Office Action Response

A trademark application goes through several stages of examination before the mark is registered with the United States Patent and Trademark Office (U.S. PTO). After the mark is filed, the application is examined by a U.S. PTO trademark examiner who will contact the applicant or the applicant’s attorney if there are any discrepancies in the application. Minor corrections/editions may be made by an “examiner’s amendment” over the phone with the examiner as the trademark office encourages this form of communication. If the examiner does not allow the mark on statutory grounds, the examiner will issue an office action with an explanation for the rejection of the mark. The applicant is permitted to respond to the examiner with arguments and evidence in favor of registration within 6 months of the mailing date of the office action. If a response is not filed by the applicant within 6 months of the mailing date of the office action, the application goes abandoned. The abandoned application can be revived by filing a petition for revival with a $100 petition fee within 2 months of the notice of abandonment.

If the examiner is persuaded by the applicant’s response, the examiner may allow the mark. In the response to a rejection, the applicant must ensure that all the grounds of refusal are properly addressed. This chapter will explain the most common rejections – a likelihood of confusion refusal, and a rejection based on descriptiveness with appropriate response arguments.

A common ground of rejection of a trademark application is when the applied mark resembles a registered or pending mark so as to cause confusion or mistake when used in connection with goods or services that have been identified in the application. The test is not whether the goods or services are actually confused but whether confusion is likely as to the source of the goods. A likelihood of confusion rejection usually occurs in the event where a registered mark is similar or confusingly similar to the goods or services of the applicant’s. 15 U.S.C. §1052 states:

“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive….”

For a likelihood of confusion refusal, the applicant must highlight the differences between the applicant’s mark from that of the registrant’s in the response, by establishing that the marks are different in visual appearance, sound and meaning. The applicant must argue that the marks are not likely to be confused by an ordinary consumer as to the origin or source of the goods or services. If possible, the applicant must also provide the examiner with examples and evidence of the same. Sample responses to ‘likelihood of confusion’ refusals can be found at the end of this chapter.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services

The above definition lists the various categories under which a mark may be found descriptive of the product or service and accordingly rejected. A useful argument against such rejection is one that explains that the mark is merely suggestive as opposed to being descriptive. Under trademark law, a mark that is considered suggestive may be registered with the U.S. PTO. However, the line between descriptive and suggestive marks is subjective and if the applicant can prove that the mark is only suggestive and not descriptive of the goods or service, the examiner may allow the mark. For example, the mark “POLY PITCHER” was considered only suggestive and not descriptive of a polyethylene pitcher. A sample response to a rejection based on a descriptive mark is found at the end of this chapter.

Although descriptive marks are not allowed to be registered on the Principal Register, they may registered on the Supplemental Register for a period of five years until the applicant can show that the mark has acquired a secondary meaning. If after the period of five years, the general public can associate the mark with the applicant’s goods or services, the mark may be registered on the Principal Register and receive the benefits of a mark registered on the Principal Register. However, the mark will receive the filing date of the date of filing on the Principal Register. The advantage of registering the mark on the Supplemental Register is that the mark will receive protection for the period for which it is registered on the Supplemental Register and no other trademark owner will be permitted to register the same or a similar mark for the same product with the U.S. PTO on the ground of likelihood of confusion.

It is advisable that an attorney be retained to draft an appropriate response to a trademark rejection. The following are sample responses that have been filed with the U.S.PTO in response to office actions.

Applicant filed a trademark application for the mark “EDIxTract” for “computer software that provides real-time, integrated business management intelligence about product supply, demand and usage by combining information from various databases and presenting it in an easy-to-understand user interface; Electronic software updates, namely, downloadable computer software and associated data files for updating computer software in the fields of converting data from various companies into standardized formats for uniformity as per certain standards in the industry, provided via computer and communication networks; Downloadable software for electronic data interchange compliance and capability; Computer software platforms for electronic data interchange compliance and capability”.

