| 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 | 88179265 |
| LAW OFFICE ASSIGNED | LAW OFFICE 120 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88179265/mark.png |
| LITERAL ELEMENT | BIONIC HYBRID SIMULATOR |
| 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) | |
|
To sustain a refusal as merely descriptive, the examining attorney must show the relevant public perceives the mark as indicating an ingredient, quality, characteristic, function, feature, purpose, or use of the goods of the application. Said another way, the examining attorney bears the burden of establishing a mark is merely descriptive. When the issue of whether a mark is merely descriptive or suggestive is not clear, the question is to be resolved in favor of the applicant. In re Gourmet Bakers, Inc., 173 USPQ 565, 565 (TTAB 1972). While Applicant concedes HYBRID SIMULATOR is descriptive (and is disclaimed for this reason), Applicant believes “BIONIC” is suggestive, but not descriptive, of the goods. In determining whether a mark is descriptive, a distinction is drawn between the terms which specifically identify a product or service and those which merely suggest the nature thereof. The latter type is registerable; the former is not. Driving Force, Inc .v. Manpower, Inc. 218 USPQ 613 (E.D. Pa. 1982) at 616. Along these lines, “the best trademarks are often highly suggestive of the advantageous characteristics of the goods”. Minnesota Mining & Manufacturing Co. v. Johnson & Johnson, 172 USPQ 491, 492 (1971). The issue is whether the mark considered in its entirety as applied to the goods in question conveys a readily understood meaning to the average purchaser of such goods. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). This is a question of fact, determined from the viewpoint of the relevant purchasing public. In re Bed & Breakfast Registry, 229 USPQ 819 (Fed. Cir. 1986). Descriptive marks immediately convey information concerning a quality, characteristic, function, ingredient, attribute or feature of applicant’s product. In re Arbor Development Corporation, 200 USPQ 215 (CCPA 1978). The determination of whether or not a mark is merely descriptive is not made in the abstract, but rather in relation to the goods or services for which the registration is sought; the context in which the mark is used, or intended to be used, in connection with those goods or services; and the possible significance which the mark would have, because of that context, to the average purchaser of the goods or services in the marketplace. See In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). In many cases, the Trademark Trial & Appeal Board and the courts have found a mark is not descriptive because the mark does not immediately convey information regarding a characteristic, function, or feature of the goods or service. For example, the mark THE DRIVING FORCE was found to be suggestive rather than descriptive as the term cannot be said to identify services supplying leased truck drivers to business and industry. The Court stated “if THE DRIVING FORCE conveys a meaning at all to potential customers, it merely suggests, very generally, that plaintiff is in the business of providing transportation services”. Id. at 617. “The mark, per se, does not describe the features or functions associated with the plaintiff’s business”. Id. Stating further: There is no possibility that THE DRIVING FORCE could immediately convey the characteristics of applicant’s services to potential customers who have not been exposed to literature or oral presentations which further described them. Id. at 617. To reach such a conclusion would require a great deal of imagination, indeed. The salient characteristic of applicant’s services is that they concern truck drivers. How does the term THE DRIVING FORCE immediately convey the notion of truck drivers, rather than, for example, personal chauffeurs, limousine drivers, bus drivers, taxi cab drivers. Id. at 617. Another characteristic is that the drivers are supplied to clients pursuant to a lease contract. How is that conveyed by the term THE DRIVING FORCE?… Another is that the help is temporary help, available at any time. How is that conveyed? Since we can find no answers to these questions in the record before us, we conclude that THE DRIVING FORCE is suggestive, not descriptive. Id. 617. On its face, BIONIC does not immediately impart/convey information about Applicant’s goods. Certainly no more so than THE DRIVING FORCE imparts information about driving services. “To be characterized as 'descriptive', a term must directly give some reasonably accurate or tolerably distinct knowledge of the characteristics of a product. If information about the product or service given by the term used as a mark is indirect or vague, then this indicates that the term is being used in a 'suggestive', not descriptive, manner." McCarthy, § 11:19, p. 11-25. Applicant is providing copies of registrations on the principal register which pertain to related goods, that contain the term BIONIC, for which no disclaimer of “Bionic” was entered, namely:
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6433241178-20190506170906480641_._03351888.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\792\88179265\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\792\88179265\xml4\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_6433241178-20190506170906480641_._MICRO_BIONIC__WM__Registration__03351915x9FB59_.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\792\88179265\xml4\ROA0004.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\792\88179265\xml4\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_6433241178-20190506170906480641_._BIONIC_READING_Registration__03351905x9FB59_.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\792\88179265\xml4\ROA0006.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\792\88179265\xml4\ROA0007.JPG | |
| ORIGINAL PDF FILE | evi_6433241178-20190506170906480641_._AUDIO_BIONICS_Registration__03351935x9FB59_.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\881\792\88179265\xml4\ROA0008.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\881\792\88179265\xml4\ROA0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | BIONIC-formative registrations with no disclaimer of "Bionic" |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use HYBRID SIMULATOR apart from the mark as shown. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /troy leonard/ |
| SIGNATORY'S NAME | Troy Leonard |
| SIGNATORY'S POSITION | Attorney of Record, South Dakota bar member |
| SIGNATORY'S PHONE NUMBER | 605-336-3890 |
| DATE SIGNED | 05/06/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon May 06 17:23:22 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190506172322419620-88179 265-620788e33e6742befba52 16c4c692e356e8fa44472c8e6 42f28a51ae28f41dc7-N/A-N/ A-20190506170906480641 |
| 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) |
To sustain a refusal as merely descriptive, the examining attorney must show the relevant public perceives the mark as indicating an ingredient, quality, characteristic, function, feature, purpose, or use of the goods of the application. Said another way, the examining attorney bears the burden of establishing a mark is merely descriptive. When the issue of whether a mark is merely descriptive or suggestive is not clear, the question is to be resolved in favor of the applicant. In re Gourmet Bakers, Inc., 173 USPQ 565, 565 (TTAB 1972). While Applicant concedes HYBRID SIMULATOR is descriptive (and is disclaimed for this reason), Applicant believes “BIONIC” is suggestive, but not descriptive, of the goods.
