| 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 | 88327533 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88327533/mark.png |
| LITERAL ELEMENT | MOTHERHOOD SESSIONS |
| 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) | |
|
Identification of Goods The Examining Attorney has refused registration of the application on the grounds the identification is indefinite. Applicant has amended the identification substantially as suggested by the Examining Attorney, thus obviating the refusal. The amended identification is within the scope of the application as filed. § 2(e)(1) Descriptiveness The Examining Attorney has refused registration under Trademark Act § 2(e)(1) on the ground that the MOTHERHOOD SESSIONS mark is merely descriptive of the proposed goods and services. However, the MOTHERHOOD SESSIONS mark is too vague and nebulous to immediately describe any feature or characteristic, much less a significant feature or characteristic, of the proposed goods and services with immediacy and the required degree of particularity to be considered descriptive. Accordingly, the refusal is respectfully traversed. The Examining Attorney provided a single dictionary definition for the term “session,” i.e., “‘session’ is defined as a ‘meeting or period devoted to a particular activity,’” reasoned that “the applicant’s goods and services feature recordings from periods of time, or sessions, devoted to discussion about motherhood between a psychiatrist and women who are mothers,” and concluded that the proposed mark is thus merely descriptive of Applicant’s proposed goods and services. Even if the term “session” could be regarded as conveying some information about the proposed goods and services, rather than about the source, “one may be informed by suggestion as well as description.” See In re Reynolds Metals Co., 178 USPQ 296–97 (CCPA 1975). In order to be merely descriptive, the mark must convey such information with a “degree of particularity.” Plus Prods. v. Med. Modalities Assocs., Inc., 211 USPQ 1199, 1204–05 (TTAB 1981). Consequently, a trademark is not rendered merely descriptive simply because a person encountering the mark might recognize a suggestion regarding the nature of the goods and services being offered. See, e.g., In re Nalco Chem. Co., 228 USPQ 972, 973 (TTAB 1986) (holding that VERI-CLEAN is suggestive, not merely descriptive, of applicant’s cleaning additives). On this point, the Board’s decision in In re TMS Corp. of the Ams., 200 USPQ 57, 59 (TTAB 1978) is particular instructive. In that case, the Board determined that THE MONEY SERVICE for money transfer services was too broad to describe the applicant’s services with immediacy and particularity and was therefore suggestive, rather than descriptive. See id. (explaining that because the mark THE MONEY SERVICE is composed of commonly used words of the English language it suggests a number of things, yet falls short of describing applicant’s service in any degree of particularity). If consumers must employ a multi-stage reasoning process, rather than finding an instantaneous understanding from the mark of an attribute of the product, then the mark is suggestive and not merely descriptive. See Nautilus Group Inc. v. ICON Health & Fitness Inc., 372 F.2d 1330, 71 USPQ2d 1173 (Fed. Cir. 2004). The term “session” is a commonly used word from the English language, and suggests multiple meanings, yet falls short of describing Applicant’s goods and services with any degree of particularity. Definitions of the term “session,” many of which may be suggestive of some aspect of Applicant’s goods and services, include, for example:
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_38111352-20190821150935438142_._G0889.20017US00.ExhibitA.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\275\88327533\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\883\275\88327533\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\275\88327533\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\275\88327533\xml4\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\275\88327533\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\275\88327533\xml4\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A evidence in the nature of definitions of the term "session" from Dictionary.com, at http://www.dictionary.com/browse/session |
| GOODS AND/OR SERVICES SECTION (041)(current) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| downloadable audio recordings in the fields of entertainment, news, history, relationships, parenting, and general interest; entertainment services, namely, providing podcasts and non-downloadable audio recordings in the field of entertainment, news, history, relationships, parenting, and general interests; entertainment in the nature of ongoing television shows and providing non-downloadable movies via a video-on-demand services; production and distribution of television shows and movies | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (041)(proposed) | |