The trademark office issued an office action refusing registration of the mark due to a likelihood of confusion with the registered mark “XTRACT” for “software for analysis of customer behavior and social networks; software for automated customer analysis, risk management, fraud detection, analytical customer relationship management and personalization”

The following response to the office action was filed with the U.S. PTO:

In response to the above refusal, Applicant respectfully submits that the proposed mark is not confusingly similar to the registered mark as the criterion to establish a cause of likelihood of confusion has not been met in this case. The examiner states that “in a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression” And that “similarity in any one of these elements may be sufficient to find a likelihood of confusion”. Using this analysis, Applicant will respectfully show below that the proposed mark has no similarity in sound, appearance, meaning or commercial impression with the registered mark.

Similarity in Sound: Applicant respectfully disagrees with the assumption that the marks sound alike because both include the identical term “xtract”. Applicant draws the examiner’s attention to the marks PURE BREW and CLEAR BREW in the case of Sunbeam Corp. v. Green Bay Tissue Mills, Inc. 199 U.S.P.Q 695, 697-98 (T.T.A.B. 1978), wherein no conflict was found between the two marks. Applicant also refers to the case of Roux Labs., Inc. v. Kaler, (214 U.S.P.Q. 134, 138 (T.T.A.B. 1982) wherein it was held that there was no conflict between the marks, SUPEROXIDE and HYPER-OXIDE. Therefore, the fact that both marks include the term “xtract” is not sufficient ground to establish likelihood of confusion between the marks. Further, as stated in the case of First Int’l Servs Corp. v. Chuckles Inc. (5 U.S.P.Q. 2d 1628, 1632 T.T.A.B 1988) “sound is less important if the prospective purchases are likely to encounter the marks visually rather than aurally”. In the current application, the proposed mark is advertised primarily on the Applicant’s website and hence the only possibility for a prospective purchaser to encounter the mark is visually. Therefore, similarity in sound plays at best a minimal role in determining likelihood of confusion in this case. Similarity in appearance and overall impression of the mark will need to be established in order to find a likelihood of confusion ruling.

Similarity in Appearance: Applicant respectfully submits that the proposed mark and the registered mark vary widely in their appearance as both marks contain design elements that are far from similar to each other. Applicant respectfully disagrees with the conclusion drawn in this case and disputes the notion that if placed side by side, the marks are similar in appearance. Applicant submits that the proposed mark includes other elements that differentiate the mark from the registered mark and the term “EDI” is not the sole distinction. In addition to the “EDI” term, applicant submits that a list of additional differentiating elements include, the design that accompanies the registered mark, the colors associated with the proposed mark, and the fonts chosen for the marks. Thus, the examiner’s reference to the citation that “..the mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion” is not appropriate in this case. Furthermore, applicant draws the attention of the examiner to the case of Packman v. Chi Tribune, (267 F3d. 628 60 U.S.P.Q 2d 1245, 1255) where it was held that “although the words on the parties’ products are the same, the words’ appearances do not resemble each other and are not likely to cause confusion. Different packaging, coloring and labeling can be significant factors”. The office action further states that the design element in the registrant’s mark does not “obviate the likelihood of confusion” as the “word portion is accorded greater weight in determining likelihood of confusion”. Applicant respectfully reminds the examiner that the proposed mark is a stylized letter mark. Such marks have both visual and oral facets and with such marks there are “no general rules as to whether letters or design will dominate”. (In re Electrolyte Labs, Inc., 929 F2d 645, 647, 16 U.S.P.Q. 2d 1239, 1240). For the reasons given above, applicant respectfully submits that the marks cannot be held to be similar in appearance.

Similarity in Meaning or Connotation: Applicant submits that the purchasing public is not likely to confuse the marks as they have different meanings and connotation. The obvious implication of the mark EDIxTract to the general public is that the product is concerned with EDI or Electronic Data Interchange. However, it is not likely that the general public will relate Electronic Data Interchange to the registered mark XTRACT. Therefore, there will be no association between the two marks in the minds of general public. In the case of Floss Aid Corp. v. John O Butler Co., (205, U.S.P.Q. 274, 285) it was held that the issue is whether the consumers are likely to make the mental effort to reach the nexus. Applicant submits that it is not likely that the average purchaser will sense the significance or make the mental effort sufficient to reach the nexus between the two marks and the corresponding products associated with the marks.

