| 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 | 88394011 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION (current) | |
| MARK FILE NAME | http://uspto.report/TM/88394011/mark.png |
| LITERAL ELEMENT | STAPLES CONNECT |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of an image of a staple followed by the words "STAPLES CONNECT". |
| MARK SECTION (proposed) | |
| MARK FILE NAME | \\TICRS\EXPORT17\IMAGEOUT 17\883\940\88394011\xml6\ ROA0002.JPG |
| LITERAL ELEMENT | STAPLES CONNECT |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR MARK | NO |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of an image of a staple followed by the words "STAPLES CONNECT" in stylized text. |
| PIXEL COUNT ACCEPTABLE | YES |
| PIXEL COUNT | 656 x 445 |
| ARGUMENT(S) | |
|
In the office action issued May 22, 2019, the examining attorney indicated the description of client’s mark is incomplete and must be amended, that “CONNECT” should be disclaimed apart from the complete mark, and that a duplicate entry in the description of services must be deleted. In response, applicant amends the description of services as requested and hereby submits an amended drawing of the mark that shows the mark without any background color/shading as was intended. Applicant respectfully disagrees with the examining attorney that “CONNECT” as used in the applicant’s mark is merely descriptive and, therefore, has not entered the requested disclaimer for the reasons set forth below.
Mark Drawing/Description Applicant’s drawing of the mark was inadvertently filed too small, which led to the drawing being shown on a black background taking up the remaining space allotted for the drawing. The entire background of the mark was meant to have been white and intended only to be background. This is why the applicant’s description of the mark as filed states only that “[t]he mark consists of an image of staple followed by the words “STAPLES CONNECT” and is why applicant had not entered a statement in the appilcation indicating that “the black in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.” TMEP §807.07(d) Accordingly, as the unintended black background in the drawing is a non-material element of the mark having not been claimed in the application, applicant hereby submits a substitute drawing pursuant to TMEP § 807.15 showing the mark as intended only as stylized words with no claim to background color shapes. See TMEP § 807.07 (“If applicant submits a black-and-white drawing that contains gray or stippling that produces gray tones, and the application states that color is not claimed as a feature of the mark, no further inquiry is required.”).
“CONNECT” is Not Descriptive of Applicant’s Services A term is considered merely descriptive, and therefore unregistrable and should be disclaimed as per TMEP § 1213, if the it immediately describes an ingredient, quality characteristic or feature, purpose or use of the relevant goods and/or services. In re Gyulay, 3 USPT2d 1009 (Fed. Cir. 1987) (emphasis added); TMEP § 1209.01(b). In contrast, a term is suggestive if a multistage reasoning process or imagination, thought or perception is required in order to determine what attributes or quality of the goods the term attributes. Id. at 218. The word “CONNECT” does not “immediately” or “merely” describe a significant attribute or feature of the applicant’s services as is required for the word to be descriptive. Applicant provides retail and marketing services. The word “connect” (to join) is not immediately descriptive of those services. Applicant is not a broker; it does not actively connect buyers with sellers. Applicant only offers/sells various goods/services. It would take a multi-step reasoning process to determine that applicant’s services may result in the connecting of buyers with sellers particularly here where applicant is, in fact, NOT connecting buyers and sellers.
This incorrect conclusion by the examining attorney as to the nature of applicant’s services is evidence the word “CONNECT” is not merely descriptive of applicant’s services. That is, because applicant’s services the examining attorney indicates are described by the word “CONNECT” are, in fact, not the services applicant provides, then the word “CONNECT” cannot be descriptive of applicant’s services. For example, the “sourcing” services identified in the application, which the examining attorney claims are described by the word “CONNECT,” are simply a part of applicant’s retail sales services. Applicant is the seller. It is not “connecting” the buyer with third-party sellers. The buyers are buying product/services from applicant. Applicant is merely vetting the best product or service it has at hand to provide the buyer with what he or she needs. Furthermore, the word “sourcing” means, as noted by the examining attorney, “obtaining from a source” (emphasis added). It does not mean obtaining and then connecting and, therefore, does not mean applicant is obtaining a source for a product/service needed by a customer and then connecting its customer (buyer) to that source (seller ).
