| 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 | 88348910 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88348910/mark.png |
| LITERAL ELEMENT | MERCATUS DISPATCH |
| 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) | |
|
Application Serial No. 88/348,910 – MERCATUS DISPATCH
In an Office Action dated May 31, 2019, the Examining Attorney required a disclaimer of the portion of the Applicant’s mark DISPATCH on the grounds that the term is merely descriptive of the services rendered under the same.
The Applicant seeks registration of the mark MERCATUS DISPATCH for the following services:
Software as a service, namely, white-label digital retail delivery platform for retailers.
The Examining Attorney reasoned that the term DISPATCH is merely descriptive of such services because it “merely describes a feature of applicant’s services, namely, that they are software used to dispatch goods for white label retailers.” The Applicant respectfully responds that the term DISPATCH is not descriptive at all, but rather is inherently distinctive and should not have to be disclaimed. As such, the Applicant respectfully requests that the Examining Attorney reconsider her request for a disclaimer and that its Application be approved for publication.
The Examining Attorney states that the term “dispatch” is defined as “to relegate to a specific destination or send on specific business.” See Office Action, Attachment 1. The Applicant notes that the term is also defined as “to complete, transact, or dispose of promptly.” See id. Other dictionaries define the term as “to send off or away with promptness or speed,” “to dispose of (something, such as a task) rapidly or efficiently,” and “prompt settlement (as of an item of business),” or as a noun a “prompt or speedy transaction, as of business,” “a message sent with speed,” “a sending off,” or “promptness and efficiency in performance or transmission.” See Exhibits “1” and “2” submitted with this response. The mere fact that the term “dispatch” has so many different meanings, none of which is readily apparent as to which, if any, applies to the Applicant’s software as a service, but any of which could suggest something about the service, weighs in favor of a finding that the term DISPATCH is not merely descriptive.
In other words, if a relevant consumer were to encounter the term “dispatch” used with software offered as a service, the consumer would still be left to discern what the service does and how it functions. The consumer would be left to wonder whether the service has something to do with delivery or direction, whether it is used to complete, transact, or dispose of things or matters, whether it is some sort of messaging application, or whether the service is simply prompt, speedy, or efficient in the way it functions. The term “dispatch” could suggest so many things about software as a service that it could not possibly be merely descriptive.
In fact, in this instance, the term “dispatch” does not suggest any of these things. In connection with co-pending Application Ser. No. 88/348,684, the Examining Attorney, after reviewing the Application and researching and reading one of the Applicant’s press releases, surmised that the Applicant’s software is “software used to dispatch goods for white label retailers.” See Exhibit “3” submitted with this response. But that is not at all what the Applicant’s software as a service does.
As explained in the press release, the Applicant is a leading provider of digital solutions for grocery retailers, not a delivery service. The press release continues:
The white label delivery capability [of the Applicant’s Dispatch software as a service] gives grocery retailers the tools necessary to maintain control of their customers’ shopping journey within their branded website and mobile experience.
It is not the retailers that are “white label,” but rather the Applicant’s software as a service that is “white labeled” in that it functions behind the retailer’s outward-facing, branded website or mobile application. As the press release further explains:
Retailers utilizing Dispatch enjoy a single, straightforward process, with the retailer’s own staff managing order fulfillment through a streamlined picking process. Once items are processed, handoff to the delivery partner occurs after reconciliation and payment, ensuring the accuracy of order value, even when substitutions and omissions are required. Furthermore, the delivery partners deliver items under the retailer’s name to create a consistent purchasing experience for shoppers.
Grocers and retailers adopting Mercatus Dispatch reward shoppers with an enhanced online grocery shopping experience, complete with reliable fulfillment and delivery options through established delivery platforms. In addition, the turnkey solution allows retailers to maintain full control of their branding and shopper data throughout the customer purchasing process.
“As online grocery delivery becomes more prevalent, shoppers will gravitate towards the most comprehensive and easy-to-use options, and we’re excited to enable retailers to provide those choices with Mercatus Dispatch,” said Sylvain Perrier, president and CEO, Mercatus. “As we continue to build our solution set and partner network, we look forward to continuing to help grocers maintain control of their customer journey through a reliable infrastructure, a shopper-friendly experience and optimal fulfillment options.”
