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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88220020 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 125 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88220020/mark.png |
| LITERAL ELEMENT |
DOUBLE MEDAL |
| 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) |
|
On March 6, 2019, the Office issued an office action preliminarily refusing registration to Applicant’s DOUBLE MEDAL trademark (“Applicant’s Mark”) under Section 2(e)(1), on the ground that
Applicant’s mark is merely descriptive in relation to the identified goods, namely “Alcoholic beverages, except beer; Wine” in Class 33. Applicant, through its attorneys, respectfully requests that
the Office withdraw the Section 2(e)(1) refusal on the ground that Applicant’s Mark makes a new and unique commercial impression when used as a stand-alone unitary trademark in connection with the
applied-for goods.
Trademarks can be categorized along a continuum of distinctiveness, from generic and descriptive to suggestive, arbitrary, and fanciful terms. See In re Merrill Lynch, Pierce, Fenner,
& Smith Inc., 828 F.2d 1567 (Fed. Cir. 1987). It is well-established that a “mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or
characteristics of the goods or services related to the mark.” In re Oppendahl & Larson LLP, 373 F.3d 1171, 71 U.S.P.Q. 1370, 1371 (Fed. Cir. 2004), quoting Estate of P.D.
Beckworth, Inc. v. Commissioner, 252 U.S. 538, 543 (1920). In this context, “merely” is synonymous with “only.” In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 525, n.7, 205 U.S.P.Q.
505 (C.C.P.A. 1980). To be “merely” descriptive, the term must be “only” descriptive, i.e., the term serves no purpose other than to describe the goods or services. In re
Quick-Print Copy Shop, Inc., 205 U.S.P.Q. 505 (C.C.P.A. 1980). Whether a mark is merely descriptive or inherently distinctive is determined in relation to the goods for which registration is
sought, the context in which the mark is used, and the possible significance the term would have to the average consumer because of the manner of its use or intended use. In re TriVita,
Inc., 783 F.3d 872 (Fed. Cir. 2015).
The Office bears the burden of establishing that a mark is unregistrable because it is merely descriptive within the meaning of Section 2(e)(1). In re Bayer, 488 F.3d at 964.
Further, any doubt as to whether a mark is merely descriptive or suggestive is resolved in favor of the Applicant by allowing publication of the mark for opposition. In re Merrill Lynch,
Pierce Fenner & Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1144 (Fed. Cir. 1987); In re On Tech. Corp., 41 U.S.P.Q.2d 1475, 1477 (T.T.A.B. 1996). The Office “must establish a
reasonable predicate for the [descriptiveness] refusal, based on substantial evidence, i.e., more than a scintilla of evidence.” In re Microsoft Corp., 68 U.S.P.Q.2d 1195
(T.T.A.B. 2013) (citing In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003)). As the arguments below will establish, Applicant’s Mark is suggestive, not merely descriptive, and thus
is registrable on the Principal Register.
Applicant’s Mark is not merely descriptive of the claimed goods because consumers would not perceive DOUBLE MEDAL to describe a feature of the goods offered by Applicant. As evidence that DOUBLE
MEDAL is merely descriptive in the context of alcoholic beverages, the Office has cited to instances where different wines and spirits won two medals and are thus promoted as a “double medal winner”.
Applicant first notes that the Emporio Wine and Think Gin Club websites are based outside of the United States, and thus are not relevant to this analysis. Regardless of the sufficiency, or lack
thereof, of the Office’s evidence, it is clear that Applicant’s DOUBLE MEDAL mark is suggestive, not merely descriptive, of a characteristic of the goods. That is, the mark evokes a new and unique
commercial impression that is separate from any alleged descriptiveness, and suggests to consumers that the goods are of high quality. Consumers encountering Applicant’s Mark must make a mental leap
in order to reach a conclusion as to the significance of the mark in relation to Applicant’s goods. Consumers will not, therefore, make an immediate connection between Applicant’s products and a
quality, ingredient, or characteristic thereof, thus belying the conclusion that Applicant’s Mark is merely descriptive of its goods. Applicant’s Mark requires the “imagination, thought, [and]
perception to reach a conclusion as to the nature of [Applicant’s] services,” which are the hallmarks of suggestive trademarks. See TMEP § 1209.01(a).