In determining whether a mark is descriptive, a distinction is drawn between the terms which specifically identify a product or service and those which merely suggest the nature thereof. The latter type is registerable; the former is not. Driving Force, Inc .v. Manpower, Inc. 218 USPQ 613 (E.D. Pa. 1982) at 616. Along these lines, “the best trademarks are often highly suggestive of the advantageous characteristics of the goods”. Minnesota Mining & Manufacturing Co. v. Johnson & Johnson, 172 USPQ 491, 492 (1971).
The issue is whether the mark considered in its entirety as applied to the goods in question conveys a readily understood meaning to the average purchaser of such goods. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). This is a question of fact, determined from the viewpoint of the relevant purchasing public. In re Bed & Breakfast Registry, 229 USPQ 819 (Fed. Cir. 1986). Descriptive marks immediately convey information concerning a quality, characteristic, function, ingredient, attribute or feature of applicant’s product. In re Arbor Development Corporation, 200 USPQ 215 (CCPA 1978). The determination of whether or not a mark is merely descriptive is not made in the abstract, but rather in relation to the goods or services for which the registration is sought; the context in which the mark is used, or intended to be used, in connection with those goods or services; and the possible significance which the mark would have, because of that context, to the average purchaser of the goods or services in the marketplace. See In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
In many cases, the Trademark Trial & Appeal Board and the courts have found a mark is not descriptive because the mark does not immediately convey information regarding a characteristic, function, or feature of the goods or service. For example, the mark THE DRIVING FORCE was found to be suggestive rather than descriptive as the term cannot be said to identify services supplying leased truck drivers to business and industry. The Court stated “if THE DRIVING FORCE conveys a meaning at all to potential customers, it merely suggests, very generally, that plaintiff is in the business of providing transportation services”. Id. at 617. “The mark, per se, does not describe the features or functions associated with the plaintiff’s business”. Id. Stating further:
There is no possibility that THE DRIVING FORCE could immediately convey the characteristics of applicant’s services to potential customers who have not been exposed to literature or oral presentations which further described them. Id. at 617. To reach such a conclusion would require a great deal of imagination, indeed. The salient characteristic of applicant’s services is that they concern truck drivers. How does the term THE DRIVING FORCE immediately convey the notion of truck drivers, rather than, for example, personal chauffeurs, limousine drivers, bus drivers, taxi cab drivers. Id. at 617. Another characteristic is that the drivers are supplied to clients pursuant to a lease contract. How is that conveyed by the term THE DRIVING FORCE?… Another is that the help is temporary help, available at any time. How is that conveyed? Since we can find no answers to these questions in the record before us, we conclude that THE DRIVING FORCE is suggestive, not descriptive. Id. 617.
On its face, BIONIC does not immediately impart/convey information about Applicant’s goods. Certainly no more so than THE DRIVING FORCE imparts information about driving services. “To be characterized as 'descriptive', a term must directly give some reasonably accurate or tolerably distinct knowledge of the characteristics of a product. If information about the product or service given by the term used as a mark is indirect or vague, then this indicates that the term is being used in a 'suggestive', not descriptive, manner." McCarthy, § 11:19, p. 11-25.
Applicant is providing copies of registrations on the principal register which pertain to related goods, that contain the term BIONIC, for which no disclaimer of “Bionic” was entered, namely:
MICRO BIONIC & design (Registration Number 4878556) for use with “listening devices for the hearing impaired” – disclaimer of MICRO only.
MICRO BIONIC (Registration Number 4878555) for use with “listening devices for the hearing impaired” – disclaimer of MICRO only.
BIONIC READING (Registration Number 5557651) for use with a teaching program for illiterates – disclaimer of READING only.
AUDIO BIONICS (Registration Number 4485737) for use with a tinnitus therapy system.
Any doubts about the descriptiveness of BIONIC must be resolved in favor of Applicant since "[t]he 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". McCarthy, § 11:51, p. 11-97. As stated by the Trademark Board in finding "COLOR CARE" was not merely descriptive of laundry bleach in In re Morton-Norwich Products, Inc. 209 USPQ 791, 791 (TTAB 1981): "...there is a thin line between a suggestive and a merely descriptive designation, and where reasonable men may differ, it is the Board's practice to resolve the doubt in the applicant's favor and publish the mark for opposition".
The term BIONIC as part of Applicant’s mark BIONIC HYBRID SIMULATOR does not immediately convey the necessary qualities or characteristics of goods sufficient to warrant a finding BIONIC is merely descriptive of the same. And for this reason, Applicant respectfully requests the Subject Mark be approved for publication with a disclaimer of HYBRID SIMULATOR only.