Applicant is also not “promoting the goods and services of others.” Applicant is providing promotional services that are very specifically identified in the description are services as “providing customized specialty apparel, promotional items and incentive merchandise” that allow the seller (applicant’s customer) to promote itself. Applicant is not promoting any of its customer’s services. It is merely providing merchandise to the specification and order of the customer for the customer to advertise its own goods/services. It is applicant’s customer, not applicant, that is ”promoting” or, as defined by the examining attorney, “furthering the growth and development” of its own products and services.
Instead, applicant’s mark is suggestive of a variety of possible meanings and connotations based on the various meanings of the term connect. See Exhibit A, dictionary definitions of “CONNECT.” For example, applicant’s mark could suggest that applicant is joining with, or making a connection with, its customers, or helping the customer reach its goals through its products and services (definitions 1 and 4,intransitive verb), that applicant is successful in providing customers with the goods/services the customer indicated it needed (definition 3, intransitive verb), or that applicant is establishing a connection or a relationship with its customers or between its customers and its goods/services (definition 5, intransitive verb, definition 2, transitive verb).
Lastly, applicant submits that, even assuming the examining attorney’s conclusions as to the nature of the applicant’s services were correct, the examining attorney’s explanation as to why “CONNECT” is descriptive of such services is actually evidence the term is not descriptive because the examining attorney undergoes multi-stage reasoning in coming to this conclusion. First, the examining attorney chooses to and looks only at definitions of the words “sourcing” and “promotion” in the applicant’s description of services. Second, the examining makes an inferential leap that the definition of sourcing means not just “obtaining” but also means connecting, and that applicant’s “promotional services” are promoting the goods/services of applicant’s customers. And, third, examining attorney then concludes based on definitions of sourcing and promotion that applicant is connecting a buyer and third-party seller.
In light of the above, applicant respectfully requests the examining attorney withdraw the disclaimer requirement and approve the application for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_20414413379-20190812162640733283_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\940\88394011\xml6\ROA0003.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\883\940\88394011\xml6\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\940\88394011\xml6\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\940\88394011\xml6\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\883\940\88394011\xml6\ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | dictionary definition of "connect" |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| retail store services featuring office supplies, cleaning and janitorial supplies, break-room supplies, safety supplies, printing products, promotional products, office equipment, electronic and technology products, and office furniture; retail store services featuring promotional general merchandise and general consumer goods with company brand logos and tag lines made to the order and specification of the customer; promoting the sale of goods and services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise; retail store services featuring a wide variety of consumer goods; retail store services featuring a wide variety of consumer goods for others; retail supply ordering services for a wide variety of consumable goods, supplies and equipment regularly used in offices, schools and homes; providing consumer and business product information via the internet; business services, namely, sourcing of strategic goods and services at customers' specific request; preparation of customized promotional and merchandising materials for others; promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandise; preparation of customized promotional and merchandising materials for others | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 035 |
| TRACKED TEXT DESCRIPTION | |
| Retail store services featuring office supplies, cleaning and janitorial supplies, break-room supplies, safety
supplies, printing products, promotional products, office equipment, electronic and technology products, and office furniture; retail store services featuring promotional
general merchandise and general consumer goods with company brand logos and tag lines made to the order and specification of the customer; promoting the sale of goods and
services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise; retail store services featuring a wide variety of
consumer goods; retail store services featuring a wide variety of consumer goods for others; retail supply ordering services for a wide variety
