emphasis added); In re Entenmann’s, Inc., 15, U.S.P.Q.2d 1750, 1751 (T.T.A.B. 1990). If any thought or imagination is necessary to connect the plain meaning of a phrase to an attribute of the goods or services, the phrase is not considered merely descriptive. McCarthy § 11:67. The determination of whether a mark is merely descriptive must be made solely on the basis of the goods or services specified in the application. Id. at § 11:51.
As used in connection with Applicant’s Goods and Applicant’s Services, the mark SMOK is suggestive (and therefore registrable). The Trademark Trial and Appeal Board applies an “imagination test” to distinguish between descriptive and suggestive marks:
As a general rule, if a mark imparts or conveys an immediate idea of the qualities or characteristics of the goods, the term is descriptive, while the term would be considered suggestive if, as applied to the goods, it requires imagination, thought or perception to reach a conclusion as to the nature thereof.
In re The Rank Organization, 222 U.S.P.Q. 324, 326 (T.T.A.B. 1984); see also TMEP § 1219.01(a) (“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services”) (citing In re George Weston Ltd., 228 U.S.P.Q. 57 (T.T.A.B. 1985). A mark is suggestive rather than descriptive if one must “follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates.” In re Tennis in the Round Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (holding TENNIS IN THE ROUND not descriptive of tennis facilities).
Applicant respectfully submits that the term SMOK does not immediately convey the qualities, characteristics, functionality, or purpose of Applicant’s Goods. The Examining Attorney cites the following dictionary definition of the term “smoke”: “the process of smoking something, especially a cigarette.” But this definition uses the word “smoking” to define “smoke,” rendering the definition circular (and therefore unhelpful). A more instructive definition from the same source cited by the Examining Attorney is “a gray, black, or white cloud produced by something that is burning.” So smoke is produced only by something that is burning. But Applicant’s Goods do not burn anything. Instead, Applicant’s electronic cigarettes contain a coil that is heated on command, which in turn heats e-liquid in order to produced vapor. The heated e-liquid in Applicant’s electronic cigarettes does not produce smoke any more than a pot of boiling water produces smoke. In both instances, nothing is burning, and no smoke is produced.
Further, the industry and consumer term for the consumption of electronic cigarettes is “vaping,” not “smoking.” Here again, the Examining Attorney’s own evidence is instructive. The first web page cited by the Examining Attorney describes electronic cigarettes as “[a] cost-effective product which is easy to use and will make your transition from smoking regular cigarettes to vaping very satisfactory.” The second web page cited by the Examining Attorney encourages potential consumers of e-cigarettes to “[j]ust charge the battery, screw on a flavor cartridge and vape!” None of the web pages cited by the Examining Attorney uses “smoke” or “smoking” to refer to any quality, characteristic, functionality, or purpose of the advertised e-cigarette goods.
Applicant also respectfully submits that the term SMOK does not immediately convey the qualities, characteristics, functionality, or purpose of Applicant’s Services, which produce neither vapor nor smoke. So Applicant’s Services are a further step removed from the vapor created by Applicant’s Goods.
As to the “smoke” registrations cited by the Examining Attorney that either disclaim the term “smoke,” were registered under Section 2(f), or were registered on the Supplemental Register, Applicant respectfully contends that those registrations were based on a misunderstanding of the byproduct created when a consumer vapes an e-cigarette. Moreover, decisions involving prior registrations are not controlling because each case must be decided on its own facts. TMEP § 1216.01. Here, the facts are that Applicant’s Goods produce no smoke. Thus, “smoke” is not descriptive of Applicant’s Goods or Applicant’s Services.
