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. 88413399 UNIVERSAL DISPLAY VENTURES(Standard Characters, see http://uspto.report/TM/88413399/mark.png) has been amended as follows:

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

Requirement of Disclaimer

In the pending office action, the Examining Attorney has required that the Applicant disclaim the words “DISPLAY” and “VENTURES”.  The Applicant disagrees with this requirement and requests that it be withdrawn at least for the following reasons. 

Applicant respectfully submits that in the office action the Examining Attorney has not provided a reasoned explanation or persuasive evidence as to why the words DISPLAY and VENTURES immediately convey information concerning a quality, characteristic, function, ingredient, attribute, or feature of applicant’s services.  Rather, the Examining Attorney relies upon dictionary definitions that are pieced together for the refusal.  (See Office Action). Yet, the TMEP requires that the determination of the registrability of a phrase like UNIVERSAL DISPLAY VENTURES be based upon the mark a whole and not dissected into its individual words.

The Applicant kindly points out that Applicant’s mark “UNIVERSAL DISPLAY VENTURES” functions as a slogan for business management advice and should not be dissected into pieces.

According to TMEP 1213.05(b):

A phrase is "a group of words that are used together in a fixed expression," "two or more words in sequence that form a syntactic unit that is less than a complete sentence," and "a sequence of two or more words arranged in a grammatical construction and acting as a unit in a sentence." MacmillanDictionary.com, search of "phrase," http://www.macmillandictionary.com/dictionary/american/phrase  (Jan. 31, 2012); The American Heritage Dictionary of the English Language 1324 (4th ed. 2006); Random House Webster’s Unabridged Dictionary 1460 (2nd ed. 2001). Acting as a "single idea" or a "syntactical unit," however, does not necessarily mean that a phrase is "unitary" in the trademark sense. A phrase qualifies as unitary in the trademark sense only if the whole is something more than the sum of its parts. Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (finding EUROPEAN FORMULA and design for cosmetic products not unitary since the "elements are not so merged together that they cannot be regarded as separate" and the proximity of the words to the design feature "does not endow the whole with a single, integrated, and distinct commercial impression").

Even where it includes an otherwise unregistrable component, a unitary phrase as a whole will have "some degree of ingenuity in its phraseology as used in connection with the goods; or [say] something a little different from what might be expected to be said about the product; or [say] an expected thing in an unexpected way." Ex parte Mooresville Mills, Inc., 102 USPQ 440, 441 (Comm’r Pats. 1954) (holding FROM FIBER TO FABRIC FOR THE STYLE CONSCIOUS MILLIONS for fabrics capable of registration on the Supplemental Register).

Phrases must be analyzed on a case-by-case basis to determine whether their meaning and commercial impression indicate an inseparable whole. As noted above, a unitary phrase derives its meaning when viewed as a whole, with the combination of the components having a distinct commercial impression that is independent of the constituent elements. Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052 (noting that the proximity of the words EUROPEAN FORMULA to the design feature "does not endow the whole with a single, integrated, and distinct commercial impression"). In some cases, in addition to the mark itself, the specific arrangement and placement of all the elements of the phrase and the manner of use and presentation on the specimen, on applicant’s website, in promotional materials, and in connection with other goods or services may all demonstrate how the phrase is presented to and perceived by consumers.

Given the incongruous nature of the words UNIVERSAL DISPLAY VENTURES, Applicant submits that these words form a commercial impression that is independent from the combination of the components.

Moreover, the mark as a whole creates a unique commercial impression. Indeed, the mark is a unitary mark. The elements of a “unitary” mark are integrated together into a totality whose parts are inseparable:

A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own in-dependent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.

Dena Corp. v. Belvedere Intern., Inc., 950 F.2d 1555, 1561, 21 U.S.P.Q.2d 1047 (Fed. Cir. 1991).  See also, T.M.E.P. §§ 1213.05 to 1213.05(h) (2013). See also T.M.E.P. Appendix D22 (2013) (Examination Guide 1-12) (“Determining Whether Wording in a Mark Comprises a Unitary Phrase or Slogan for Purposes of Disclaimer.”); T.M.E.P. Appendix D23 (2013) (Examination Guide 1-12) (“Examples”).

In re Sears Brands, LLC (Serial No. 77558337, T. T. A. B. December 20, 2010, slip op.), though not designated as precedential, is extremely instructive in this matter.  In that case, the Board reversed the Examining Attorney’s requirement that Sears disclaim the term “Service Crew”.  The mark at issue was SEARS BLUE SERVICE CREW.  The Board held that “Service Crew” was not merely descriptive of Sears’s intended services because “[t]he term Service Crew” used in the mark SEARS BLUE SERVICE CREW to identify retail department store services is incongruous because the term “service crew” does not immediately call to mind retail department store services or its employees”. Id., Slip. Op., p. 8-9. Likewise, the Board observed that the mark SEARS BLUE SERVICE CREW was a unitary mark.  The Board reasoned that “Service Crew” does not stand out by itself pointing to services.  See id., at 13-14.  Further, the Board noted that consumers will not break the mark into its component parts. 