The TTAB has held that “an applicant need not conclusively establish distinctiveness but need only establish a prima facie case to warrant publication of a mark for
opposition.” In re Capital Formation Counselors, Inc., 219 U.S.P.Q. 916, 919 (TTAB 1983) (cited with approval in Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576
(Fed. Cir. 1988)). Moreover, the determination of whether a mark is merely descriptive must be resolved in favor of the applicant by publishing the mark and allowing any person who believes he or she
would be damaged by the registration of the mark to file an opposition. See In re Bed-Check Corp., 226 U.S.P.Q. 946, 948 (T.T.A.B. 1985). As was stated in In re Gourmet Bakers,
Inc., 173 U.S.P.Q. 565 (TTAB 1972), any doubt in determining registrability must be resolved in favor of applicant “on the theory that any person who believes that he would be damaged by the
registration will have an opportunity … to oppose the registration of the mark and to present evidence, usually not present in the ex parte application, to that
effect.” Accord In re Grand Metro Foodservice Inc., 30 U.S.P.Q.2d 1974, 1976 (TTAB 1994); In re Priefert Mfg. Co., 222 U.S.P.Q. 731, 733 (TTAB 1984); In re Aid
Laboratories, Inc., 221 U.S.P.Q. 12215, 1216 (TTAB 1983).
Finally, the Office has advised Applicant that U.S. Application Serial No. 88158235 (the “Cited Application”) poses a potential bar to registration of Applicant’s mark on the basis that if the
Cited Application proceeds to registration, a likelihood of confusion between the marks may result. Applicant notes that the Cited Application was abandoned on July 30, 2019.
In light of the arguments set forth above, Applicant submits that it has shown at least a prima facie case that its proposed mark is not merely descriptive. As the Board has
repeatedly stated, any doubt should be resolved in favor of publication.
For the forgoing reasons, Applicant respectfully requests that the Office withdraw its statutory refusal and allow the application to proceed to publication.
|
| ATTORNEY SECTION (current) |
| NAME |
Matthew Saunders |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
Saunders & Silverstein LLP |
| STREET |
14 Cedar Street Suite 224 |
| CITY |
Amesbury |
| STATE |
Massachusetts |
| POSTAL CODE |
01913 |
| COUNTRY |
US |
| PHONE |
978-463-9100 |
| EMAIL |
trademarks@sandsip.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
1257.402.22 |
| ATTORNEY SECTION (proposed) |
| NAME |
Matthew Saunders |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
Saunders & Silverstein LLP |
| STREET |
14 Cedar Street Suite 224 |
| CITY |
Amesbury |
| STATE |
Massachusetts |
| POSTAL CODE |
01913 |
| COUNTRY |
United States |
| PHONE |
978-463-9100 |
| EMAIL |
trademarks@sandsip.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
1257.402.22 |
| OTHER APPOINTED ATTORNEY |
each of the attorneys of Saunders & Silverstein LLP |
| CORRESPONDENCE SECTION (current) |
| NAME |
Matthew Saunders |
| FIRM NAME |
Saunders & Silverstein LLP |
| STREET |
14 Cedar Street Suite 224 |
| CITY |
Amesbury |
| STATE |
Massachusetts |
| POSTAL CODE |
01913 |
| COUNTRY |
US |
| PHONE |
978-463-9100 |
| EMAIL |
trademarks@sandsip.com; msaunders@sandsip.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
1257.402.22 |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
Matthew Saunders |
| FIRM NAME |
Saunders & Silverstein LLP |
| STREET |
14 Cedar Street Suite 224 |
| CITY |
Amesbury |
| STATE |
Massachusetts |
| POSTAL CODE |
01913 |
| COUNTRY |
United States |
| PHONE |
978-463-9100 |
| EMAIL |
trademarks@sandsip.com; msaunders@sandsip.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
1257.402.22 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/matthew saunders/ |
| SIGNATORY'S NAME |
Matthew Saunders |
| SIGNATORY'S POSITION |
Attorney of record, MA/NH bar member |
| SIGNATORY'S PHONE NUMBER |
978-463-9100 |
| DATE SIGNED |
09/06/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Fri Sep 06 09:00:36 EDT 2019 |
| TEAS STAMP |
USPTO/ROA-XXX.X.XX.XXX-20
190906090036162520-882200
20-610f493ee6dec2ed2852b4
c56b6a2692263f7c6b15d298c
7dda8e56ba19b39fa6-N/A-N/
A-20190906085548861829 |
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.