As explained in the press release, the Applicant’s software as a service does not select the groceries, it does not deliver them to a grocery delivery service, nor does it deliver them to the online shopper. Rather, the Applicant’s software as a service is a behind-the-scenes “platform” provided to retailers that coordinates such activities -- receiving the order, providing the order to the retailer’s staff for fulfillment, reconciling the selected groceries with the order, processing payment, and connecting the order to a service for pickup and delivery to the consumer -- in essence logistically and transparently managing the entire process.
A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought. Real Foods Pty. Ltd. v. Frito-Lay North Am., Inc., 906 F.3d 965, 972 (Fed. Cir. 2018). Terms that are merely descriptive cannot be registered on the Principal Register unless they acquire distinctiveness, which is secondary meaning under 15 U.S.C. § 1052(f). Id. On the other hand, terms that are suggestive, arbitrary, or fanciful are inherently distinctive and therefore registrable. Id. at 973. A suggestive mark requires imagination, thought, and perception to reach a conclusion about the nature of the goods. Id. Arbitrary or fanciful marks neither describe nor suggest anything about the goods or services on or in connection with which they are used. Id.
In this case, the term DISPATCH is not descriptive. The Applicant’s service is not a delivery, disposal, or messaging service of any kind, nor is the mark used to convey that the service functions promptly, speedily, or efficiently. The Applicant’s software as a service is used to manage the logistics of an online grocery shopping service, from receipt of the order to pickup by a delivery service. This logistics service is provided to the grocery retailer on a white label basis, which enables the grocery retailer to provide to its own customer an enhanced online grocery shopping experience. The Applicant’s customer is the grocery retailer, not the retailer’s customer, and the Applicant neither delivers anything to or for the grocery retailer. The grocery retailer’s customer is not even aware of the Applicant’s involvement.
The actual delivery of the groceries purchased online is handled by other white label “delivery partners,” as stated in the press release cited by the Examining Attorney, who actually deliver the groceries using their “established delivery platforms.” The only connection between the Applicant’s software as a service and delivery is that the Applicant’s services remotely and electronically connect online orders that have been fulfilled by the grocery store staff with a grocery delivery service for the retailer, after reconciliation and payment. These logistics services are not described, or even suggested, by the term “dispatch.” The term DISPATCH is, therefore, an arbitrary term as used for the Applicant’s software as a service, which is inherently distinctive and registrable without any showing of acquired distinctiveness or secondary meaning. Accordingly, the Applicant respectfully requests that the Examining Attorney reconsider her request for a disclaimer and approve the Applicant’s mark for publication. The Applicant further respectfully requests that the Examining Attorney suspend its Application until issuance of the Applicant’s corresponding Canadian registration for the mark MERCATUS DISPATCH. The Canadian registration has not yet issued, and the Canadian application is still pending. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_3810116184-20191126133129873776_._MERCATUS_DISPATCH_-_Exhibits.PDF |
| CONVERTED PDF FILE(S) (27 pages) |
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| DESCRIPTION OF EVIDENCE FILE | Exhibit 1 - Dictionary.com definition of "dispatch"; Exhibit 2 - Merriam-Webster definition of "dispatch"; Exhibit 3 - Office Action in Application Ser. No. 88/348,684 |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | The Applicant respectfully requests that the Examining Attorney suspend its Application until issuance of the Applicant's corresponding Canadian registration for the mark MERCATUS DISPATCH. The Canadian registration has not yet issued, and the Canadian application is still pending. |
| ATTORNEY SECTION (current) | |
| NAME | J. Todd Timmerman |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | SHUMAKER, LOOP & KENDRICK, LLP |
| STREET | 101 EAST KENNEDY BOULEVARD, SUITE 2800 |
| CITY | TAMPA |
| STATE | Florida |
| POSTAL CODE | 33602 |
| COUNTRY | US |
| PHONE | 813-229-7600 x2243 |
| FAX | 813-229-1660 |
| ttimmerman@slk-law.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| ATTORNEY SECTION (proposed) | |
| NAME | J. Todd Timmerman |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Shumaker, Loop & Kendrick, LLP |