of consumable goods, supplies and equipment regularly used in offices, schools and homes; providing consumer and business product information via the internet;
business services, namely, sourcing of strategic goods and services at customers' specific request; preparation of customized promotional and
merchandising materials for others; promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and
incentive merchandise; |
|
| FINAL DESCRIPTION | |
| Retail store services featuring office supplies, cleaning and janitorial supplies, break-room supplies, safety supplies, printing products, promotional products, office equipment, electronic and technology products, and office furniture; retail store services featuring promotional general merchandise and general consumer goods with company brand logos and tag lines made to the order and specification of the customer; promoting the sale of goods and services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise; retail store services featuring a wide variety of consumer goods; retail store services featuring a wide variety of consumer goods for others; retail supply ordering services for a wide variety of consumable goods, supplies and equipment regularly used in offices, schools and homes; providing consumer and business product information via the internet; business services, namely, sourcing of strategic goods and services at customers' specific request; preparation of customized promotional and merchandising materials for others; promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandise; | |
| FILING BASIS | Section 1(b) |
| ATTORNEY SECTION (current) | |
| NAME | Stephanie S. Lambert |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | STAPLES, INC. |
| STREET | 500 STAPLES DRIVE |
| CITY | FRAMINGHAM |
| STATE | Massachusetts |
| POSTAL CODE | 01702 |
| COUNTRY | US |
| ipmailbox@staples.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| ATTORNEY SECTION (proposed) | |
| NAME | Stephanie S. Lambert |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | STAPLES, INC. |
| STREET | 500 STAPLES DRIVE |
| CITY | FRAMINGHAM |
| STATE | Massachusetts |
| POSTAL CODE | 01702 |
| COUNTRY | United States |
| ipmailbox@staples.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| CORRESPONDENCE SECTION (current) | |
| NAME | STEPHANIE S. LAMBERT |
| FIRM NAME | STAPLES, INC. |
| STREET | 500 STAPLES DRIVE |
| CITY | FRAMINGHAM |
| STATE | Massachusetts |
| POSTAL CODE | 01702 |
| COUNTRY | US |
| ipmailbox@staples.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Stephanie S. Lambert |
| FIRM NAME | STAPLES, INC. |
| STREET | 500 STAPLES DRIVE |
| CITY | FRAMINGHAM |
| STATE | Massachusetts |
| POSTAL CODE | 01702 |
| COUNTRY | United States |
| ipmailbox@staples.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Stephanie S. Lambert/ |
| SIGNATORY'S NAME | Stephanie S. Lambert |
| SIGNATORY'S POSITION | Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER | 5082532035 |
| DATE SIGNED | 08/15/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Aug 15 10:55:58 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XX-2 0190815105558272908-88394 011-61088ba5a7503a6fd1ffe 3a057276d783c48441f2e4b28 b8d77d45369c2d1f657-N/A-N /A-20190815101750313561 |
| 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) |
In the office action issued May 22, 2019, the examining attorney indicated the description of client’s mark is incomplete and must be amended, that “CONNECT” should be disclaimed apart from the complete mark, and that a duplicate entry in the description of services must be deleted. In response, applicant amends the description of services as requested and hereby submits an amended drawing of the mark that shows the mark without any background color/shading as was intended. Applicant respectfully disagrees with the examining attorney that “CONNECT” as used in the applicant’s mark is merely descriptive and, therefore, has not entered the requested disclaimer for the reasons set forth below.
Mark Drawing/Description
Applicant’s drawing of the mark was inadvertently filed too small, which led to the drawing being shown on a black background taking up the remaining space allotted for the drawing. The entire background of the mark was meant to have been white and intended only to be background. This is why the applicant’s description of the mark as filed states only that “[t]he mark consists of an image of staple followed by the words “STAPLES CONNECT” and is why applicant had not entered a statement in the appilcation indicating that “the black in the drawing represents background, outlining, shading, and/or transparent areas and is not part of the mark.” TMEP §807.07(d)
Accordingly, as the unintended black background in the drawing is a non-material element of the mark having not been claimed in the application, applicant hereby submits a substitute drawing pursuant to TMEP § 807.15 showing the mark as intended only as stylized words with no claim to background color shapes. See TMEP § 807.07 (“If applicant submits a black-and-white drawing that contains gray or stippling that produces gray tones, and the application states that color is not claimed as a feature of the mark, no further inquiry is required.”).
