| 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 | 88452814 |
| LAW OFFICE ASSIGNED | LAW OFFICE 128 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88452814/mark.png |
| LITERAL ELEMENT | |
| 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. |
| OWNER SECTION (current) | |
| NAME | Jerod Allen |
| STREET | 4413 Mission Road |
| CITY | Kansas City |
| STATE | Kansas |
| ZIP/POSTAL CODE | 66103 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Jerod Allen |
| STREET | 4413 Mission Road |
| CITY | Kansas City |
| STATE | Kansas |
| ZIP/POSTAL CODE | 66103 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| j.allen@bullybag.com | |
| ARGUMENT(S) | |
|
In the Office Action, the examining attorney refused registration of Applicant’s mark FLIPBOARD, for use in conjunction with clipboards, on the grounds that the mark is merely descriptive of the goods offered under the mark. Applicant respectfully disagrees, and requests that the examining attorney reconsider the refusal for at least the following reasons. It is well-established that marks that are merely descriptive of the goods and/or services offered under the mark are not allowed registration, while marks that are suggestive of the offered goods and services may be registered. (see, e.g., In re N.C. Lottery, 866 F.3d at 1366) A descriptive mark describes a function, use, characteristic, size, or intended purpose of the product (see, Two Pesos, 505 U.S. at 769), and generally requires that one need not use imagination, thought and perception to reach a conclusion as to the nature of the goods. A suggestive mark, by contrast, may employ terms that relate to a product’s characteristics or intended use, but requires a consumer to make a mental leap to understand the relationship between the suggestive mark and the product. That is the case here. The mark FLIPBOARD, for use with clipboards, does not immediately connote to a consumer the nature or intended use of the clipboards offered under the mark. Only after reflection or use of their imagination would a consumer make the connection that the term FLIPBOARD refers to an item commonly referred as a clipboard. While both make use of the common term “board”, the use of the term “flip” in the instant mark does not connote a “clip”. Thus, a consumer viewing the term FLIPBOARD would not immediately associate that term with a clipboard – some mental leap, or some amount of consideration is required before one would make that association. The subject FLIPBOARD mark is more analogous to the WET ONES and WITE-OUT marks, both of which, while arguably describing some attribute of the respective products (pre-moistened wipes for WET ONES, and correction fluid for WITE-OUT), were ultimately found to be suggestive. (see, Playtex Products v. Georgia-Pacific Corp., (2d Cir. 2004), and BIC Corp. v. Far Eastern Source Corp., (S.D.N.Y. Dec. 19, 2000, respectively). FLIPBOARD does not immediately bring to mind a clipboard. A consumer presented with a FLIPBOARD branded clipboard, or presented with the name FLIPBOARD even in association with writing apparatus, would have to make at least some mental leap to recognize that the clipboard is the “board” referred to in the name, and that the “flip” implies that the board itself can be flipped over, or that a flappable tablet may be attached to the board. That ambiguity alone (whether “flip” refers to the fact that the clipboard itself may be flipped and used, or whether a flippable tablet may be attached to the clipboard) establishes that the mark FLIPBOARD is not merely descriptive, it is at best suggestive of the goods offered under the mark. In view of the above, Applicant believes that the mark FLIPBOARD should be afforded registration, and such action is respectfully requested. |
|
| ATTORNEY INFORMATION (current) | |
| NAME | Mark C. Young |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | ERICKSON KERNELL IP, LLC |
| STREET | 8900 STATE LINE ROAD, STE. 500 |
| CITY | LEAWOOD |
| STATE | Kansas |
| POSTAL CODE | 66206 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 913-549-4700 |
| FAX | 9135494646 |
| ekdkdocket@kcpatentlaw.com | |
| DOCKET/REFERENCE NUMBER | 4994.017 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | Mark C. Young |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | ERICKSON KERNELL IP, LLC |
| STREET | 8900 STATE LINE ROAD, STE. 500 |
| CITY | LEAWOOD |
| STATE | Kansas |
| POSTAL CODE | 66206 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 913-549-4700 |
