| 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 | 88243161 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88243161/mark.png |
| LITERAL ELEMENT | POT.LIVE |
| 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) | |
|
I. INTRODUCTION Applicant, B3 Management LLC ("Applicant"), files this Response to the Office Action issued on February 13, 2019, with respect to Application Serial No. 88/243161 (the "Application") for the mark POT.LIVE ("Applicant's Mark") for the following goods: Class 9: Computer application software for mobile phones, namely, software for viewing and sharing of entertainment content, namely, multimedia content, animations, video footage, text and still images. II. REQUEST FOR INFORMATION In the Office Action, the Examining Attorney requested, "Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant's website as it relates to the services." Applicant's goods are currently in the planning stages and none of these items have been created in association with Applicant's goods. Regarding what is planned for the goods, analogous mobile phone apps would include social media apps such as Twitter, Facebook, YouTube, Instagram, and Reddit where users share videos, memes, and other entertainment content. The Examining Attorney further asked for a response to the following question: Does the applicant's goods relate to or allow the user to view and/or share information relating to marijuana or marijuana-related goods and/or services? The planned goods are not specifically for viewing or sharing information relating to marijuana or marijuana-related goods and/or services. The content will be user submitted and not pre-screened so any type of video, meme, or entertainment content could be submitted. III. APPLICANT'S MARK IS NOT MERELY DESCRIPTIVE The Examining Attorney argues that "POT" merely describes Applicant's goods. In making this argument, the Examining Attorney states that the term POT is a term for marijuana and therefore "merely describes the scope of, and therefore a characteristic of the applicant's services." The Examining Attorney further completely discounts the suffix ".LIVE" included in the mark, citing, In re Oppedahl & Larsen LLP, 373 F.3d 1171 which suggested that there should be unique or exceptional circumstances to provide substantial weight to a gTLD used as part of a trademark. Regardless of the weight to be applied to a gTLD, the fact remains that POT.LIVE is distinct from POT by itself. A consumer seeing or hearing POT.LIVE would view such a mark as a single source identifier of the goods, not a merely descriptive term. Simply disregarding the a gTLD is analogous to the anti-dissection rule where it is error to focus merely on the prominent features of a mark in a likelihood of confusion analysis. See, e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (CCPA 1974). There is no basis for refusing registration of Applicant's mark under Section 2(e) of the Trademark Act. Such refusals are only appropriate for marks that are merely descriptive of the goods or services for which they are sought to be registered. The term "merely," in Section 2(e) of the Trademark Act, is to be taken in its ordinary meaning of "only." In other words, when considered with the particular goods or services, the mark, because of its meaning, must do nothing but describe those goods or services. In re Colonial Stores, Inc., 157 U.S.P.Q. 382 (C.C.P.A. 1968). To be merely descriptive under the Lanham Act, a mark must directly, unequivocally and without requiring second thought, inform the average purchaser of an attribute of the goods/services offered. The mark must be totally and solely descriptive. See, e.g., In re Quick-Print Copy Shops, Inc., 616 F.2d 523, 525 n.7 (C.C.P.A. 1980). Applicant's mark, POT.LIVE, is not merely descriptive of the goods for which Applicant seeks registration, namely, software for viewing and sharing of entertainment content. In relation to software, POT.LIVE is arbitrary. Even if the mark may be deemed suggestive of a type of video or meme a user could potentially share on the software, such suggestiveness does not adversely affect the term's function as a mark. It is, of course, well-established that suggestive marks, i.e., those that require some imagination, thought, or perception to reach a conclusion as to the nature of the goods or services, are registrable on the Principal Register. See In re George Weston Ltd., 228 U.S.P.Q. 57 (T.T.A.B. 1985) (SPEEDI BAKE for frozen dough registrable); In re Penwalt Corp., 173 U.S.P.Q. 317 (T.T.A.B. 1972) (DRI-FOOT for foot deodorant registrable). Indeed, "a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable." TMEP § 1209.01(a). In all suggestive marks, there is some description but, often enough, there is an element of incongruity in the way in which a suggestive mark sheds light on the characteristics of goods. Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 146 (3d Cir. 1953). Even if some feature of Applicant's goods can be derived from the mark, the end user must go through a thought process and obtain specific knowledge of Applicant's goods before obtaining an accurate understanding of the scope of those goods. See, e.g., In re The Realistic Company, 440 F.2d 1393 (C.C.P.A. 1971) ("CURV" suggestive for permanent curling solutions); No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226 U.S.P.Q. 502, 507 (T.T.A.B. 1985) ("Sheer Elegance'" suggestive for sheer pantyhose). The thought, imagination and mental pause that are required to make the association are strong evidence that the mark is suggestive. See BellSouth Corp. v. Planum Tech. Corp., 14 U.S.P.Q.2d 1555 (T.T.A.B. 1988) ("multi-stage reasoning process is necessary in order to ascertain the nature or function of applicant's goods," thus, PHONE FORWARD held to be merely suggestive). Finally, where the border between finding a mark descriptive or suggestive is ambiguous, the Office should "resolve the doubt in the Applicant's favor and publish the mark for opposition." In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987); In re Aid Lab, Inc., 221 U.S.P.Q. 380 (T.T.A.B. 1983); In re The Gracious Lady Service, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972); In re Conductive Sys., Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983). Here the evidence of record indicates that the term POT.LIVE, at most suggestive, not merely descriptive of Applicant's goods. IV. CONCLUSION In view of the above, Applicant respectfully submits that this application is now in condition for allowance. Thus, Applicant requests that the refusal to register Applicant's Mark be reconsidered, and the application be passed to publication. If any matters remain outstanding, the Examining Attorney is invited to contact the undersigned by telephone or email.
|
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /MB/ |
| SIGNATORY'S NAME | Mark Borghese |
| SIGNATORY'S POSITION | Attorney of record, Nevada bar member |
| SIGNATORY'S PHONE NUMBER | (702) 382-0200 |
| DATE SIGNED | 04/30/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Apr 30 18:13:00 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20190430181300271590-8824 3161-62058149ace6d78f9e7e d351c5ec1a61d9aca6a75871e 3961ebe5e77bdcc9ed1b7-N/A -N/A-20190430181213368836 |
| 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) |
I. INTRODUCTION
Applicant, B3 Management LLC ("Applicant"), files this Response to the Office Action issued on February 13, 2019, with respect to Application Serial No. 88/243161 (the "Application") for the mark POT.LIVE ("Applicant's Mark") for the following goods:
Class 9: Computer application software for mobile phones, namely, software for viewing and sharing of entertainment content, namely, multimedia content, animations, video footage, text and still images.
II. REQUEST FOR INFORMATION
In the Office Action, the Examining Attorney requested, "Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant's website as it relates to the services." Applicant's goods are currently in the planning stages and none of these items have been created in association with Applicant's goods.
Regarding what is planned for the goods, analogous mobile phone apps would include social media apps such as Twitter, Facebook, YouTube, Instagram, and Reddit where users share videos, memes, and other entertainment content.
The Examining Attorney further asked for a response to the following question: Does the applicant's goods relate to or allow the user to view and/or share information relating to marijuana or marijuana-related goods and/or services?
The planned goods are not specifically for viewing or sharing information relating to marijuana or marijuana-related goods and/or services. The content will be user submitted and not pre-screened so any type of video, meme, or entertainment content could be submitted.
III. APPLICANT'S MARK IS NOT MERELY DESCRIPTIVE
The Examining Attorney argues that "POT" merely describes Applicant's goods. In making this argument, the Examining Attorney states that the term POT is a term for marijuana and therefore "merely describes the scope of, and therefore a characteristic of the applicant's services."
The Examining Attorney further completely discounts the suffix ".LIVE" included in the mark, citing, In re Oppedahl & Larsen LLP, 373 F.3d 1171 which suggested that there should be unique or exceptional circumstances to provide substantial weight to a gTLD used as part of a trademark.
