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. 88282584 SMART PULL(Standard Characters, see http://uspto.report/TM/88282584/mark.png) has been amended as follows:

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

Applicant thanks the examining attorney for the thorough consideration given the present application.

2(e)(1) merely descriptive refusal:

Applicant's SMART PULL mark is refused registration on the Principal Register for use with “refrigerators; handles for refrigerators” because the mark purportedly merely describes a feature or characteristic of applicant's goods.

Applicant respectfully traverses because the Office Action evidence does not show descriptive use of the complete composite mark "SMART PULL" or any evidence of industry-wide use or consumer understanding of the complete mark. While the mark may be suggestive of a feature or characteristic of the goods in the application, it is not merely descriptive of them. It is not necessary that the mark be completely devoid of all meaning in relation to the goods, only that it not immediately tells the consumer something particular about the goods. The evidence provided is insufficient to show descriptive use throughout the industry that would result in the immediate understanding by consumers of a feature of the goods, such that the mark may be considered merely descriptive with respect to the goods. The only evidence of record are dictionary definitions of the component parts of the mark.

Applicant respectfully submits that its mark is suggestive rather than merely descriptive, and thus is registrable on the Principal Register. Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re George Weston Ltd., 228 USPQ 57 (TTAB 1985) (SPEEDI BAKE for frozen dough found to fall within the category of suggestive marks because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be baked into bread); In re The Noble Co., 225 USPQ 749 (TTAB 1985) (NOBURST for liquid antifreeze and rust inhibitor for hot-water-heating systems found to suggest a desired result of using the product rather than immediately informing the purchasing public of a characteristic, feature, function, or attribute); In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972) (DRI-FOOT held suggestive of anti-perspirant deodorant for feet in part because, in the singular, it is not the usual or normal manner in which the purpose of an anti-perspirant and deodorant for the feet would be described).

The examining attorney bears the burden of presenting a prima facie case that a mark is merely descriptive before the examining attorney can properly reject the mark. In re Microsoft Corp., 68 USPQ2d 1195, 1200-1201 (TTAB 2003). To carry this burden, the examining attorney must present substantial evidence that the mark is merely descriptive. Id. The Office Action evidence is insufficient to establish a prima facie case that the SMART PULL mark is merely descriptive. When doubts exist as to whether a term is descriptive as applied to the goods or services for which registration is sought, it is the practice of the Trademark Trial and Appeal Board to resolve those doubts in favor of the applicant, and allow the mark to register. In re Grand Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994).

In the alternative, applicant’s mark has acquired the distinctiveness necessary for registration on the Principal Register as a result of applicant’s substantially exclusive use of the mark for the five years immediately preceding the filing of the application. Applicant owned Reg. No. 4169428 for the mark SMART PULL for use with “refrigerator handles sold as an integral component to electric refrigerators,” which issued July 3, 2012. Applicant has continued to use that mark since at least that time.

For the foregoing reasons, applicant respectfully requests the withdrawal of the section 2(e)(1) refusal.

Failure to Function as a Trademark

Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. The applied-for mark, as shown on the specimen, purportedly does not function as a trademark because as evidenced by the applicant’s specimen of use the applicant’s mark appears as a feature of the applicant’s goods and not the handles themselves.

Applicant has amended the application to clarify that the handles are sold as an integral component of the refrigerators. Applicant also submits the additional specimens filed herewith, which more clearly show use of the SMART PULL as a source identifier. Withdrawal of this ground of refusal is respectfully requested.

EVIDENCE
Evidence in the nature of TSDR information for Reg. No. 4169428; additional proof re: nature of use of the SMART PULL mark has been attached.
Original PDF file:
evi_19235139129-20190912143814698504_._RN_4169428.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_19235139129-20190912143814698504_._lg-24-0-cu-ft-counter-depth-french.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_19235139129-20190912143814698504_._lg-25-cu-ft-3-door-french-doorre.pdf
Converted PDF file(s) ( 19 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 011 for Refrigerators; Handles for refrigerator
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2013 and first used in commerce at least as early as 00/00/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Refrigerators; Handles for refrigerator; Handles for refrigerators sold as an integral component of the refrigeratorsClass 011 for Refrigerators; Handles for refrigerators sold as an integral component of the refrigerators
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 00/00/2013 and first used in commerce at least as early as 00/00/2013 , and is now in use in such commerce.
The applicant's current attorney information: Robert J. Kenney. Robert J. Kenney of BIRCH, STEWART, KOLASCH & BIRCH, LLP, is located at

      8110 GATEHOUSE ROAD, SUITE 100 EAST
      FALLS CHURCH, Virginia 22042
      US
The docket/reference number is 0465-6837US1.

The phone number is 703-205-8000.

The fax number is 703-205-8050.

The email address is mailroom@bskb.com

The applicants proposed attorney information: Robert J. Kenney. Other appointed attorneys are Paul C. Lewis; Michael K. Mutter; Michael T. Smith; Chad J. Billings. Robert J. Kenney of BIRCH, STEWART, KOLASCH & BIRCH, 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

      8110 GATEHOUSE ROAD, SUITE 100 EAST
      FALLS CHURCH, Virginia 22042
      United States
The docket/reference number is 0465-6837US1.

The phone number is 703-205-8000.

The fax number is 703-205-8050.

The email address is mailroom@bskb.com

Robert J. Kenney 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: ROBERT J. KENNEY. ROBERT J. KENNEY of BIRCH, STEWART, KOLASCH & BIRCH, LLP, is located at

      8110 GATEHOUSE ROAD, SUITE 100 EAST
      FALLS CHURCH, Virginia 22042
      US
The docket/reference number is 0465-6837US1.

The phone number is 703-205-8000.

The fax number is 703-205-8050.

The email address is mailroom@bskb.com

The applicants proposed correspondence information: Robert J. Kenney. Robert J. Kenney of BIRCH, STEWART, KOLASCH & BIRCH, LLP, is located at

      8110 GATEHOUSE ROAD, SUITE 100 EAST
      FALLS CHURCH, Virginia 22042
      United States
The docket/reference number is 0465-6837US1.

The phone number is 703-205-8000.

The fax number is 703-205-8050.

The email address is mailroom@bskb.com

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Robert J. Kenney/      Date: 09/12/2019
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member
Signatory's Phone Number: 7032058000


Response Signature
Signature: /Robert J. Kenney/     Date: 09/12/2019
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member

Signatory's Phone Number: 7032058000

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:    ROBERT J. KENNEY
   BIRCH, STEWART, KOLASCH & BIRCH, LLP
   
   8110 GATEHOUSE ROAD, SUITE 100 EAST
   FALLS CHURCH, Virginia 22042
Mailing Address:    Robert J. Kenney
   BIRCH, STEWART, KOLASCH & BIRCH, LLP
   8110 GATEHOUSE ROAD, SUITE 100 EAST
   FALLS CHURCH, Virginia 22042
        
Serial Number: 88282584
Internet Transmission Date: Thu Sep 12 14:58:16 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201909121458167
46540-88282584-610c336439e96e9a9f41c7497
f6c450a65e185a38c287e3941b14196a97dec-N/
A-N/A-20190912143814698504