TEAS Response to Suspension Inquiry

PTO- 1822

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1822

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88818190 LOCK BOX(Standard Characters, see http://uspto.report/TM/88818190/mark.png) has been amended as follows:

OTHER REASON
United States Patent and Trademark Office Response to Office Action (Official Letter) U.S. Application Serial no. 88818190 MARK: LOCK BOX Applicant: Brian Sykes Disclaimer. No claim is made to the exclusive right to use "BOX" apart from the mark as shown. Status The Official Letter issued July 8, 2021 re-issued a suspension, and stated that the Section 2(e)(1) refusal in the Office Action dated May 21, 2020, ?will be made final once this application is removed from suspension, unless a new issue arises.? Applicant timely responded to that May 2020 Office Action, which had requested information, per TMEP ?814. The Official Letter of July 8, 2021 does not mention Applicant?s response to the Office Action or the information that Applicant provided. Response Applicant?s serial number 88818190 is suspended ?pending the outcome? of U.S. Application Serial No. 88803807 (the ?Memories? application). It is noted that ?Memories? application No. 88803807 is suspended pending the outcome of this Applicant?s serial number 88818190. See, attached suspension letter dated July 12, 2021 in U.S. Application Serial No. 88803807. In the Section 2(e)(1) refusal, from the May 2020 Office Action to which Applicant responded, the examiner concluded that ?the applied-for mark merely describes the applicant?s goods?. The authoritative statement of the law is that a mark ?is merely descriptive 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, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)) (emphasis added). The term lockbox ?immediately conveys? a box that can be secured with a padlock or a combination lock. It does not suggest or describe a box that has no padlock or combination lock that can make it secure and inaccessible. Accompanying the May 2020 Office Action was a web page dictionary definition for ?lockbox? that recites the requirement that the item have a lock or a way for it to be locked. On that web page, the ?lockbox? definition links to the word ?locks? and to its definition ?to make secure or inaccessible by? use of a lock, which is defined as a device ?operated by a key or a combination.? The food storage containers identified in Applicant?s serial number 88818190 have no mechanical or electronic lock, no key, no combination or keypad, no tumbler or rotating lock cylinders, no deadbolt, and no shackle or hasp to receive a lock. The box in the specimen has no lock. The compressible seal feature on the specimen product, and as explained int eh response to the May 2020 Office action, seals between the lid and the box. That seal is not a lock, and it does not "secure" or prevent access into the container, and it does not keep anyone from opening the container. As applied to these food storage containers the work lock is not descriptive of a keyed or combination lock. Hereinabove, the Applicant has disclaimed the work ?box? apart from its use in the mark. In the May 2020 Office Action, the examiner noted correctly that whether ?consumers could guess what the product [or service] is from consideration of the mark alone is not the test.? In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Again, that Office Action placed reliance on the dictionary definition, which requires that the item include a securable lock. The requirement of a keyed or combination lock cannot be excised from the mark as a whole. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1252 (Fed. Cir. 2012) ("Because a mark must be considered as a whole, the Board may not ?dissect? the mark into isolated elements.?). Hereinabove, the Applicant has disclaimed ?box.? Evidence about the impression and ?the possible significance that the term would have to the average purchaser of the goods? can be obtained ?from any competent source,? In re Bayer, 82 USPQ2d at 1831, quoting In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986), to include ?listings in dictionaries, trade journals, newspapers[,] and other publications.? Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 128 USPQ2d 1370, 1374 (Fed, Cir. 2018)(quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018)), and competent ?sources may include [w]ebsites, publications and use ?in labels, packages, or in advertising material directed to the goods.?? In re N.C. Lottery, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017) (quoting In re Abcor Dev., 200 USPQ 215, 218 (CCPA 1978)). Those sources, discussed below, all recite the requirement that a lockbox have a keyed or combination lock, or perhaps an electronic lock. Standard dictionaries, today, define a lockbox as not just a box with a lid, but one that has a lock or that can be locked to secure and make the contents inaccessible to anyone other than the one with the key or the combination for the lock. That common and accepted definition does not describe a food storage container, having no lock, but which is an openable container that uses a compressible sealing feature to keep the food or contents inside it fresh. Lockbox is a fairly new addition to dictionaries. The Webster?s Seventh New Collegiate Dictionary, originally published in 1963, does not include the word lockbox. (See attached frontpage and page 496). However, by the time of the Webster?s New Collegiate Dictionary, originally published in 1980, lockbox had been added, and there it is defined as ?a box (as a post-office box, strongbox, or safety-deposit box) that locks. (See attached frontpage and page 669). On that same page, the verb ?locks? is defined. The common and accepted meaning of lockbox, and one common to the purchasing public, according to the standard dictionaries requires that it ?locks,? that is, the box locks like a ?post-office box, strongbox, or safety-deposit box,? each of which lock using a key or a combination lock. That dictionary definition does not indicate or imply that the word ?merely describes? a food storage container that has no key lock or combination lock. An expanded definition of lockbox found on Wikipedia, begins with the requirement that it is a box ?with a built-in lock,? then lists examples consistent with the standard dictionary, which are indicated to be ?lockable.? (See, attached page accessed from Wikipedia). Wikipedia also has a definition for the Real-estate lock box (see attached), which is ?secured either with a manual key? or its equivalent. Next, advertising material directed to lockboxes, that is, materials that would be known to the relevant purchasing public indicate that a lockbox is a lockable, secure container that the owner can lock to prevent access by others, and that it locks using a key lock or a combination lock. Major U.S. retailers that obtain substantial business from consumers that use their online ordering services have great knowledge and experience of what products their customers expect to see when they enter a search request into these retailers? online catalogs. The results of such a search of retailer sites indicates that a lockable, securable box is that the word lockbox ?immediately conveys? to the average consumer. In re Bayer, supra. A search for ?lockbox? on the Walmart.com website yields listings for a variety of secure boxes, all having a combination lock or a padlock. (See attached printout of web search results from http://www.walmart.com/search?q=lock+box&typeahead=lock+box). Every one of the listings from the search includes a secure locking feature on the box. No results are food storage containers or container that have no lock on them or no way for the container to be securely locked. Consistent with that, a search for a ?lockbox? on the Target.com website produces many listings for lockable boxes that only open using a key or a combination lock. (See attached printout of web search results from http://www.target.com/s?searchTerm=lock+box). These retailers know their products and know their customers? product preferences, and these search results from those retailers? websites confirm that lockbox is NOT descriptive of a food storage container that cannot be locked using a key lock or a combination lock. Commercial information from major retailers in the U.S. that trade in the relevant products is a ?competent source? of evidence, In re Bayer, supra, that shows that the consuming public thinks a lockbox only as a securable, lockable box, and that to them, a lockbox not a food storage container and not a container that has no keyed or combination lock. These search results are evidence that the mark lockbox ?immediately conveys? to the average consumer, In re Bayer, supra, a securable, limited access box that has a lock or an equivalent mechanism. Applicant?s product has no keyed or combination lock. Retail listings for lockbox include the lockable containers such as for valuables, as well as the commonly-used, combination lockbox device that realtors or property managers place on door knobs to securely hold the keys to a property. While ?lockbox? may have an understood meaning with respect to goods in other fields (e.g., lockable, secure containers), the Examining Attorney did not provide evidence that Applicant?s mark ?Lock Box? has any descriptive meaning applicable to household and food storage containers with no key lock or combination lock on them. Usage of lockbox conforms with the accepted definition of a box that can be made secure or inaccessible by means of locks that require