| FAX | 9135494646 |
| ekdkdocket@kcpatentlaw.com | |
| DOCKET/REFERENCE NUMBER | 4994.017 |
| OTHER APPOINTED ATTORNEY | Kent R. Erickson, James J. Kernell, Ginnie C. Derusseau, Aaron S. Reed, Kyle Donnelly, Blake E. Vande Garde, John C. McMahon, Marcia J. Rodgers, Dave Rein |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | MARK C. YOUNG |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ekdkdocket@kcpatentlaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | myoung@kcpatentlaw.com |
| DOCKET/REFERENCE NUMBER | 4994.017 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Mark C. Young |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ekdkdocket@kcpatentlaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | myoung@kcpatentlaw.com |
| DOCKET/REFERENCE NUMBER | 4994.017 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Mark C. Young/ |
| SIGNATORY'S NAME | Mark C. Young |
| SIGNATORY'S POSITION | Attorney of record, Kansas bar member |
| SIGNATORY'S PHONE NUMBER | 9135494700 |
| DATE SIGNED | 02/24/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Feb 24 17:19:04 ET 2020 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20200224171904006121-8845 2814-710332d9f282ffbaabac ecfb3f975169f018168c18933 1aa092a8187b730f019-N/A-N /A-20200224164304920364 |
| 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, the examining attorney refused registration of Applicant’s mark FLIPBOARD, for use in conjunction with clipboards, on the grounds that the mark is merely descriptive of the goods offered under the mark. Applicant respectfully disagrees, and requests that the examining attorney reconsider the refusal for at least the following reasons.
It is well-established that marks that are merely descriptive of the goods and/or services offered under the mark are not allowed registration, while marks that are suggestive of the offered goods and services may be registered. (see, e.g., In re N.C. Lottery, 866 F.3d at 1366)
A descriptive mark describes a function, use, characteristic, size, or intended purpose of the product (see, Two Pesos, 505 U.S. at 769), and generally requires that one need not use imagination, thought and perception to reach a conclusion as to the nature of the goods. A suggestive mark, by contrast, may employ terms that relate to a product’s characteristics or intended use, but requires a consumer to make a mental leap to understand the relationship between the suggestive mark and the product.
That is the case here. The mark FLIPBOARD, for use with clipboards, does not immediately connote to a consumer the nature or intended use of the clipboards offered under the mark. Only after reflection or use of their imagination would a consumer make the connection that the term FLIPBOARD refers to an item commonly referred as a clipboard. While both make use of the common term “board”, the use of the term “flip” in the instant mark does not connote a “clip”. Thus, a consumer viewing the term FLIPBOARD would not immediately associate that term with a clipboard – some mental leap, or some amount of consideration is required before one would make that association.
The subject FLIPBOARD mark is more analogous to the WET ONES and WITE-OUT marks, both of which, while arguably describing some attribute of the respective products (pre-moistened wipes for WET ONES, and correction fluid for WITE-OUT), were ultimately found to be suggestive. (see, Playtex Products v. Georgia-Pacific Corp., (2d Cir. 2004), and BIC Corp. v. Far Eastern Source Corp., (S.D.N.Y. Dec. 19, 2000, respectively).
FLIPBOARD does not immediately bring to mind a clipboard. A consumer presented with a FLIPBOARD branded clipboard, or presented with the name FLIPBOARD even in association with writing apparatus, would have to make at least some mental leap to recognize that the clipboard is the “board” referred to in the name, and that the “flip” implies that the board itself can be flipped over, or that a flappable tablet may be attached to the board. That ambiguity alone (whether “flip” refers to the fact that the clipboard itself may be flipped and used, or whether a flippable tablet may be attached to the clipboard) establishes that the mark FLIPBOARD is not merely descriptive, it is at best suggestive of the goods offered under the mark.
In view of the above, Applicant believes that the mark FLIPBOARD should be afforded registration, and such action is respectfully requested.