“CONNECT” is Not Descriptive of Applicant’s Services
A term is considered merely descriptive, and therefore unregistrable and should be disclaimed as per TMEP § 1213, if the it immediately describes an ingredient, quality characteristic or feature, purpose or use of the relevant goods and/or services. In re Gyulay, 3 USPT2d 1009 (Fed. Cir. 1987) (emphasis added); TMEP § 1209.01(b). In contrast, a term is suggestive if a multistage reasoning process or imagination, thought or perception is required in order to determine what attributes or quality of the goods the term attributes. Id. at 218. The word “CONNECT” does not “immediately” or “merely” describe a significant attribute or feature of the applicant’s services as is required for the word to be descriptive. Applicant provides retail and marketing services. The word “connect” (to join) is not immediately descriptive of those services. Applicant is not a broker; it does not actively connect buyers with sellers. Applicant only offers/sells various goods/services. It would take a multi-step reasoning process to determine that applicant’s services may result in the connecting of buyers with sellers particularly here where applicant is, in fact, NOT connecting buyers and sellers.
This incorrect conclusion by the examining attorney as to the nature of applicant’s services is evidence the word “CONNECT” is not merely descriptive of applicant’s services. That is, because applicant’s services the examining attorney indicates are described by the word “CONNECT” are, in fact, not the services applicant provides, then the word “CONNECT” cannot be descriptive of applicant’s services. For example, the “sourcing” services identified in the application, which the examining attorney claims are described by the word “CONNECT,” are simply a part of applicant’s retail sales services. Applicant is the seller. It is not “connecting” the buyer with third-party sellers. The buyers are buying product/services from applicant. Applicant is merely vetting the best product or service it has at hand to provide the buyer with what he or she needs. Furthermore, the word “sourcing” means, as noted by the examining attorney, “obtaining from a source” (emphasis added). It does not mean obtaining and then connecting and, therefore, does not mean applicant is obtaining a source for a product/service needed by a customer and then connecting its customer (buyer) to that source (seller ).
Applicant is also not “promoting the goods and services of others.” Applicant is providing promotional services that are very specifically identified in the description are services as “providing customized specialty apparel, promotional items and incentive merchandise” that allow the seller (applicant’s customer) to promote itself. Applicant is not promoting any of its customer’s services. It is merely providing merchandise to the specification and order of the customer for the customer to advertise its own goods/services. It is applicant’s customer, not applicant, that is ”promoting” or, as defined by the examining attorney, “furthering the growth and development” of its own products and services.
Instead, applicant’s mark is suggestive of a variety of possible meanings and connotations based on the various meanings of the term connect. See Exhibit A, dictionary definitions of “CONNECT.” For example, applicant’s mark could suggest that applicant is joining with, or making a connection with, its customers, or helping the customer reach its goals through its products and services (definitions 1 and 4,intransitive verb), that applicant is successful in providing customers with the goods/services the customer indicated it needed (definition 3, intransitive verb), or that applicant is establishing a connection or a relationship with its customers or between its customers and its goods/services (definition 5, intransitive verb, definition 2, transitive verb).
Lastly, applicant submits that, even assuming the examining attorney’s conclusions as to the nature of the applicant’s services were correct, the examining attorney’s explanation as to why “CONNECT” is descriptive of such services is actually evidence the term is not descriptive because the examining attorney undergoes multi-stage reasoning in coming to this conclusion. First, the examining attorney chooses to and looks only at definitions of the words “sourcing” and “promotion” in the applicant’s description of services. Second, the examining makes an inferential leap that the definition of sourcing means not just “obtaining” but also means connecting, and that applicant’s “promotional services” are promoting the goods/services of applicant’s customers. And, third, examining attorney then concludes based on definitions of sourcing and promotion that applicant is connecting a buyer and third-party seller.
In light of the above, applicant respectfully requests the examining attorney withdraw the disclaimer requirement and approve the application for publication.
