| 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 | 88260885 |
| LAW OFFICE ASSIGNED | LAW OFFICE 119 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88260885/mark.png |
| LITERAL ELEMENT | PREVIEW |
| 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) | |
|
Applicant respectfully submits the following response to the Office Action issued on March 20, 2019, pursuant to Section 2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1) and requests that refusal is withdrawn and the application is allowed on the Supplemental Register. The Trademark Trial and Appeal Board (the “Board”) has stated in In re Women’s Publ'g Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992), “[t]he Examining Attorney’s refusal that applicant’s mark is "so highly descriptive that it is incapable of acting as a trademark" is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration . . . on the basis that the mark sought to be registered is generic.” While the decision does not explicitly bar the use of the terminology "so highly descriptive that it is incapable of acting as a trademark" under all circumstances, the case illustrates that the use of this terminology should be avoided. It is particularly important in this context to use the precise statutory language to avoid doctrinal confusion. See generally Linda McLeod, The Status of So Highly Descriptive and Acquired Distinctiveness, 82 Trademark Rep. 607 (1992). Therefore, Examining Attorneys must not state that a mark is "so highly descriptive that it is incapable of acting as a trademark" in issuing refusals. Rather, the statutory terminology "generic name for the goods or services" must be used in appropriate refusals. Accordingly, Applicant submits that the applied-for mark is capable of registration on the Supplemental Register, as it has not been found to be generic. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /GRE/ |
| SIGNATORY'S NAME | G. Roxanne Elings |
| SIGNATORY'S POSITION | Attonry of Record, NY State Bar Member |
| DATE SIGNED | 09/20/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Sep 20 22:26:03 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20190920222603037182-8826 0885-610e15480198745a037c 4b8775d7c646e915c9b4e3f93 b50ce508b8cb84c14a142-N/A -N/A-20190920222334947296 |
| 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) |
Applicant respectfully submits the following response to the Office Action issued on March 20, 2019, pursuant to Section 2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1) and requests that refusal is withdrawn and the application is allowed on the Supplemental Register.
The Trademark Trial and Appeal Board (the “Board”) has stated in In re Women’s Publ'g Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992), “[t]he Examining Attorney’s refusal that applicant’s mark is "so highly descriptive that it is incapable of acting as a trademark" is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration . . . on the basis that the mark sought to be registered is generic.” While the decision does not explicitly bar the use of the terminology "so highly descriptive that it is incapable of acting as a trademark" under all circumstances, the case illustrates that the use of this terminology should be avoided. It is particularly important in this context to use the precise statutory language to avoid doctrinal confusion. See generally Linda McLeod, The Status of So Highly Descriptive and Acquired Distinctiveness, 82 Trademark Rep. 607 (1992). Therefore, Examining Attorneys must not state that a mark is "so highly descriptive that it is incapable of acting as a trademark" in issuing refusals. Rather, the statutory terminology "generic name for the goods or services" must be used in appropriate refusals.
Accordingly, Applicant submits that the applied-for mark is capable of registration on the Supplemental Register, as it has not been found to be generic.