The reasoning in Sears Brands is equally applicable to the instant trademark application for UNIVERSAL DISPLAY VENTURES.  The applied for services are “business management and advice” and neither “DISPLAY” nor “VENTURES” alone or together, or as used in the applied for mark, immediately convey to a consumer that the services are “business management and advice”.

Similarly, since the mark as a whole functions a lyrical slogan (much like the rhyming mark in Sears Brands, supra), consumers are not likely to parse individual words from the mark. Pursuant to T.M.E.P. §1213.05(b)(i), a registrable slogan is one that is used in the trademark sense and functions as a trademark or service mark. Id. Slogans, by their attention-getting nature, are treated as unitary matter and must not be broken up for purposes of requiring a disclaimer. Id. In the instant trademark application, the mark UNIVERSAL DISPLAY VENTURES functions as an attention getting slogan for business management and advice and should not be broken into parts for purposes of determining its registrability.

Even If the Mark Does Not Function As a Unitary Mark or “Slogan”, the Wording “Ventures” is Not Merely Descriptive Because It Does Not Immediately Convey Information Concerning Quality, Characteristic, Function, Ingredient, Attribute or Feature of the Services or Goods In Connection With Which it is Used or Intended to be Used.

Applicant’s intended goods and services are “Providing business management and advice; Planning concerning business management, namely, searching for business partners” and “Providing venture capital, development capital, seed funding, private equity and investment funding”.

Continuing, the word DISPLAY is defined in The American Heritage Dictionary of the English Language at http://ahdictionary.com/word/search.html?q=display (last visited on January 22, 2020) in the following manner:

 

v. dis·played, dis·play·ing, dis·plays

v. tr.

1.

a. To present to view; cause to be seen: The doctor displayed her diploma on the wall of her office. The autumn woods display a wide array of colors. See Synonyms at show.

b. To exhibit ostentatiously; show off: garish hosts who display their wealth whenever guests come over.

c. To show (images or information) on a screen: The time is displayed on the bottom right corner of the computer monitor.

2. To be or give evidence of; manifest or reveal: writing that displays broad knowledge; a decision that displays poor judgment.

3. To spread out; unfurl: The peacock displayed its fan.

4. Biochemistry To position (a protein, for example) on the surface of a biological entity such as a virus: proteins displayed on a bacteriophage.

v. intr.

Zoology To exhibit a behavioral display.

n.

1.

a. The act of displaying.

b. Ostentatious exhibition: an attention-seeker who was fond of display.

c. A public exhibition.

d. Objects or merchandise set out for viewing by the public.

2. A demonstration or manifestation: a display of temper.

3.

a. Zoology A specialized pattern of behavior used to communicate visually, such as the presentation of colors or plumage by male birds as part of courtship or intimidation.

b. An instance of such behavior.

4. An advertisement or headline designed to catch the eye.

5. An electronic device, such as a computer monitor or cellphone screen, that presents information in a visual form.

6. Biochemistry An in vitro method by which genetically engineered proteins are placed on the surface of a biological entity (such as a bacteriophage, yeast, or ribosome) so that the properties of these proteins and those they bind to can be analyzed and manipulated for research purposes.

Idiom:

on display

In public view; for all to see.

 

(See Ex. 1)

 

Thus, the definition that the Examining Attorney has selected as proof of the lack of inherent distinctiveness is a definition that falls almost to the very bottom of the 11 total definitions. The word DISPLAY as used in Applicant’s proposed mark would not immediately call to mind the services sought to be registered, i.e. “Providing business management and advice; Planning concerning business management, namely, searching for business partners” and “Providing venture capital, development capital, seed funding, private equity and investment funding”. For this reason, Applicant submit that the disclaimer requirement for the word DISPLAY should be withdrawn.

Further, the word VENTURES is defined in The American Heritage Dictionary of the English Language at http://ahdictionary.com/word/search.html?q=ventures (last visited on January 22, 2020) in the following manner:

 

 

n.

1. An undertaking that is dangerous, daring, or of uncertain outcome.

2. A business enterprise involving some risk in expectation of gain.

3. Something, such as money or cargo, at hazard in a risky enterprise.

v. ven·tured, ven·tur·ing, ven·tures

v.tr.