88220020 DOUBLE MEDAL(Standard Characters, see http://uspto.report/TM/88220020/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
On March 6, 2019, the Office issued an office action preliminarily refusing registration to Applicant’s DOUBLE MEDAL trademark (“Applicant’s Mark”) under Section 2(e)(1), on the ground that
Applicant’s mark is merely descriptive in relation to the identified goods, namely “Alcoholic beverages, except beer; Wine” in Class 33. Applicant, through its attorneys, respectfully requests that
the Office withdraw the Section 2(e)(1) refusal on the ground that Applicant’s Mark makes a new and unique commercial impression when used as a stand-alone unitary trademark in connection with the
applied-for goods.
Trademarks can be categorized along a continuum of distinctiveness, from generic and descriptive to suggestive, arbitrary, and fanciful terms. See In re Merrill Lynch, Pierce, Fenner,
& Smith Inc., 828 F.2d 1567 (Fed. Cir. 1987). It is well-established that a “mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or
characteristics of the goods or services related to the mark.” In re Oppendahl & Larson LLP, 373 F.3d 1171, 71 U.S.P.Q. 1370, 1371 (Fed. Cir. 2004), quoting Estate of P.D.
Beckworth, Inc. v. Commissioner, 252 U.S. 538, 543 (1920). In this context, “merely” is synonymous with “only.” In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 525, n.7, 205 U.S.P.Q.
505 (C.C.P.A. 1980). To be “merely” descriptive, the term must be “only” descriptive, i.e., the term serves no purpose other than to describe the goods or services. In re
Quick-Print Copy Shop, Inc., 205 U.S.P.Q. 505 (C.C.P.A. 1980). Whether a mark is merely descriptive or inherently distinctive is determined in relation to the goods for which registration is
sought, the context in which the mark is used, and the possible significance the term would have to the average consumer because of the manner of its use or intended use. In re TriVita,
Inc., 783 F.3d 872 (Fed. Cir. 2015).
The Office bears the burden of establishing that a mark is unregistrable because it is merely descriptive within the meaning of Section 2(e)(1). In re Bayer, 488 F.3d at 964.
Further, any doubt as to whether a mark is merely descriptive or suggestive is resolved in favor of the Applicant by allowing publication of the mark for opposition. In re Merrill Lynch,
Pierce Fenner & Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1144 (Fed. Cir. 1987); In re On Tech. Corp., 41 U.S.P.Q.2d 1475, 1477 (T.T.A.B. 1996). The Office “must establish a
reasonable predicate for the [descriptiveness] refusal, based on substantial evidence, i.e., more than a scintilla of evidence.” In re Microsoft Corp., 68 U.S.P.Q.2d 1195
(T.T.A.B. 2013) (citing In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003)). As the arguments below will establish, Applicant’s Mark is suggestive, not merely descriptive, and thus
is registrable on the Principal Register.
Applicant’s Mark is not merely descriptive of the claimed goods because consumers would not perceive DOUBLE MEDAL to describe a feature of the goods offered by Applicant. As evidence that DOUBLE
MEDAL is merely descriptive in the context of alcoholic beverages, the Office has cited to instances where different wines and spirits won two medals and are thus promoted as a “double medal winner”.
Applicant first notes that the Emporio Wine and Think Gin Club websites are based outside of the United States, and thus are not relevant to this analysis. Regardless of the sufficiency, or lack
thereof, of the Office’s evidence, it is clear that Applicant’s DOUBLE MEDAL mark is suggestive, not merely descriptive, of a characteristic of the goods. That is, the mark evokes a new and unique
commercial impression that is separate from any alleged descriptiveness, and suggests to consumers that the goods are of high quality. Consumers encountering Applicant’s Mark must make a mental leap
in order to reach a conclusion as to the significance of the mark in relation to Applicant’s goods. Consumers will not, therefore, make an immediate connection between Applicant’s products and a
quality, ingredient, or characteristic thereof, thus belying the conclusion that Applicant’s Mark is merely descriptive of its goods. Applicant’s Mark requires the “imagination, thought, [and]
perception to reach a conclusion as to the nature of [Applicant’s] services,” which are the hallmarks of suggestive trademarks. See TMEP § 1209.01(a).