With respect to both Applicant’s Goods and Applicant’s Services, consumers must engage in a multi-step reasoning process to proceed from the term “SMOK” in Applicant’s Mark to the vapor produced by Applicant’s Goods, and then to Applicant’s Goods themselves. And with respect to Applicant’s Services, consumers must engage in an additional step to proceed from Applicant’s Goods themselves to Applicant’s sale of those goods. This is precisely the type of mental activity required under the imagination test set forth by the T.T.A.B. for distinguishing a suggestive mark from a descriptive one. The Board and various federal courts have held marks suggestive in other situations requiring a similar multi-step reasoning process. See, e.g.:
In re George Weston Ltd., 228 U.S.P.Q. at 58 (SPEEDI BAKE held suggestive for dough that quickly bakes into bread);
In re Diet Tabs, Inc., 231 U.S.P.Q. 587, 588 (T.T.A.B. 1986) (DIET-TABS held suggestive for dietary tablets);
Dial-a-Mattress Operating Corp. v. Mattress Madness Inc., 33 U.S.P.Q.2d 1961, 1966 (E.D.N.Y. 1994) (DIAL-A-MATTRESS held suggestive for telephone sales of mattresses);
Para Labs. Inc. v Better botanicals Inc., 48 U.S.P.Q.2d 1050, 1052 (E.D.N.Y. 1988) (BATHERAPY held suggestive for therapeutic bath salts);
In re Pennwalt Corp., 173 U.S.P.Q. 317, 318-19 (T.T.A.B. 1972) (DRI-FOOT held suggestive for antiperspirant foot product);
BellSouth Corp. v. Planum Tech. Corp.. 14. U.S.P.Q.2d 1555, 1556 (T.T.A.B. 1988) (PHONE FORWARD held suggestive of telephone call forwarding equipment);
Donsky v. Bandwagon, Inc., 193 U.S.P.Q. 336 (D. Mass. 1976) (100 YEAR NITE-LITE for long-life light held suggestive, not descriptive);
Synergistic Int’l, LLC v. Korman, 470 F.3d 162, 172 (4th Cir. 2006) (GLASS DOCTOR held suggestive for glass and windshield repair services “because the use of imagination is essential to an understanding of the real meaning behind” the mark); and
In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983) (SNO-RAKE not merely descriptive for snow removal tool).
See also McCarthy § 11:72 (noting that each of the following was held suggestive and not merely descriptive: ACTION SLACKS for pants, CITIBANK for an urban bank, EQUINE TECHNOLOGIES for horse hoof care products, FLORIDA TAN for suntan lotion, HANDI WIPES for dusting cloths, HULA HOOP for plastic hoops, POLY PITCHER for polyethylene plastic pitchers, RAPID-SHAVE for shaving cream, STYLE for hair care products, and WET/DRY BROOM for electric vacuum cleaners) (internal citations omitted).
Applicant respectfully suggests that like SPEEDI BAKE, DIET-TABS, DIAL-A-MATTRESS, BATHERAPY, DRI-FOOT, PHONE FORWARD, and the other marks referenced above, the mark SMOK is at least suggestive because consumers viewing the mark must engage in a “multi-stage reasoning process” to make a connection between the term “SMOK” and the goods and services Applicant offers thereunder.
II. All Doubts Concerning Registration Should be Resolved In Applicant’s Favor.
Finally, Applicant submits that the Board has held that if there is any doubt as to whether a mark is merely descriptive, “it is clear that such doubts are to be resolved in favor of applicants.” In re Shutts, 217 U.S.P.Q. at 365. The line between marks that are suggestive and those that are descriptive is often a fine one. in re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1983). For this reason, the Board takes the position that the “suggestive” threshold is relatively low In re Southern Nat’l Bank of N.C., 219 U.S.P.Q. 1231 (T.T.A.B. 1983) (test requires only “some degree of imagination”; MONEY 24 held suggestive for automated teller services; refusal of registration reversed).
Applicant submits that Applicant’s Mark clearly falls on the suggestive side of the line. But even if a reasonable person were to believe that SMOK was near the border between suggestive and descriptive when used in connection with Applicant’s Goods and Applicant’s Services, this matter still should be resolved in Applicant’s favor, and Applicant’s Mark should be published for opposition. See In re Morton Norwich Products, Inc., 209 U.S.P.Q. 791 (T.T.A.B. 1981) (“where reasonable men may differ, it is the Board’s practice to resolve the doubt in applicant’s favor and publish the mark for opposition”; COLOR CARE held suggestive for laundry bleach); in re Sweet Victory, Inc., 228 U.S.P.Q. 959, 961 (T.T.A.B. 1986) (“we elect to resolve any doubt that we may have on this question in favor of publishing the mark for opposition”).
SECTION 2(F) AMENDMENT
If the Examining Attorney is not inclined to accept the arguments that Applicant’s Mark is suggestive of Applicant’s Goods and Applicant’s Services, then Applicant hereby seeks permission to amend its application to include the following Section 2(f) claim with respect to Applicant’s Goods and Applicant’s Services:
The term “SMOK” in the mark has become distinctive of the goods and services though applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.
Applicant first adopted the term SMOK in June 2013 for use on Applicant’s Goods. Applicant has used the term SMOK in connection with these goods continuously over the past five and a half years. Therefore, to the extent that Applicant’s Mark is not inherently distinctive with respect to Applicant’s Goods, it has now acquired such distinctiveness.
And given that Applicant’s Mark has acquired distinctiveness with respect to Applicant’s Goods, it stands to reason that it also has acquired distinctiveness with respect to Applicant’s Services, which constitute the online retail sale of Applicant’s Goods.
CONCLUSION
For the reasons set forth above, Applicant believes that Applicant’s Mark is entitled to be registered and respectfully requests that Applicant’s Mark be approved for publication.