1. To expose to danger or risk: ventured her entire fortune on a single stock.

2. To brave the dangers of: ventured the high seas in a small boat.

3. To express at the risk of denial, criticism, or censure: "I would venture to guess that Anon., who wrote so many poems without signing them, was often a woman" (Virginia Woolf).

v.intr.

1. To take a risk; dare.

2. To proceed despite possible danger or risk: ventured into the wilderness.

Idiom:

at a venture

By mere chance or fortune; at random.

 

(See Ex. 2)

The word ventures may be thought of as a play on the word “ADVENTURE” and connotes excitement and exploration, indeed, according to the American Heritage Dictionary definitions, the very first meaning (most popular) is “An undertaking that is dangerous, daring, or of uncertain outcome”. Accordingly, the word VENTURES is not merely descriptive of Applicant’s applied for business and investment services and the disclaimer requirement should be withdrawn.

The determination of whether or not a word is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract.  This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace.  See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (F. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).

Applicant's position that the words DISPLAY and VENTURES are not "merely descriptive" is further supported by the following cases upholding the registration on the Principal Register of the following marks:

1.         "SPACE" for an association whose services promote interests of members in earth station industry suggests only the general field of space-related communications or technology and does not immediately describe association's services.  The term is at most suggestive of such services and not merely descriptive of them.  In re Society for Private and Commercial Earth Stations, 226 USPQ 436 (TTAB 1985).

2.         "HOMEFOAMERS" is not merely descriptive of insulation installation services.  Scientific Applications, Inc. v. Energy Conservation Corp., 195 USPQ 379 (N.D. Ga. 1977).

3.         "MARRIAGE PROPONENTS" is not merely descriptive of prospective marriage partner services.  In re Hunt, 132 USPQ 564 (TTAB 1962).

4.         "CITIBANK" is not merely descriptive of an urban bank.  Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540, 222 USPQ 292 (11th Cir. 1984), reh. denied, 79 F.2d 891 (11th Cir. 1984).

5.         "HANDI WIPES" is not merely descriptive of easy-to-clean dusting cloths.  In re Colgate-Palmolive Co., 149 USPQ 793 (TTAB 1966).

6.         "ROACH MOTEL" is not merely descriptive of insect traps, but rather is at most suggestive.  American Home Products v. Johnson Chemical Co., 200 USPQ 417 (2nd Cir. 1978).

7.         "HEARTWISE" is not merely descriptive of low-fat, low-cholesterol foods, but rather is suggestive because it requires imagination and thought to conclude that such foods are "wise for the heart."  Worthington Foods, Inc. v. Kellogg Co., 732 F.Supp. 1417, 14 USPQ2d 1577 (S.D. Ohio 1990).

8.         "LOC-TOP" is not merely descriptive of bottle closure caps.  In re Polytop Corp., 167 USPQ 383 (TTAB 1970).

9.         "MINITMIX" is not merely descriptive of biscuit mix.  Ex parte Pillsbury Flour Mills Co., 23 USPQ 168 (Com'r Pats. 1934).

10.       "RAPID SHAVE" is not merely descriptive of shaving cream.  Colgate-Palmolive Co. v. House for Men, Inc., 143 USPQ 159 (TTAB 1964).

11.       "SOFT SMOKE" is not merely descriptive although it suggests some characteristics of smoking tobacco.  Phillip Morris, Inc. v. R.J. Reynolds Tobacco Co., 207 USPQ 451 (TTAB 1980).

12.       "SPRAY 'N VAC" is not merely descriptive of aerosol rug cleaner.  Glamorene Products Corp. v. Boyle-Midway, Inc., 188 USPQ 145 (S.D.N.Y. 1975).

13.       "SENSORMAT" is not merely descriptive, but rather highly suggestive and registrable for a pressure-sensitive pad for monitoring patients in bed, even if component parts have some descriptive significance."  In re Bed-Check Corp., 226 USPQ 946 (TTAB 1985).

Applicant submits that the question of descriptiveness is closer in each of the cases cited above than in the case of applicant's mark now before the Examining Attorney.  The conscious mental effort that is required to relate the words DISPLAY and VENTURES to the services for which registration is here sought is far greater than that required to relate any of the above marks to their corresponding services/goods.  Applicant's mark requires imagination, thought, and perception to reach a conclusion as to the nature of the services associated with the mark, and it is, therefore, a suggestive mark, if not deemed to be an arbitrary mark for the goods in question. 

In re Shutts, 217 USPQ 363 (TTAB 1983) is also pertinent here.  Shutts teaches that the mere existence of a term which might be applied to an applicant's goods after reflection is not dispositive of the question of mere descriptiveness.