| INTERNATIONAL CLASS | 041 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| entertainment services, namely, providing podcasts and non-downloadable audio recordings in the field of entertainment, news, history, relationships, parenting, and general interests; entertainment in the nature of ongoing television shows featuring information in the fields of entertainment, news, history, relationships, parenting, and general interest; entertainment services, namely, providing non-downloadable movies via a video-on-demand service; production and distribution of television shows and movies | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (009)(class added) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| downloadable audio recordings in the fields of entertainment, news, history, relationships, parenting, and general interest | |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | If it is convenient for the Examining Attorney and if it is believed a telephone conference will further the prosecution of this application, Applicant's undersigned counsel encourages a telephone call from the Examining Attorney. In view of the foregoing, Applicant submits that the application is in condition for publication. Favorable action is hereby solicited. |
| ATTORNEY SECTION (current) | |
| NAME | Douglas R. Wolf |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | WOLF, GREENFIELD & SACKS, P.C. |
| STREET | 600 ATLANTIC AVENUE |
| CITY | BOSTON |
| STATE | Massachusetts |
| POSTAL CODE | 02210 |
| COUNTRY | US |
| PHONE | 617-646-8000 |
| FAX | 617-646-8646 |
| drwtrademarks@wolfgreenfield.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | G08892001700 |
| ATTORNEY SECTION (proposed) | |
| NAME | Douglas R. Wolf |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | WOLF, GREENFIELD & SACKS, P.C. |
| STREET | 600 ATLANTIC AVENUE |
| CITY | BOSTON |
| STATE | Massachusetts |
| POSTAL CODE | 02210 |
| COUNTRY | United States |
| PHONE | 617-646-8000 |
| FAX | 617-646-8646 |
| drwtrademarks@wolfgreenfield.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | G08892001700 |
| OTHER APPOINTED ATTORNEY | Michael A. Albert, Nicole Davis Amar, Eric L. Amundsen, Michael J. Attisha, C. Hunter Baker, Jason W. Balich, Melissa Beede, Cristin Berkey, Brandon S. Blackwell, Joshua M. Brandt, David F. Cauble, Tani Chen, Thomas S. Chlebeck, Bryan S. Conley, Gregory F. Corbett, Elizabeth A. DiMarco, Heather J. DiPietrantonio, Stuart V. Duncan Smith, Roque El-Hayek, Neil P. Ferraro, Emma L. Frank, Thomas A. Franklin, Edward R. Gates, David S. Gesner, Richard F. Giunta, Matthew H. Grady, Patricia L. Granahan, Michael A. Greene, Eric P. Greenwald, James M. Hanifin, Jr., John S. Harmon, , Jason M. Honeyman, Gerald B. Hrycyszyn, Jeffrey D. Hsi, Elizabeth A. Hudson, Elisabeth H. Hunt, Robert E. Hunt, Robert A. Jensen, Marc S. Johannes, Oona M. Johnstone, Hunter D. Keeton, Jessamine M. Lee, Sardiaa S. Leney, Christina M. Licursi, Helen C. Lockhart, Chelsea Loughran, Ethan W. Marks, William R. McClellan, Gabriel J. McCool, Marie A. McKiernan, Andrea D. Merin, Kevin Mosier, James H. Morris, Michelle K. Nyein, Timothy J. Oyer, Zachary P. Piccolomini, Michael J. Pomianek, Randy J. Pritzker, Michael N. Rader, Jonathan B. Roses, Daniel G. Rudoy, Edward J. Russavage, Eric J. Rutt, Anant K. Saraswat, Turhan F. Sarwar, Claire E. Schuster, Karan Singh, Amanda Slade, Laura B. Sole, Nathan R. Speed, Charles T. Steenburg, Stephanie G. Stella, John L. Strand, Andrew J. Tibbetts, Maria A. Trevisan, Michael J. Twomey, John R. Van Amsterdam, Ryan M. Van Olst, Janice A. Vatland, Jessica A. vonReyn, Robert H. Walat, Patrick R.H. Waller, Edmund J. Walsh, Jennifer J. Wang, Daniel T. Wehner, John L. Welch, Andrew W. Williams, Douglas R. Wolf, Daniel W. Young, Lock See Yu-Jahnes, Wei Zhang, Chelsea E. Witte-Garcia, Adam Z. Zeiger |
| CORRESPONDENCE SECTION (current) | |
| NAME | DOUGLAS R. WOLF |
| FIRM NAME | WOLF, GREENFIELD & SACKS, P.C. |
| STREET | 600 ATLANTIC AVENUE |
| CITY | BOSTON |
| STATE | Massachusetts |
| POSTAL CODE | 02210 |
| COUNTRY | US |
| PHONE | 617-646-8000 |
| FAX | 617-646-8646 |
| drwtrademarks@wolfgreenfield.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | G08892001700 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Douglas R. Wolf |
| FIRM NAME | WOLF, GREENFIELD & SACKS, P.C. |
| STREET | 600 ATLANTIC AVENUE |
| CITY | BOSTON |
| STATE | Massachusetts |
| POSTAL CODE | 02210 |
| COUNTRY | United States |
| PHONE | 617-646-8000 |
| FAX | 617-646-8646 |
| drwtrademarks@wolfgreenfield.com; sgstrademarks@wolfgreenfield.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | G08892001700 |
| PAYMENT SECTION | |
| NUMBER OF CLASSES | 1 |
| APPLICATION FOR REGISTRATION PER CLASS | 275 |
| TOTAL FEES DUE | 275 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /sgs/ |
| SIGNATORY'S NAME | Stephanie G. Stella |
| SIGNATORY'S POSITION | Associate Attorney, Wolf Greenfield & Sacks, VA Bar Member |
| SIGNATORY'S PHONE NUMBER | 617-646-8000 |
| DATE SIGNED | 08/21/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Aug 21 15:49:38 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-201 90821154938906064-8832753 3-610d76a665314cb992febe9 3ae1266ee26ca79d3b99ffb39 8784891a9f9e140fd85-CC-49 375008-201908211509354381 42 |
| 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) |
Identification of Goods
The Examining Attorney has refused registration of the application on the grounds the identification is indefinite. Applicant has amended the identification substantially as suggested by the Examining Attorney, thus obviating the refusal. The amended identification is within the scope of the application as filed.
