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. 88479494 SCOUT (Stylized and/or with Design, see http://uspto.report/TM/88479494/mark.png) has been amended as follows:

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

In the United States Patent and Trademark Office

Serial No.: 88/479,494 Mark: SCOUT (stylized and/or design) Int’l Class: 042 Atty. Docket: SCT-608

I. INTRODUCTION

This response is submitted by Applicant, Scout Exchange LLC (“Applicant”), through its undersigned counsel, in response to the Office Action dated September 11, 2019 (“the Office Action”) for the above-referenced U.S. Trademark Application for the mark SCOUT (stylized and/or design) in International class 042 (“Applicant’s Mark”).

II. “MERELY DESCRIPTIVE” REJECTION

The Office Action preliminarily refuses registration on the Principal Register of Applicant’s Mark under Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1), alleging that Applicant’s Mark is merely descriptive of Applicant’s services. Applicant disagrees and submits that Applicant’s Mark is at most a suggestive concept used to communicate information indirectly about Applicant’s services. Accordingly, Applicant respectfully requests withdrawal of the § 2(e)(1) rejection and registration of Applicant’s Mark on the Principal Register.

A. Legal Framework

A mark is merely descriptive of goods or services within the meaning of Section 2(e)(1) if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012); see also In re Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987). If the mental leap between the word and the product attributes is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness. In re Driven Innovations, 674 F. App’x 996, 999-1000 (Fed. Cir. 2017).

In determining whether a mark is merely descriptive, the Trademark Trial and Appeal Board (“the Board”) and courts have historically reviewed considerations such as the degree of imagination required to determine the nature of the goods or services from the mark, or the degree to which competitors need to use the mark to describe their services. Even though the legal standard has evolved over time into the above standard, such considerations can still be relevant to the 2(e)(1) analysis. In re Fat Boys Water Sports LLC, 118 U.S.P.Q. 2d 1511 (T.T.A.B. 2016).

Finally, if after the 2(e)(1) analysis is conducted doubt remains as to mere descriptiveness, the Board resolves doubts in favor of Applicant. See In re Conductive Sys., Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1983).

As set forth below, Applicant’s Mark is not merely descriptive under applicable law.

B. The SCOUT Mark Requires Consumer Imagination to Determine the Nature of Goods and Services to Which the Mark is Applied

The degree of imagination required to determine the nature of the goods or services is part and parcel of the concept of suggestiveness, as contrasted with descriptiveness: if a mark is suggestive, by definition it is not merely descriptive. In paticular:

A suggestive mark requires imagination, thought and perception to reach a conclusion as to the nature of the goods [or services], while a merely descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods [or services].

StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332-33 (Fed. Cir. 2014) (italics added); see also Prods., Inc. v. United Merchants & Mfrs. Inc., 160 U.S.P.Q. 777, 785 (S.D.N.Y. 1968) (finding the word “contact” suggestive when applied to self-adhesive plastic). Under this standard, where a consumer must exercise “mature thought or follow a multi-stage reasoning process” to determine the nature of the goods or services, then the mark is suggestive and not descriptive. In re Tennis In The Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (finding the marks TENNIS IN THE ROUND INC. and TENNIS IN THE ROUND not merely descriptive of tennis courts arranged in a circular configuration and overturning the Examiner’s decision refusing registration). If the mental leap between the word and the product’s attributes is not virtually automatic and instantaneous, suggestiveness is strongly indicated. McCarthy § 11.21[1].

Here, nothing about the SCOUT mark immediately conveys the ingredients, qualities or characteristics, feature, function, purpose or use of the services offered thereunder. Initially, although the Office Action alleges that “scout” means “to make a search” or “to find by making a search”, the word “scout” carries multiple other definitions, any of which could equally well be called to the consumer’s mind, creating completely different associations or impressions. For example, “scout” can mean:

• A member of the Girl Scouts or Boy Scouts;

• A person, especially a soldier, sent out to get information about the enemy;

• A quick look around a place or area, especially in order to find something; and

• To go to look in various places for something you want or to check for possible danger.