Similarity in Overall Impression: The office action states that the test is “whether the marks will create the same overall impression”. Applicant submits that considering all the circumstances including the marketing channels and identity of the prospective purchasers, the proposed mark cannot be confused with the registered mark as the proposed mark is marketed in different channels from that of the registered mark, and also the purchasers of the products are not the same. Based on the class description of the registered mark, the registrant provides its goods in the areas of advertising and social networking by providing customer profiles with behavioral and demographic details to mobile handset companies, telecom operators, etc., that require background information on their current and potential customers. On the other hand, applicant provides software that creates business documents such as purchase orders, invoices, shipping bills, fax, emails, etc., in standard formats to be used by companies that have such requirements. The office action further states that ”the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source”. Applicant submits that the purchasing public is not likely to be confused that the marks come from the same source as the registrant’s product is marketed to those purchasers in the social networking field that require customer profiles and not standard formats of business documents as provided by the applicant. The products of both marks are different from each other and therefore should not be found to be similar enough to meet the standard of likelihood of confusion. The applicant further points out that in Shen Manufacturing Co. v. Ritz Hotel Ltd. (393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) it was held that “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely”

Applicant respectfully submits that based on the arguments advanced and cases cited, the proposed mark is not confusingly similar to the registered mark, and the goods of the applicant and registrant are not related. Furthermore, the distribution of goods of both the applicant and registrant will not travel through the same channels of trade, or target the same customers. Applicant, therefore, respectfully submits that the criterion to establish a cause of likelihood of confusion has not been met and accordingly solicits allowance of the mark “EDIxTract”.

II. Applicant filed a trademark application for the mark “INNLOCK” for “biometric locks”. The trademark office issued an office action refusing registration of the mark due to a likelihood of confusion with the registered mark “IN-LOCK” for “metal door locks for trailers, containers or enclosures for use in the transportation industry” The following response to the office action was filed with the U.S. PTO:

Step 8: If the mark is a stylized or a design mark, the applicant must describe the mark and list the colors of the mark, if the mark is a color mark. The applicant may also choose to file a disclaimer, a translation, etc.

The Office Action states: “Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2259017 IN-LOCK.”

In response to the above refusal, Applicant submits that the proposed mark will not create a likelihood of confusion with the registered mark U.S. Registration No. 2259017 as the proposed mark has been filed under a class of goods different from that of the registered mark. More specifically, the proposed mark has been filed under class IC 009 whereas the registered mark has been filed under class IC 006. The significance of different international classes is that the description of goods under these international classes are different and not related. The Applicant brings to the notice of the examiner that the class description for the registered mark includes ‘metal locks for trailers, containers and enclosures in the transportation industry’. The Applicant submits that applicant’s mark is limited to the identification of an electronic lock created with electronic/software technology such as biometrics, motion sensors, proximity sensors, RFID systems, etc. which is clearly distinguishable from the metal lock of U.S. Registration No. 2259017 IN-L0CK.

The office action states that ”the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source”. The Applicant agrees that there is a phonetic similarity in the marks but respectfully disagrees with the assumption that this similarity would lead the public to believe that the goods they identify come from the same source. Based on the class description of the registered mark, the Registrant markets its goods mainly in the transportation industry whereas the Applicant markets its goods to provide electronic/software based security. Examples would include electronic/software security of systems, rooms or buildings that need to protect confidential information and require controlled access into these buildings and to this information. The Applicant respectfully submits that its customer base is therefore not likely to confuse this advanced electronic security system with that of the registered mark with goods classified as ‘metal locks used for trailers, containers and enclosures in the transportation industry’.

To substantiate further, the Applicant draws the Examiner’s attention to the case of Octocom Systems Inc. v. Houston Computer Services Inc. , which held that “because these goods are identical and there are no limitations on trade channels or purchasers, the goods must be considered to move in the same channels of trade and be directed to the same purchasers.” The applicant herein emphasizes the fact that the first, the goods are not identical, and second that the transportation trade channel of the Registrants products are clearly distinguishable from the electronic/software channel of the Applicant. Applicant submits that the goods of the Applicant cannot be considered to move in the same channels of trade as that of the Registrant.

