| 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 | 88070636 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88070636/mark.png |
| LITERAL ELEMENT | GLYDE |
| 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) | |
|
Examining Attorney Powers:
This Amendment/Request for Reconsideration is filed in response to Office action mailed September 18, 2018. In the Office action, the Examining Attorney rejected the present application under Trademark Act Section 2(e)(1) for the mark being “merely descriptive.” With respect to the mark being merely descriptive, Applicant respectfully submits that a mark is descriptive if it immediately describes a significant ingredient, quality, characteristic, function, feature, purpose or use of relevant goods or services. In re Gyulay, 3 U.S.P.Q.2d 1009 (Fed.Cir.1987); In re Bed & Breakfast Registry, 229 U.S.P.Q. 818 (Fed.Cir. 1986). In re MetPath Inc., 223 U.S.P.Q. 88 (T.T.A.B. 1984); In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979); TMEP §1209.01(b). Additionally, not only must a mark immediately impart information about the goods or services, but it must also do so with “a degree of particularity”. In re Intelligent Medical Systems, Inc., 5 U.S.P.Q.2d 1674 (T.T.A.B. 1987); In re Analog Devices Inc., 6 U.S.P.Q.2d 1808 (T.T.A.B. 1988). Finally, any doubts regarding whether a mark is “merely descriptive” are to be resolved in favor of the applicant. In re Conductive Sys., Inc. 220 U.S.P.Q. 84 (T.T.A.B. 1983). Applicant respectfully submits that the proposed mark is not descriptive, but suggestive. Applicant respectfully asserts that the mark “GLYDE”, especially with alternative spelling, does not immediately impart information about the goods with a degree of particularity. Instead, the consumer is required to gather information as to what goods are associated with the mark. More specifically, Applicant’s goods are listed as: “illuminated light switches; lightbar; flashlight; lightbulb; Flashlight pointers; LED lights; nightlights; lights for homes.” The relevant public would be required to gather further information about Applicant’s goods. Such exercise of information gathering to reach a conclusion of the services is suggestive rather than merely descriptive. In re Nobile Co., 225 USPQ 749, 750 (TTAB 1985) (NOBURST held suggestive as opposed to merely descriptive for a product that reduces the likelihood that pipes of a water system in which it is used will burst since the Board did not “believe this conclusion is readily arrived at by merely observing the mark of the goods but that it requires interpretation by the viewer.” Applicant respectfully requests that the following Amendments be acknowledged. If, however, any outstanding issues remain, Applicant urges the Trademark Office to telephone Applicant’s attorney so that the same may be resolved. For the foregoing reasons, the refusal to register the mark “GLYDE” should be withdrawn. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Justin Lampel/ |
| SIGNATORY'S NAME | Justin Lampel |
| SIGNATORY'S POSITION | Attorney |
| SIGNATORY'S PHONE NUMBER | 847.845.4345 |
| DATE SIGNED | 03/10/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Sun Mar 10 10:58:37 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190310105837350414-8807 0636-62082fbd83d8193e75af ff25a1576fbc7fe867cf930ce 6cb512a4f23523c86949d-N/A -N/A-20190310105709786500 |
| 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) |
Examining Attorney Powers:
This Amendment/Request for Reconsideration is filed in response to Office action mailed September 18, 2018. In the Office action, the Examining Attorney rejected the present application under Trademark Act Section 2(e)(1) for the mark being “merely descriptive.”
With respect to the mark being merely descriptive, Applicant respectfully submits that a mark is descriptive if it immediately describes a significant ingredient, quality, characteristic, function, feature, purpose or use of relevant goods or services. In re Gyulay, 3 U.S.P.Q.2d 1009 (Fed.Cir.1987); In re Bed & Breakfast Registry, 229 U.S.P.Q. 818 (Fed.Cir. 1986). In re MetPath Inc., 223 U.S.P.Q. 88 (T.T.A.B. 1984); In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979); TMEP §1209.01(b). Additionally, not only must a mark immediately impart information about the goods or services, but it must also do so with “a degree of particularity”. In re Intelligent Medical Systems, Inc., 5 U.S.P.Q.2d 1674 (T.T.A.B. 1987); In re Analog Devices Inc., 6 U.S.P.Q.2d 1808 (T.T.A.B. 1988). Finally, any doubts regarding whether a mark is “merely descriptive” are to be resolved in favor of the applicant. In re Conductive Sys., Inc. 220 U.S.P.Q. 84 (T.T.A.B. 1983).
Applicant respectfully submits that the proposed mark is not descriptive, but suggestive. Applicant respectfully asserts that the mark “GLYDE”, especially with alternative spelling, does not immediately impart information about the goods with a degree of particularity. Instead, the consumer is required to gather information as to what goods are associated with the mark. More specifically, Applicant’s goods are listed as: “illuminated light switches; lightbar; flashlight; lightbulb; Flashlight pointers; LED lights; nightlights; lights for homes.”
The relevant public would be required to gather further information about Applicant’s goods. Such exercise of information gathering to reach a conclusion of the services is suggestive rather than merely descriptive. In re Nobile Co., 225 USPQ 749, 750 (TTAB 1985) (NOBURST held suggestive as opposed to merely descriptive for a product that reduces the likelihood that pipes of a water system in which it is used will burst since the Board did not “believe this conclusion is readily arrived at by merely observing the mark of the goods but that it requires interpretation by the viewer.”
Applicant respectfully requests that the following Amendments be acknowledged. If, however, any outstanding issues remain, Applicant urges the Trademark Office to telephone Applicant’s attorney so that the same may be resolved.
For the foregoing reasons, the refusal to register the mark “GLYDE” should be withdrawn.