| 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 | 88355344 |
| LAW OFFICE ASSIGNED | LAW OFFICE 120 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88355344/mark.png |
| LITERAL ELEMENT | LIQUID TILE |
| 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) | |
|
The Trademark Office has refused registration of Applicant's mark LIQUID TILE "because the applied-for mark merely describes a feature, characteristic, purpose, or function of applicant’s goods." In particular, the Trademark Office contends that "the wording LIQUID TILE merely describes a characteristic or function of applicant’s paints, which are in liquid form and which are used to paint/cover tiles and/or used to paint surfaces to look like tiles." Applicant respectfully disagrees and submits that that the mark LIQUID TILE is at most suggestive of Applicant's goods. To be deemed merely descriptive, a mark must directly provide the consumer with reasonably accurate knowledge of the characteristics of the product or service in connection with which it is used. If the information about the product or service is indirect or vague, then the mark is considered suggestive, not descriptive. See J. McCarthy, McCarthy on Trademarks and Unfair Competition §11.19, at 11-26 (4th ed. 1998). Applying these principles, Applicant's mark is not descriptive. LIQUID TILE does not immediately convey to one encountering it the nature of Applicant's goods. See TMEP § 1209.01(a) ("a descriptive term… immediately tells something about the goods or services"). Applicant's mark is in fact suggestive because "imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services." In re Quik-Print Shops, Inc. 616 F.2d 523, 525, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980). Applicant submits that the mark LIQUID TILE does not describe Applicant's paints, but rather connotes an attribute of the product, e.g. that Applicant's product provides for a strong and resilient coating. The line between a mark that merely describes the purpose of the goods, and a mark that suggests the nature of the goods is narrowly drawn. In In re The Realistic Company, 440 F.2d 1393, 169 U.S.P.Q. (BNA) 610 (C.C.P.A. 1971), the CCPA considered the application of these precedents to the mark CURV' for use in connection with permanent wave curling solution. Even though CURV' suggests "a possible result of the intended use" of the goods, because the mark does not "convey any definite or immediate meaning" it was deemed not merely descriptive of the goods. The suggestive implication of Applicant's mark LIQUID TILE in relation to Applicant's goods is considerably more remote than CURV' for permanent wave curling solution. The immediate purpose of Applicant's paints is to form a resilient, strong, and attractive coating on a surface. Such capabilities contribute to the aspiration suggested by Applicant's mark, e.g. that the formed coatings have a resiliency, attractiveness, and strength that would one would only expect from a solid tile. As such, a degree of imagination and a number of mental steps are required to connect paints with a tile. To the extent the Examining Attorney finds Applicant's LIQUID TILE mark to fall within the "gray area" between obviously descriptive and suggestive marks, all doubts must be resolved in Applicant's favor. In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983) (where combination of two merely descriptive terms creates a mark that might be either descriptive or suggestive, doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI-FOOT not merely descriptive for antiperspirant foot deodorant; doubts to be resolved in favor of publication; refusal reversed). Accordingly, the Examining Attorney should withdraw the refusal under Section 2(e)(1). The Trademark Office also suggests that "if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable." Applicant disagrees. As the Trademark Office is aware, a composite mark consisting of two or more descriptive words may be suggestive or fanciful and therefore registrable. E.g., In re Colonial Stores, Inc., 394 F.2d 549, 552-53, 157 U.S.P.Q. 382, 385 (C.C.P.A. 1968) (SUGAR & SPICE as a whole not merely descriptive for bakery products); W.G. Reardon Laboratories, Inc. v. B. & B. Exterminators, Inc., 71 F.2d 515, 517, 22 U.S.P.Q. 22, 24 (4th Cir. 1934) (MOUSE SEED as a whole not descriptive for poisonous pellets used to kill mice). In fact, "a mark that connotes two meanings — one possibly descriptive, and the other suggestive of some other association — can be called suggestive, as the mark is not 'merely' descriptive." See J. McCarthy on Trademarks and Unfair Competition §11:19, at 11-28 (4th ed. 2001). E.g., Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 U.S.P.Q. 55, 60 (2nd Cir. 1961) (POLY PITCHER not merely descriptive because it connotes both a polyethylene pitcher and is suggestive of MOLLY PITCHER of Revolutionary time). Here, the term "tile" has nothing to do with paints, and certainly does not describe any attribute of paints. As such, it cannot be that the mark components "liquid" and "tile" results in a composite mark that describes Applicant's goods. |
|
| ATTORNEY SECTION (current) | |
| NAME | Thomas M. Finetti |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | CHARNEY IP LAW LLC |
| STREET | 233 MOUNT AIRY ROAD -- SUITE 100 |
| CITY | BASKING RIDGE |
| STATE | New Jersey |
| POSTAL CODE | 07920 |
| COUNTRY | US |
| PHONE | 908-758-1374 |
| FAX | 9087581201 |
| docket@charneyiplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | Seagrave-017 |
| ATTORNEY SECTION (proposed) | |
| NAME | Thomas M. Finetti |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | CHARNEY IP LAW LLC |
| STREET | 233 MOUNT AIRY ROAD -- SUITE 100 |
| CITY | BASKING RIDGE |
| STATE | New Jersey |
| POSTAL CODE | 07920 |
| COUNTRY | United States |
| PHONE | 908-758-1374 |
| FAX | 9087581201 |
| docket@charneyiplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | Seagrave-017 |
| CORRESPONDENCE SECTION (current) | |
| NAME | THOMAS M. FINETTI |
| FIRM NAME | CHARNEY IP LAW LLC |
| STREET | 233 MOUNT AIRY ROAD -- SUITE 100 |