Regardless of the weight to be applied to a gTLD, the fact remains that POT.LIVE is distinct from POT by itself. A consumer seeing or hearing POT.LIVE would view such a mark as a single source identifier of the goods, not a merely descriptive term. Simply disregarding the a gTLD is analogous to the anti-dissection rule where it is error to focus merely on the prominent features of a mark in a likelihood of confusion analysis. See, e.g., Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (CCPA 1974).
There is no basis for refusing registration of Applicant's mark under Section 2(e) of the Trademark Act. Such refusals are only appropriate for marks that are merely descriptive of the goods or services for which they are sought to be registered. The term "merely," in Section 2(e) of the Trademark Act, is to be taken in its ordinary meaning of "only." In other words, when considered with the particular goods or services, the mark, because of its meaning, must do nothing but describe those goods or services. In re Colonial Stores, Inc., 157 U.S.P.Q. 382 (C.C.P.A. 1968). To be merely descriptive under the Lanham Act, a mark must directly, unequivocally and without requiring second thought, inform the average purchaser of an attribute of the goods/services offered. The mark must be totally and solely descriptive. See, e.g., In re Quick-Print Copy Shops, Inc., 616 F.2d 523, 525 n.7 (C.C.P.A. 1980).
Applicant's mark, POT.LIVE, is not merely descriptive of the goods for which Applicant seeks registration, namely, software for viewing and sharing of entertainment content. In relation to software, POT.LIVE is arbitrary. Even if the mark may be deemed suggestive of a type of video or meme a user could potentially share on the software, such suggestiveness does not adversely affect the term's function as a mark.
It is, of course, well-established that suggestive marks, i.e., those that require some imagination, thought, or perception to reach a conclusion as to the nature of the goods or services, are registrable on the Principal Register. See In re George Weston Ltd., 228 U.S.P.Q. 57 (T.T.A.B. 1985) (SPEEDI BAKE for frozen dough registrable); In re Penwalt Corp., 173 U.S.P.Q. 317 (T.T.A.B. 1972) (DRI-FOOT for foot deodorant registrable).
Indeed, "a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable." TMEP § 1209.01(a). In all suggestive marks, there is some description but, often enough, there is an element of incongruity in the way in which a suggestive mark sheds light on the characteristics of goods. Tips, Inc. v. Johnson & Johnson, 206 F.2d 144, 146 (3d Cir. 1953).
Even if some feature of Applicant's goods can be derived from the mark, the end user must go through a thought process and obtain specific knowledge of Applicant's goods before obtaining an accurate understanding of the scope of those goods. See, e.g., In re The Realistic Company, 440 F.2d 1393 (C.C.P.A. 1971) ("CURV" suggestive for permanent curling solutions); No Nonsense Fashions, Inc. v. Consolidated Foods Corp., 226 U.S.P.Q. 502, 507 (T.T.A.B. 1985) ("Sheer Elegance'" suggestive for sheer pantyhose). The thought, imagination and mental pause that are required to make the association are strong evidence that the mark is suggestive. See BellSouth Corp. v. Planum Tech. Corp., 14 U.S.P.Q.2d 1555 (T.T.A.B. 1988) ("multi-stage reasoning process is necessary in order to ascertain the nature or function of applicant's goods," thus, PHONE FORWARD held to be merely suggestive).
Finally, where the border between finding a mark descriptive or suggestive is ambiguous, the Office should "resolve the doubt in the Applicant's favor and publish the mark for opposition." In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987); In re Aid Lab, Inc., 221 U.S.P.Q. 380 (T.T.A.B. 1983); In re The Gracious Lady Service, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972); In re Conductive Sys., Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983).
Here the evidence of record indicates that the term POT.LIVE, at most suggestive, not merely descriptive of Applicant's goods.
IV. CONCLUSION
In view of the above, Applicant respectfully submits that this application is now in condition for allowance. Thus, Applicant requests that the refusal to register Applicant's Mark be reconsidered, and the application be passed to publication. If any matters remain outstanding, the Examining Attorney is invited to contact the undersigned by telephone or email.