Response to Office Action

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)

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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

To the Commissioner for Trademarks:

Application serial no. 88200857 BANNERPOPS(Standard Characters, see http://uspto.report/TM/88200857/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney has refused registration of the Applicant?s mark BANNERPOPS on the Principal Register on the basis that the proposed mark merely describes the goods. Applicant submits that its mark is a coined term for Applicant?s products and is not descriptive of the subject goods. A proper test for descriptiveness under ? 2(e) (1) is whether Applicant?s mark immediately conveys to consumers the nature of Applicant?s goods, or whether consumers must use ?imagination, thought, and perception? to draw that conclusion. Stix Products, Inc. v. United Merchants and Manufacturers, Inc., 295 F. Supp. 479,488 (S.D.N.Y. 1968). To be characterized as ?merely descriptive? a mark must ?immediately convey to one seeing or hearing it the thought of appellant?s services.? In re Bed and Breakfast Registry, 791 F.2d 157,159 (Fed. Cir. 1986). Moreover, in order to be descriptive, the mark must immediately convey information as to the qualities, features or characteristics of the goods and/or services with a ?degree of particularity.? Plus Products v. Medical Modalities Associates, Inc., 211 U.S.P.Q. 1199, 1204- 1205 (T.T.A.B. 1981). In the present case, the wording BANNERPOPS does not immediately convey to one seeing the mark the specific nature of the goods and the fact that they are point of purchase displays. As such, Applicant indicates that the mark must be deemed suggestive rather than descriptive of the goods and hence requests that the mere descriptiveness refusal be withdrawn.

The applicant's current attorney information: Andrew S. Ehard. Andrew S. Ehard of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      US
The docket/reference number is 8995.121US02.

The fax number is 612/332-9081.

The email address is dockmpls@merchantgould.com

The applicants proposed attorney information: Andrew S. Ehard. Andrew S. Ehard of MERCHANT & GOULD P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      United States
The docket/reference number is 8995.121US02.

The fax number is 612/332-9081.

The email address is dockmpls@merchantgould.com

Andrew S. Ehard submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: ANDREW S. EHARD. ANDREW S. EHARD of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      US
The docket/reference number is 8995.121US02.

The fax number is 612/332-9081.

The email address is dockmpls@merchantgould.com; aehard@merchantgould.com

The applicants proposed correspondence information: Andrew S. Ehard. Andrew S. Ehard of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      United States
The docket/reference number is 8995.121US02.

The fax number is 612/332-9081.

The email address is dockmpls@merchantgould.com

SIGNATURE(S)
Response Signature
Signature: /Andrew S. Ehard/     Date: 08/26/2019
Signatory's Name: Andrew S. Ehard
Signatory's Position: Attorney for Applicant, MN Bar

Signatory's Phone Number: 612.336.4602

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    ANDREW S. EHARD
   MERCHANT & GOULD P.C.
   
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
Mailing Address:    Andrew S. Ehard
   MERCHANT & GOULD P.C.
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
        
Serial Number: 88200857
Internet Transmission Date: Mon Aug 26 14:32:17 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908261432170
12756-88200857-610d7856a9bab6af07a5d4635
1a7895518766372d43e54861d4e8ad9b3a16d7-N
/A-N/A-20190826142710142399