The Board went on to say in Shutts:

The concept of mere descriptiveness, it seems to us, must relate to general and readily recognizable word formulations and meanings, either in a popular or technical usage context, and should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and "mental pause."

Id. at 364-65.

So it is here, that applicant's incongruous mark UNIVERSAL DISPLAY VENTURES provides in relation to the Applicant's services a combination of words, whereby at least some degree of imagination and a "mental pause" are needed before the nature of the services are perceived.  It is respectfully submitted that DISPLAY and VENTURES, as presented in Applicant's mark, do not "in a popular or technical usage context," and without some degree of "imagination and 'mental pause'" convey the nature of applicant's particular services. 

Of course, should the Examining Attorney entertain any doubt with respect to "mere descriptiveness," that doubt is properly resolved in the applicant's favor.   In re Shutts, supra, 217 USPQ at 363, 365; In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972) ("DRI-FOOT" for antiperspirant foot deodorant not “merely descriptive"); and In re J. Ray McDermott and Co., Inc., 170 USPQ 524 (TTAB 1971) ("SWIVEL-TOP" for fuel transfer mooring buoys not "merely descriptive").

Applicant, therefore, suggests that the words DISPLAY and VENTURES are suggestive, not descriptive, because it requires imagination, thought, and perception (plus additional information) to determine the nature of Applicant’s goods.  TMEP 1209.01(b). Therefore, in this case, with the foregoing cases and citations as a guide, Applicant submits that words DISPLAY and VENTURES, alone or together, or as used in its applied-for mark do not “immediately convey” the nature of the services; rather imagination is required to “connect” the mark to the services.

Accordingly, Applicant respectfully requests that the disclaimer requirement be withdrawn.

 

EVIDENCE
Evidence in the nature of Ex. 1 .Printout from American Heritage Dictionary for the Definition of DISPLAY EX 2. Printout from American Heritage Dictionary for the Definition of VENTURE has been attached.
Original PDF file:
evi_7124519055-20200122144207294772_._Ex._1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_7124519055-20200122144207294772_._Ex._2.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

The applicant's current attorney information: Stanley D. Ference III. Stanley D. Ference III of FERENCE & ASSOCIATES LLC, is located at

      409 BROAD ST
      PITTSBURGH, Pennsylvania 15143
      US
The docket/reference number is 10052.2806.

The phone number is 412-741-8400.

The fax number is 412-741-9292.

The email address is uspto@ferencelaw.com

The applicants proposed attorney information: Stanley D. Ference III. Stanley D. Ference III of FERENCE & ASSOCIATES LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      409 BROAD ST
      PITTSBURGH, Pennsylvania 15143
      United States
The docket/reference number is 10052.2806.

The phone number is 412-741-8400.

The fax number is 412-741-9292.

The email address is uspto@ferencelaw.com

Stanley D. Ference III 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: STANLEY D. FERENCE III. STANLEY D. FERENCE III of FERENCE & ASSOCIATES LLC, is located at

      409 BROAD ST
      PITTSBURGH, Pennsylvania 15143
      US
The docket/reference number is 10052.2806.

The phone number is 412-741-8400.

The fax number is 412-741-9292.

The email address is uspto@ferencelaw.com; bmalkin@ferencelaw.com

The applicants proposed correspondence information: Stanley D. Ference III. Stanley D. Ference III of FERENCE & ASSOCIATES LLC, is located at

      409 BROAD ST
      PITTSBURGH, Pennsylvania 15143
      United States
The docket/reference number is 10052.2806.

The phone number is 412-741-8400.

The fax number is 412-741-9292.

The email address is uspto@ferencelaw.com; bmalkin@ferencelaw.com

SIGNATURE(S)
Response Signature
Signature: /Brian Samuel Malkin/     Date: 01/22/2020
Signatory's Name: Brian Samuel Malkin
Signatory's Position: Attorney of record, Pa bar member, Principle Attorney, Ference & Associates LLC

Signatory's Phone Number: 4127418400

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:    STANLEY D. FERENCE III
   FERENCE & ASSOCIATES LLC
   
   409 BROAD ST
   PITTSBURGH, Pennsylvania 15143
Mailing Address:    Stanley D. Ference III
   FERENCE & ASSOCIATES LLC
   409 BROAD ST
   PITTSBURGH, Pennsylvania 15143
        
Serial Number: 88413399
Internet Transmission Date: Wed Jan 22 14:51:11 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020012214511118
7495-88413399-700e8708d92a8b11d4d73a7f5a
df9b56a75e454ec432e48e073748c5dd4b6b90-N
/A-N/A-20200122144207294772