| CITY | BASKING RIDGE |
| STATE | New Jersey |
| POSTAL CODE | 07920 |
| COUNTRY | US |
| PHONE | 908-758-1374 |
| FAX | 9087581201 |
| docket@charneyiplaw.com; tom@charneyiplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | Seagrave-017 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Thomas M. Finetti |
| FIRM NAME | CHARNEY IP LAW LLC |
| STREET | 233 MOUNT AIRY ROAD -- SUITE 100 |
| CITY | BASKING RIDGE |
| STATE | New Jersey |
| POSTAL CODE | 07920 |
| COUNTRY | United States |
| PHONE | 908-758-1374 |
| FAX | 9087581201 |
| docket@charneyiplaw.com; tom@charneyiplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | Seagrave-017 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Thomas M. Finetti/ |
| SIGNATORY'S NAME | Thomas M. Finetti |
| SIGNATORY'S POSITION | Attorney of record, New York bar member |
| SIGNATORY'S PHONE NUMBER | 908-758-1374 |
| DATE SIGNED | 12/05/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Dec 05 10:21:16 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0191205102116016387-88355 344-70015ee547796059ff9ad ab8b36e13a2358dd023d0537a a0129bddbb115ae85590-N/A- N/A-20191205095658811277 |
| 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) |
The Trademark Office has refused registration of Applicant's mark LIQUID TILE "because the applied-for mark merely describes a feature, characteristic, purpose, or function of applicant’s goods." In particular, the Trademark Office contends that "the wording LIQUID TILE merely describes a characteristic or function of applicant’s paints, which are in liquid form and which are used to paint/cover tiles and/or used to paint surfaces to look like tiles." Applicant respectfully disagrees and submits that that the mark LIQUID TILE is at most suggestive of Applicant's goods.
To be deemed merely descriptive, a mark must directly provide the consumer with reasonably accurate knowledge of the characteristics of the product or service in connection with which it is used. If the information about the product or service is indirect or vague, then the mark is considered suggestive, not descriptive. See J. McCarthy, McCarthy on Trademarks and Unfair Competition §11.19, at 11-26 (4th ed. 1998).
Applying these principles, Applicant's mark is not descriptive. LIQUID TILE does not immediately convey to one encountering it the nature of Applicant's goods. See TMEP § 1209.01(a) ("a descriptive term… immediately tells something about the goods or services"). Applicant's mark is in fact suggestive because "imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services." In re Quik-Print Shops, Inc. 616 F.2d 523, 525, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980). Applicant submits that the mark LIQUID TILE does not describe Applicant's paints, but rather connotes an attribute of the product, e.g. that Applicant's product provides for a strong and resilient coating.
The line between a mark that merely describes the purpose of the goods, and a mark that suggests the nature of the goods is narrowly drawn. In In re The Realistic Company, 440 F.2d 1393, 169 U.S.P.Q. (BNA) 610 (C.C.P.A. 1971), the CCPA considered the application of these precedents to the mark CURV' for use in connection with permanent wave curling solution. Even though CURV' suggests "a possible result of the intended use" of the goods, because the mark does not "convey any definite or immediate meaning" it was deemed not merely descriptive of the goods.
The suggestive implication of Applicant's mark LIQUID TILE in relation to Applicant's goods is considerably more remote than CURV' for permanent wave curling solution. The immediate purpose of Applicant's paints is to form a resilient, strong, and attractive coating on a surface. Such capabilities contribute to the aspiration suggested by Applicant's mark, e.g. that the formed coatings have a resiliency, attractiveness, and strength that would one would only expect from a solid tile. As such, a degree of imagination and a number of mental steps are required to connect paints with a tile.
To the extent the Examining Attorney finds Applicant's LIQUID TILE mark to fall within the "gray area" between obviously descriptive and suggestive marks, all doubts must be resolved in Applicant's favor. In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983) (where combination of two merely descriptive terms creates a mark that might be either descriptive or suggestive, doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI-FOOT not merely descriptive for antiperspirant foot deodorant; doubts to be resolved in favor of publication; refusal reversed). Accordingly, the Examining Attorney should withdraw the refusal under Section 2(e)(1).
The Trademark Office also suggests that "if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable." Applicant disagrees. As the Trademark Office is aware, a composite mark consisting of two or more descriptive words may be suggestive or fanciful and therefore registrable. E.g., In re Colonial Stores, Inc., 394 F.2d 549, 552-53, 157 U.S.P.Q. 382, 385 (C.C.P.A. 1968) (SUGAR & SPICE as a whole not merely descriptive for bakery products); W.G. Reardon Laboratories, Inc. v. B. & B. Exterminators, Inc., 71 F.2d 515, 517, 22 U.S.P.Q. 22, 24 (4th Cir. 1934) (MOUSE SEED as a whole not descriptive for poisonous pellets used to kill mice). In fact, "a mark that connotes two meanings — one possibly descriptive, and the other suggestive of some other association — can be called suggestive, as the mark is not 'merely' descriptive." See J. McCarthy on Trademarks and Unfair Competition §11:19, at 11-28 (4th ed. 2001). E.g., Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 U.S.P.Q. 55, 60 (2nd Cir. 1961) (POLY PITCHER not merely descriptive because it connotes both a polyethylene pitcher and is suggestive of MOLLY PITCHER of Revolutionary time). Here, the term "tile" has nothing to do with paints, and certainly does not describe any attribute of paints. As such, it cannot be that the mark components "liquid" and "tile" results in a composite mark that describes Applicant's goods.