See, e.g., Exhibit A (a printout from the online dictionary Cambridge Dictionaries Online, U.S. English version, available at www.dictionary.cambridge.org). Indeed, the word “scout” has so many different meanings that it is not immediately clear, based on inspection of Applicant’s Mark alone, which if any of these specific aspects of the broad notion of “scout” Applicant’s Mark may be relevant.

Moreover, where an otherwise descriptive term is so broad as to encompass a universe of potential goods and services, as is the case here, such a mark is suggestive and not descriptive of the particular goods and services offered by an applicant. In re The House Store, Ltd., 221 U.S.P.Q. 92, 93 (T.T.A.B. 1983) (finding the mark THE HOUSE STORE suggestive when used in connection with furniture and housewares and overturning the Examiner’s decision refusing registration). Applicant’s services are “Providing online, non-downloadable software in the field of employee recruitment to enable candidates to find job openings and to enable employers to find suitable candidates for employment.” Initially, nothing in the word “scout” describes anything about online, non-downloadable software. Moreover, to the extent that “scout” means “to make a search” or “to find by making a search” as the Office Action alleges, that definition suggests nothing about what is found by the search. To the extent that the term “SCOUT” is alleged to subsume Applicant’s services because it describes “making a search,” it also subsumes so many other goods or services that employee recruiting constitutes a trivial fraction of them. This is exactly the kind of situation in which In re The House Store, Ltd. forbids a finding of mere descriptiveness. Indeed, it is not immediately clear how any of the definitions of “scout” could be adapted to identify Applicant’s particular services. Instead, a multi-stage reasoning process is required, and a finding of mere descriptiveness is inappropriate.

The registrability of Applicant’s Mark is further demonstrated by the existence on the Principal Register of many other marks including the word “scout”, several of which also relating to “finding” (or “searching for” or related actions) various targets. A search of the U.S. Patent and Trademark Office electronic records conducted on January 3, 2020, revealed that “SCOUT” has been registered 137 times on the Principal Register. Selected registration certificates are attached as Exhibit B and summarized here, with the relevant goods or services emphasized in bold:

Reg. No.	Mark	Software services (International Classes 042 or 009)
5,579,717	SCOUT (and design)	Providing online, non-downloadable software in the field of employee recruitment to enable candidates to find job openings and to enable employers to find suitable candidates for employment. (Owned by Applicant)
5,603,187	SCOUT	Providing communication technology, namely, providing search platforms and voice enabled search platforms that enable users to request and obtain information in the medical, health, hospital, dental, prescription drug, pharmaceutical, wellness, fitness, exercise, diet, nutrition, health insurance, health care plan and health saving account areas; Providing a website featuring technology that enables users to access, manage and process health, medical, hospital, pharmaceutical and prescription drug insurance applications, records, claims, benefits, accounts.
4,504,571	SCOUT	Providing temporary use of nondownloadable software for activating and managing voice recognition and voice controls; providing temporary use of nondownloadable software for use in the control of voice-controlled information; providing temporary use of nondownloadable software for use in enabling users to search for and find news, point-of-interest information and events by name, date/time, category, schedule, price, ratings, reviews and recommendations.
3,262,256	SCOUT	Electronic devices for locating underground or hidden pipes and lines.
3,299,371	SCOUT	Mapping.

For example, Reg. No. 5,579,717 shows a “SCOUT” (and design) mark owned by Applicant registered in connection with identical services. In addition, Reg. No. 5,603,187 for SCOUT relates to “[p]roviding communication technology, namely, providing search platforms and voice enabled search platforms…” Similarly, Reg. No. 4,504,571 relates to goods and services “providing temporary use of nondownloadable software for use in enabling users to search for and find news, point-of-interest information and events…”. In none of the cases shown above was the relationship between “scout” and search services enough to refuse registration of the mark on the basis of mere descriptiveness. Nor should the use of the word “scout” lead to a determination of mere descriptiveness in Applicant’s case.