The TTAB has held that “an applicant need not conclusively establish distinctiveness but need only establish a prima facie case to warrant publication of a mark for
opposition.” In re Capital Formation Counselors, Inc., 219 U.S.P.Q. 916, 919 (TTAB 1983) (cited with approval in Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576
(Fed. Cir. 1988)). Moreover, the determination of whether a mark is merely descriptive must be resolved in favor of the applicant by publishing the mark and allowing any person who believes he or she
would be damaged by the registration of the mark to file an opposition. See In re Bed-Check Corp., 226 U.S.P.Q. 946, 948 (T.T.A.B. 1985). As was stated in In re Gourmet Bakers,
Inc., 173 U.S.P.Q. 565 (TTAB 1972), any doubt in determining registrability must be resolved in favor of applicant “on the theory that any person who believes that he would be damaged by the
registration will have an opportunity … to oppose the registration of the mark and to present evidence, usually not present in the ex parte application, to that
effect.” Accord In re Grand Metro Foodservice Inc., 30 U.S.P.Q.2d 1974, 1976 (TTAB 1994); In re Priefert Mfg. Co., 222 U.S.P.Q. 731, 733 (TTAB 1984); In re Aid
Laboratories, Inc., 221 U.S.P.Q. 12215, 1216 (TTAB 1983).
Finally, the Office has advised Applicant that U.S. Application Serial No. 88158235 (the “Cited Application”) poses a potential bar to registration of Applicant’s mark on the basis that if the
Cited Application proceeds to registration, a likelihood of confusion between the marks may result. Applicant notes that the Cited Application was abandoned on July 30, 2019.
In light of the arguments set forth above, Applicant submits that it has shown at least a prima facie case that its proposed mark is not merely descriptive. As the Board has
repeatedly stated, any doubt should be resolved in favor of publication.
For the forgoing reasons, Applicant respectfully requests that the Office withdraw its statutory refusal and allow the application to proceed to publication.
The applicant's current attorney information: Matthew Saunders. Matthew Saunders of Saunders & Silverstein LLP, is located at
14 Cedar Street Suite 224
Amesbury, Massachusetts 01913
US
The docket/reference number is 1257.402.22.
The phone number is 978-463-9100.
The email address is trademarks@sandsip.com
The applicants proposed attorney information: Matthew Saunders. Other appointed attorneys are each of the attorneys of Saunders & Silverstein LLP. Matthew Saunders of Saunders &
Silverstein LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
14 Cedar Street Suite 224
Amesbury, Massachusetts 01913
United States
The docket/reference number is 1257.402.22.
The phone number is 978-463-9100.
The email address is trademarks@sandsip.com
Matthew Saunders 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: Matthew Saunders. Matthew Saunders of Saunders & Silverstein LLP, is located at
14 Cedar Street Suite 224
Amesbury, Massachusetts 01913
US
The docket/reference number is 1257.402.22.
The phone number is 978-463-9100.
The email address is trademarks@sandsip.com; msaunders@sandsip.com
The applicants proposed correspondence information: Matthew Saunders. Matthew Saunders of Saunders & Silverstein LLP, is located at
14 Cedar Street Suite 224
Amesbury, Massachusetts 01913
United States
The docket/reference number is 1257.402.22.
The phone number is 978-463-9100.
The email address is trademarks@sandsip.com; msaunders@sandsip.com
SIGNATURE(S)
Response Signature
Signature: /matthew saunders/ Date: 09/06/2019
Signatory's Name: Matthew Saunders
Signatory's Position: Attorney of record, MA/NH bar member
Signatory's Phone Number: 978-463-9100
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: Matthew Saunders
Saunders & Silverstein LLP
14 Cedar Street Suite 224
Amesbury, Massachusetts 01913
Mailing Address: Matthew Saunders
Saunders & Silverstein LLP
14 Cedar Street Suite 224
Amesbury, Massachusetts 01913
Serial Number: 88220020
Internet Transmission Date: Fri Sep 06 09:00:36 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.X.XX.XXX-20190906090036162
520-88220020-610f493ee6dec2ed2852b4c56b6
a2692263f7c6b15d298c7dda8e56ba19b39fa6-N
/A-N/A-20190906085548861829