a key or combination. Typical usages of lockbox describe a locked box. A ?car salesman was fined $10 for failing to turn in his master key to the individual lock boxes on each car at the end of the day. Stevens v. Oval Off., LLC, 2016 WL 7480384, at *3 (E.D. Wis. Dec. 29, 2016). ?Allegedly, however, before the eviction was completed, someone acting on behalf of the Defendants placed a lock box on the door, preventing her from entering the residence.? Snell v. Emc Mortg. Corp., 2009 WL 3646605, at *1 (E.D. Mich. Oct. 30, 2009), and Jackson v. Calderon, 1994 WL 661061, at *2 (N.D. Cal. Nov. 14, 1994)(?one of these keys opened the padlock on the lock box?). ?Although certain other employees possessed keys to the lock box, Defendant determined that Plaintiff was at fault for the missing funds.? Cleveland v. S. Disposal Waste Connections, 2011 WL 13186546, at *3 (W.D. Tenn. Jan. 21, 2011), aff'd, 491 F. App'x 698 (6th Cir. 2012); ?A metal style lock box was also under the bed and inside the locked box were several boxes of ammunition.? Shell v. Ferry Cty., 2017 WL 1550232, at *3 (E.D. Wash. Apr. 28, 2017); ?No file cabinet, locker, cabinet, or lock box shall be secured on Department property unless a copy of the key or combination is maintained in a locked key safe or in the office of the Sheriff.? Huff v. Harness, 2018 WL 2434329, at *2 (E.D. Ark. May 30, 2018). In every instance of these usages of lockbox, the meaning is limited to a box that has a pad lock, or a combination lock. Another competent source of evidence of the accepted meaning of lockbox are published, issued patents that bear the title Lock Box. See, generally, WIPO Standard ST-15 (copy attached), ?Tittles to inventions convey ?a first impression of the main content of the invention,? and 37 CFR 1.72 (a) The title of the invention ... must be as short and specific as possible.? A search of patents issued by the U.S. Patent and Trademark Office, which are titled ?Lock Box? or ?Lockbox? yielded only boxes that are lockable, typically with a padlock or a combination lock. See, copies attached hereto of Lock Box titled U.S. Patents nos. USD-0265867, USP-7360380B, USD-0411949, USD-063277, USD-0693535, USD-0772522, USD-0899219, and USP-107944092B. CONCLUSION. With the disclaimer submitted herewith, the evidence attached hereto and the arguments that confirm a lock box is a ?lockable? box ?with a built-in lock,? so as to make the box securable or inaccessible to anyone other than the person with the key or combination to the lock on the box, deserve full consideration because the application is in form for allowance. Respectfully submitted, Charles L. Thomason Attorney for Applicant.   LIST OF EVIDENCE Merriam-Webster?s Seventh New Collegiate Dictionary, copyright 1963, frontpage and page 496. Merriam-Webster?s New Collegiate Dictionary, copyright 1980, frontpage and page 669. Pages accessed from Wikipedia defining lockbox and Real-estate lockbox. Search results for ?lockbox? on the Walmart.com website at http://www.walmart.com/search? q=lock+box&typeahead=lock+box Search results for ?lockbox? on the Target.com website at http://www.target.com/s?searchTerm=lock+box Title pages for Lock Box titled U.S. Patents nos. USD-0265867, USP-7360380B, USD-0411949, USD-063277, USD-0693535, USD-0772522, USD-0899219, and USP-107944092B.
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OT_26036010610068a18a5ce1 361742de0-081447136_._Nat uresMark_Response-Susp_07 _24_2021.pdf
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ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use BOX apart from the mark as shown.
Correspondence Information (current):
      Charles L. Thomason
      PRIMARY EMAIL FOR CORRESPONDENCE: thomason@spatlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): THOMASON.20@BUCKEYEMAIL.OSU.EDU
Correspondence Information (proposed):
      Charles L. Thomason
      PRIMARY EMAIL FOR CORRESPONDENCE: thomason@spatlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): THOMASON.20@BUCKEYEMAIL.OSU.EDU

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

Response Suspension Inquiry Signature
Signature: /Charles L. Thomason/     Date: 07/27/2021
Signatory's Name: Charles L. Thomason
Signatory's Position: Attorney of Record, member KY bar
Signature method: Signed directly within the form

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:    Charles L. Thomason
   
   
   14 RIDING RIDGE ROAD
   PROSPECT, Kentucky
Mailing Address:    Charles L. Thomason
   
   14 RIDING RIDGE ROAD
   PROSPECT, Kentucky 40059
        
Serial Number: 88818190
Internet Transmission Date: Tue Jul 27 08:22:34 ET 2021
TEAS Stamp: USPTO/RSI-XXXX:XXXX:XXXX:XXX:XXXX:XXXX:X
XXX:XXXX-20210727082234673402-88818190-7
80ddb7588ff61234cac611d31d561e714b9ffcaa
5dc6d16cab3b46a3a664cca-N/A-N/A-20210727
081447136857