§ 2(e)(1) Descriptiveness
The Examining Attorney has refused registration under Trademark Act § 2(e)(1) on the ground that the MOTHERHOOD SESSIONS mark is merely descriptive of the proposed goods and services. However, the MOTHERHOOD SESSIONS mark is too vague and nebulous to immediately describe any feature or characteristic, much less a significant feature or characteristic, of the proposed goods and services with immediacy and the required degree of particularity to be considered descriptive. Accordingly, the refusal is respectfully traversed.
The Examining Attorney provided a single dictionary definition for the term “session,” i.e., “‘session’ is defined as a ‘meeting or period devoted to a particular activity,’” reasoned that “the applicant’s goods and services feature recordings from periods of time, or sessions, devoted to discussion about motherhood between a psychiatrist and women who are mothers,” and concluded that the proposed mark is thus merely descriptive of Applicant’s proposed goods and services. Even if the term “session” could be regarded as conveying some information about the proposed goods and services, rather than about the source, “one may be informed by suggestion as well as description.” See In re Reynolds Metals Co., 178 USPQ 296–97 (CCPA 1975). In order to be merely descriptive, the mark must convey such information with a “degree of particularity.” Plus Prods. v. Med. Modalities Assocs., Inc., 211 USPQ 1199, 1204–05 (TTAB 1981). Consequently, a trademark is not rendered merely descriptive simply because a person encountering the mark might recognize a suggestion regarding the nature of the goods and services being offered. See, e.g., In re Nalco Chem. Co., 228 USPQ 972, 973 (TTAB 1986) (holding that VERI-CLEAN is suggestive, not merely descriptive, of applicant’s cleaning additives).
On this point, the Board’s decision in In re TMS Corp. of the Ams., 200 USPQ 57, 59 (TTAB 1978) is particular instructive. In that case, the Board determined that THE MONEY SERVICE for money transfer services was too broad to describe the applicant’s services with immediacy and particularity and was therefore suggestive, rather than descriptive. See id. (explaining that because the mark THE MONEY SERVICE is composed of commonly used words of the English language it suggests a number of things, yet falls short of describing applicant’s service in any degree of particularity). If consumers must employ a multi-stage reasoning process, rather than finding an instantaneous understanding from the mark of an attribute of the product, then the mark is suggestive and not merely descriptive. See Nautilus Group Inc. v. ICON Health & Fitness Inc., 372 F.2d 1330, 71 USPQ2d 1173 (Fed. Cir. 2004).
The term “session” is a commonly used word from the English language, and suggests multiple meanings, yet falls short of describing Applicant’s goods and services with any degree of particularity. Definitions of the term “session,” many of which may be suggestive of some aspect of Applicant’s goods and services, include, for example:
the sitting together of a court, council, legislature, or the like, for conference or the transaction of business:
Congress is now in session.
a single continuous sitting, or period of sitting, of persons so assembled.
a continuous series of sittings or meetings of a court, legislature, or the like.
the period or term during which such a series is held.
sessions, (in English law) the sittings or a sitting of justices in court, usually to deal with minor offenses, grant licenses, etc.
a single continuous course or period of lessons, study, etc., in the work of a day at school:
two afternoon sessions a week.
a portion of the year into which instruction is organized at a college or other educational institution.
the governing body of a local Presbyterian church, composed of the pastor who moderates and the elders.
a period of time during which a group of persons meets to pursue a particular activity:
A few of the kids got together for a study session.
(See Exhibit A – Dictionary.com, “Session,” at www.dictionary.com/browse/session.)
Based on these multiple meanings, when an average consumer encounters the MOTHERHOOD SESSIONS mark in connection with Applicant’s goods and services, they are left to wonder what the SESSIONS portion of the mark means in the context of those goods and services. Applicant’s consumers thus would have to exercise a multi-stage reasoning process to even attempt to determine any specific descriptive meaning of the mark in relation to Applicant’s products. See In re Sundown Tech. Inc., 1 USPQ2d 1927 (TTAB 1986); In re Tennis in the Round Inc., 199 USPQ 496 (TTAB 1978). For example, is this a podcast describing what motherhood is like for a congresswoman? Is it about women coming together to discuss their experiences as mothers? Or is it and educational or instructive podcast for mothers or future mothers? These are only a few examples of what the average consumer may consider when they encounter the mark MOTHERHOOD SESSIONS for podcasts. It is thus evident that the term “sessions” does not have a clear meaning, and requires “imagination, thought or perception to reach a conclusion” as to the nature of Applicant’s goods and services. TMEP § 1209.01(a) (citing In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool)).
In view of the above, it is clear that any ostensible meaning of the MOTHERHOOD SESSIONS mark as a whole in the context of Applicant’s goods and services is too vague and nebulous to immediately describe any feature or characteristic of those goods with immediacy and the required degree of particularity to be considered descriptive. The proposed mark is thus not descriptive but at most merely suggestive of Applicant’s goods and services. Moreover, when doubts exist as to whether a term is merely descriptive as applied to the goods for which registration is sought, it is the practice of the PTO to resolve those doubts in favor of the applicant. In re Grand Metro. Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994). Accordingly, withdrawal of the refusal is respectfully requested.
EVIDENCE