Because imagination is required to determine the precise nature of Applicant’s services, and because the consumer must follow a multi-stage reasoning process to determine the nature of Applicant’s services, Applicant’s Mark is at most suggestive, as opposed to merely descriptive.

C. Competitors Do Not Need The Word SCOUT To Describe Competitive Services

In determining whether a mark is suggestive or merely descriptive, McCarthy suggests asking whether the suggestion made by the mark is so “remote and subtle” that it is not likely to be needed by competitive sellers to describe their services. McCarthy § 11.21[2] at 11-109. In the case of the SCOUT mark the answer is “yes”—competitors simply have no need to use the wording SCOUT to describe competitive services. For example, searches of the U.S. Patent and Trademark records conducted on January 3, 2020 revealed the following marks that were registered in connection with services that are in some way related to job seeking (registration certificates are attached as Exhibit C):

Registration No.	Mark	Services
4,259,232	RECRUITABLE	“[C]omputer application software for mobile phones, namely, software for helping recruiters find qualified candidates for jobs by searching candidate information” in International Class 009.
5,842,657	IDEAL HIRES	“Providing software as a service (SaaS) that enables users to post and search jobs and employment opportunities, to receive notices about applications and opportunities, to post and search resumes, and to apply for jobs, that enables employers to search for candidates who best meet their job vacancy criteria by searching and filtering resumes and applications, and that locates and posts job and employment opportunities from other web resources; …” in International Class 042.
4,909,632	RIGHTJOBNOW	“Computer software development in the field of mobile applications; Developing customized software in the field of allowing prospective job candidates to find and apply for jobs, and for use in connection with job candidate sourcing, recruiting, hiring, placement, and related staffing services for others…” in International Class 042.
5,919,018	SEEKOUT	“Software as a service (SAAS) services, namely, hosting software for use by others for use as a product for maintaining a searchable database of job candidates to provide employers a competitive edge in enabling them to recruit hard to find and diverse talent needed to achieve their goals” in International Class 042.
5,271,696	I AM RECRUIT (and design)	“Providing temporary use of on-line non-downloadable software for accessing an online multi-media platform to assist job seekers in their search for jobs by allowing job seekers to create and manage their profiles, to search for and apply for jobs, to record and upload media to an online multi-media platform, and to assist employers to receive applications for employment by searching candidate profiles and facilitating the transmission of job applications from interested candidates” in International Class 042.
5,237,481	UPWORK	“Employment recruiting, placement, staffing, and career networking services; providing an online searchable database featuring job postings, employment opportunities and resumes; providing online employment information; consulting services in the field of human resources and management of freelance and remote workers…” in International Class 042.
5,407,887	STAFF POND (and design)	“Providing a website featuring technology that enables users to recruit employees, find jobs, test for job fit, track job applications, list classified ads, create online resumes and CVs” in International Class 042.
5,925,073	ATTRACT ENGINE	“Computer services, namely, providing a search engine that utilizes machine learning to automate and optimize employment searches; providing technology, namely, a website featuring a search engine for obtaining job listings, resume postings, and other job search information to locate jobseekers for companies to attract and fill open roles by crowd sourcing” in International Class 042.
5,253,770	FIND YOUR CALLING	“Providing a website featuring resources, namely, non-downloadable software for use by students, graduates, and families in planning and preparing for future career and post-secondary education by using labor market information and proprietary analytical methods to help users determine careers of interest and related educational requirements and programs…” in International Class 042.
5,125,429	HIREWIRE	“Downloadable software for matching job-seekers with employers; mobile application software for matching job-seekers with employers; downloadable software for enabling job-seekers and employers to find each other, communicate, and perform pre-screening functions; mobile application software for enabling job-seekers and employers to find each other, communicate, and perform pre-screening functions…” in International Class 009.

Applicant’s Mark, no less than these marks, is not merely descriptive and therefore deserving of registration. Competitors simply do not need to use Applicant’s Mark to describe related or competitive services. The fact that the Examining Attorney’s search of the PTO records failed to identify any similar registered or pending marks further supports this conclusion.