| STREET | 101 East Kennedy Boulevard, Suite 2800 |
| CITY | Tampa |
| STATE | Florida |
| POSTAL CODE | 33602 |
| COUNTRY | United States |
| PHONE | 813-229-7600 x2243 |
| FAX | 813-229-1660 |
| ttimmerman@shumaker.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| OTHER APPOINTED ATTORNEY | Mindi M. Richter |
| CORRESPONDENCE SECTION (current) | |
| NAME | J. TODD TIMMERMAN |
| FIRM NAME | SHUMAKER, LOOP & KENDRICK, LLP |
| STREET | 101 EAST KENNEDY BOULEVARD, SUITE 2800 |
| CITY | TAMPA |
| STATE | Florida |
| POSTAL CODE | 33602 |
| COUNTRY | US |
| PHONE | 813-229-7600 x2243 |
| FAX | 813-229-1660 |
| ttimmerman@slk-law.com; tmdocketing@slk-law.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | J. Todd Timmerman |
| FIRM NAME | Shumaker, Loop & Kendrick, LLP |
| STREET | 101 East Kennedy Boulevard, Suite 2800 |
| CITY | Tampa |
| STATE | Florida |
| POSTAL CODE | 33602 |
| COUNTRY | United States |
| PHONE | 813-229-7600 x2243 |
| FAX | 813-229-1660 |
| ttimmerman@shumaker.com; tmdocketing@shumaker.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /J. Todd Timmerman/ |
| SIGNATORY'S NAME | J. Todd Timmerman |
| SIGNATORY'S POSITION | Attorney of record, Florida bar member |
| SIGNATORY'S PHONE NUMBER | 813-229-7600 |
| DATE SIGNED | 11/26/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Nov 26 13:34:01 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0191126133401120286-88348 910-700cd3c686beebac6eb2d 2cfd2a63c9742592e0d4acb95 c2f6858632343649c-N/A-N/A -20191126133129873776 |
| 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) |
Application Serial No. 88/348,910 – MERCATUS DISPATCH
In an Office Action dated May 31, 2019, the Examining Attorney required a disclaimer of the portion of the Applicant’s mark DISPATCH on the grounds that the term is merely descriptive of the services rendered under the same.
The Applicant seeks registration of the mark MERCATUS DISPATCH for the following services:
Software as a service, namely, white-label digital retail delivery platform for retailers.
The Examining Attorney reasoned that the term DISPATCH is merely descriptive of such services because it “merely describes a feature of applicant’s services, namely, that they are software used to dispatch goods for white label retailers.” The Applicant respectfully responds that the term DISPATCH is not descriptive at all, but rather is inherently distinctive and should not have to be disclaimed. As such, the Applicant respectfully requests that the Examining Attorney reconsider her request for a disclaimer and that its Application be approved for publication.
The Examining Attorney states that the term “dispatch” is defined as “to relegate to a specific destination or send on specific business.” See Office Action, Attachment 1. The Applicant notes that the term is also defined as “to complete, transact, or dispose of promptly.” See id. Other dictionaries define the term as “to send off or away with promptness or speed,” “to dispose of (something, such as a task) rapidly or efficiently,” and “prompt settlement (as of an item of business),” or as a noun a “prompt or speedy transaction, as of business,” “a message sent with speed,” “a sending off,” or “promptness and efficiency in performance or transmission.” See Exhibits “1” and “2” submitted with this response. The mere fact that the term “dispatch” has so many different meanings, none of which is readily apparent as to which, if any, applies to the Applicant’s software as a service, but any of which could suggest something about the service, weighs in favor of a finding that the term DISPATCH is not merely descriptive.
In other words, if a relevant consumer were to encounter the term “dispatch” used with software offered as a service, the consumer would still be left to discern what the service does and how it functions. The consumer would be left to wonder whether the service has something to do with delivery or direction, whether it is used to complete, transact, or dispose of things or matters, whether it is some sort of messaging application, or whether the service is simply prompt, speedy, or efficient in the way it functions. The term “dispatch” could suggest so many things about software as a service that it could not possibly be merely descriptive.
In fact, in this instance, the term “dispatch” does not suggest any of these things. In connection with co-pending Application Ser. No. 88/348,684, the Examining Attorney, after reviewing the Application and researching and reading one of the Applicant’s press releases, surmised that the Applicant’s software is “software used to dispatch goods for white label retailers.” See Exhibit “3” submitted with this response. But that is not at all what the Applicant’s software as a service does.