D. Precedent Mandates That Doubts As To Applicant’s Mark’s Descriptiveness Should Be Resolved In Favor Of Applicant

It is well settled that where there is any doubt as to the descriptiveness of a mark, the doubt should be resolved in Applicant’s favor and the mark should be published for opposition. See In re Aid Labs. Inc., 221 U.S.P.Q. 1215 (TTAB 1983); McCarthy at §11:51 (“Because the line between merely descriptive and only suggestive terms is so ‘nebulous,’ the Trademark Board takes the position that doubt is resolved in favor of the applicant on the assumption that competitors have the opportunity to oppose the registration once published and to present evidence that is usually not present in ex parte examination.”) (citing several decisions, including In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972) and In re Conductive Systems, Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983)). Thus, if the response above has raised any doubts in the Examining Attorney’s mind, the rejection should be withdrawn.

III. NO CONFLICTING MARKS UNDER § 2(D)

Applicant thanks the Examiner for the conclusion that there are no conflicting marks under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), that would bar Applicant’s mark from registration.

IV. SUPPLEMENTAL REGISTER ADVISORY

Because Applicant’s Mark is registrable on the Principal Register, as established above, no further response to this advisory is required at this time.

V. CONCLUSION

For the foregoing reasons, Applicant respectfully submits that all issues raised in the Office Action have been addressed and overcome. Accordingly, Applicant requests that the pending application proceed to registration. The Examiner is invited to contact the undersigned attorney to discuss the application, particularly if a discussion might help to facilitate prosecution of the application.

EVIDENCE
Evidence in the nature of exhibits to response has been attached.
Original PDF file:
evi_207210163202-20200306175159514129_._Scout_Exhibits.pdf
Converted PDF file(s) ( 45 pages)
Evidence-1
Evidence-2
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Evidence-45

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Scout Exchange LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      501 Boylston Street
      Boston, Massachusetts 02116
      United States

Proposed: Scout Exchange LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      501 Boylston Street
      Boston, Massachusetts 02116
      United States
      Email Address: notices@goscoutgo.com

The owner's/holder's current attorney information: Joseph A. Capraro Jr.. Joseph A. Capraro Jr. of PROSKAUER ROSE LLP, is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is SCT-608.
      The phone number is 617-526-9600.
      The fax number is 617-526-9899.
      The email address is docketingpatentboston@proskauer.com

The owner's/holder's proposed attorney information: Joseph A. Capraro Jr.. Other appointed attorneys are S. James Boumil III and other attorneys associated with customer number 42532. Joseph A. Capraro Jr. of PROSKAUER ROSE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is SCT-608.
      The phone number is 617-526-9600.
      The fax number is 617-526-9899.
      The email address is docketingpatentboston@proskauer.com

Joseph A. Capraro Jr. 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.Correspondence Information (current):
      JOSEPH A. CAPRARO JR.
      PRIMARY EMAIL FOR CORRESPONDENCE: docketingpatentboston@proskauer.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jboumil@proskauer.com

The docket/reference number is SCT-608.
Correspondence Information (proposed):
      Joseph A. Capraro Jr.
      PRIMARY EMAIL FOR CORRESPONDENCE: docketingpatentboston@proskauer.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jboumil@proskauer.com

The docket/reference number is SCT-608.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /S. James Boumil III/     Date: 03/06/2020
Signatory's Name: Boumil III, Sylvester J.
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 617-526-9600

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:    JOSEPH A. CAPRARO JR.
   PROSKAUER ROSE LLP
   
   ONE INTERNATIONAL PLACE
   BOSTON, Massachusetts 02110
Mailing Address:    Joseph A. Capraro Jr.
   PROSKAUER ROSE LLP
   ONE INTERNATIONAL PLACE
   BOSTON, Massachusetts 02110
        
Serial Number: 88479494
Internet Transmission Date: Fri Mar 06 18:16:52 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200306181652
184080-88479494-710c26cde4249a26cf6335ff
f5fb4671cd795dcd1aba212139f4ff254c868a04
021-N/A-N/A-20200306175159514129