As explained in the press release, the Applicant is a leading provider of digital solutions for grocery retailers, not a delivery service. The press release continues:
The white label delivery capability [of the Applicant’s Dispatch software as a service] gives grocery retailers the tools necessary to maintain control of their customers’ shopping journey within their branded website and mobile experience.
It is not the retailers that are “white label,” but rather the Applicant’s software as a service that is “white labeled” in that it functions behind the retailer’s outward-facing, branded website or mobile application. As the press release further explains:
Retailers utilizing Dispatch enjoy a single, straightforward process, with the retailer’s own staff managing order fulfillment through a streamlined picking process. Once items are processed, handoff to the delivery partner occurs after reconciliation and payment, ensuring the accuracy of order value, even when substitutions and omissions are required. Furthermore, the delivery partners deliver items under the retailer’s name to create a consistent purchasing experience for shoppers.
Grocers and retailers adopting Mercatus Dispatch reward shoppers with an enhanced online grocery shopping experience, complete with reliable fulfillment and delivery options through established delivery platforms. In addition, the turnkey solution allows retailers to maintain full control of their branding and shopper data throughout the customer purchasing process.
“As online grocery delivery becomes more prevalent, shoppers will gravitate towards the most comprehensive and easy-to-use options, and we’re excited to enable retailers to provide those choices with Mercatus Dispatch,” said Sylvain Perrier, president and CEO, Mercatus. “As we continue to build our solution set and partner network, we look forward to continuing to help grocers maintain control of their customer journey through a reliable infrastructure, a shopper-friendly experience and optimal fulfillment options.”
As explained in the press release, the Applicant’s software as a service does not select the groceries, it does not deliver them to a grocery delivery service, nor does it deliver them to the online shopper. Rather, the Applicant’s software as a service is a behind-the-scenes “platform” provided to retailers that coordinates such activities -- receiving the order, providing the order to the retailer’s staff for fulfillment, reconciling the selected groceries with the order, processing payment, and connecting the order to a service for pickup and delivery to the consumer -- in essence logistically and transparently managing the entire process.
A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought. Real Foods Pty. Ltd. v. Frito-Lay North Am., Inc., 906 F.3d 965, 972 (Fed. Cir. 2018). Terms that are merely descriptive cannot be registered on the Principal Register unless they acquire distinctiveness, which is secondary meaning under 15 U.S.C. § 1052(f). Id. On the other hand, terms that are suggestive, arbitrary, or fanciful are inherently distinctive and therefore registrable. Id. at 973. A suggestive mark requires imagination, thought, and perception to reach a conclusion about the nature of the goods. Id. Arbitrary or fanciful marks neither describe nor suggest anything about the goods or services on or in connection with which they are used. Id.
In this case, the term DISPATCH is not descriptive. The Applicant’s service is not a delivery, disposal, or messaging service of any kind, nor is the mark used to convey that the service functions promptly, speedily, or efficiently. The Applicant’s software as a service is used to manage the logistics of an online grocery shopping service, from receipt of the order to pickup by a delivery service. This logistics service is provided to the grocery retailer on a white label basis, which enables the grocery retailer to provide to its own customer an enhanced online grocery shopping experience. The Applicant’s customer is the grocery retailer, not the retailer’s customer, and the Applicant neither delivers anything to or for the grocery retailer. The grocery retailer’s customer is not even aware of the Applicant’s involvement.
The actual delivery of the groceries purchased online is handled by other white label “delivery partners,” as stated in the press release cited by the Examining Attorney, who actually deliver the groceries using their “established delivery platforms.” The only connection between the Applicant’s software as a service and delivery is that the Applicant’s services remotely and electronically connect online orders that have been fulfilled by the grocery store staff with a grocery delivery service for the retailer, after reconciliation and payment. These logistics services are not described, or even suggested, by the term “dispatch.” The term DISPATCH is, therefore, an arbitrary term as used for the Applicant’s software as a service, which is inherently distinctive and registrable without any showing of acquired distinctiveness or secondary meaning.
Accordingly, the Applicant respectfully requests that the Examining Attorney reconsider her request for a disclaimer and approve the Applicant’s mark for publication. The Applicant further respectfully requests that the Examining Attorney suspend its Application until issuance of the Applicant’s corresponding Canadian registration for the mark MERCATUS DISPATCH. The Canadian registration has not yet issued, and the Canadian application is still pending.