The Applicant further submits that both classes 009 and 006 have been created by the U.S. PTO because they list separate and unrelated classes of goods. The purpose of the different classes is to allow potential trademark applicants to choose the class best suited to the description of their goods and services. The fact that the Applicant has chosen to register its mark under Class 009 and not Class 006 is probative of the fact that the Applicant’s goods are very different and unrelated from that of the Registrant’s goods.

Lastly, while the Applicant accepts that generally third party registrations may have some probative value to suggest relatedness of goods and services, the Applicant respectfully disagrees that in this specific case, the third party registrations attached by the Examiner allow probative value to the extent to suggest that “the goods and/or services listed therein, namely smart cards, keyless entry systems, and electronic chip cards and metal locks, are of a kind that may emanate from a single source.”

The Applicant notes that the Examiner is in fact suggesting that the goods of the Registrant and Applicant are related even though they are listed under different classes by submitting third party registrations listing both classes of goods. The Applicant recognizes that these goods would be related only if the Registrant who has prior rights expands their business to sell goods listed under the proposed mark. In response to this the Applicant relies on the opinion of the TTAB in the case of CNL Tampa Int’l Hotel Partnership, LP v. Palazzolo , wherein the Board refused to draw inference from third-party registrations that these goods and services are “legally related products” requiring a finding of likelihood of confusion based on the theory that if the prior registered mark had rights to expand its goods and services to include goods and services not listed at the time the mark was registered, then the prior registered mark would have rights to any and all goods and services in any way related to the goods and services listed at the time of registration. In such a situation, “if third-party registrations alone were sufficient to prove relatedness of goods and services, then virtually all consumer products and services would be related.” The Applicant therefore respectfully submits that reliance must not be placed on these third party submissions to refuse registration of the mark as the submission of the third party registrations will not allow the assumption that the description of goods of the proposed mark and the description of goods of the Registrant’s mark will emanate from a single source.

The Applicant further points out that in the opinion in the case of Shen Manufacturing Co. v. Ritz Hotel Ltd. , it was held that “if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely.’

The Applicant submits that based on the arguments advanced and cases cited, the proposed mark although phonetically similar to that of the registered mark, cannot be considered to be confusingly similar to the registered mark and the goods of the Applicant and Registrant cannot be considered related. Furthermore, the distribution of goods of both the Applicant and Registrant will not travel through the same channels of trade but will target different sectors of customers. The Applicant therefore, respectfully submits that the criterion to establish a cause of likelihood of confusion has not been met and hence solicits allowance of the mark “INNLOCK”.

1. Applicant filed a trademark application for the mark “SAFE-T-STEP” for “steps for attachment to land vehicles”. The trademark office issued an office action refusing registration of the mark on the ground that the mark is descriptive of the product. The following response to the office action was filed with the U.S. PTO:

The Office Action states: “The examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of the services.”

In response to the above refusal, the Applicant submits that the term “SAFE-T-STEP” is not descriptive of the identified services, but merely suggestive. SAFE-T-STEP is merely suggestive in that the goods identified are not descriptive of “steps attached to vehicles which are designed to prevent injury” as pointed out by the examiner, but instead requires the general public to use thought, imagination and perception to reach the conclusion as to the nature of the goods.

The Applicant substantiates this by drawing the examiner’s attention to the case of Keasbey v. Brooklyn Chemical Works, 1894, 142 N.Y. 467, 37 N.E. 476, 478, where it was explained that “unless a word gives some reasonably accurate – some tolerably distinct knowledge – as to what the product is made of, it is not descriptive within the meaning of trademark terminology”. Applicant respectfully submits that the word SAFE-T-STEP could have several other connotations or implications apart from the goods identified in the application. For example, Payless Shoes, a leading footwear retailer publicly advertises its line of “Safe T Step” shoes (please refer to advertisement, attached). The ‘Safe T Step’ line of shoes is a registered mark (reg. no: 2371524). This negates the assumption that the Applicant’s mark is purely descriptive of only the Applicant’s goods. Another example is that the terminology “T-Step” is widely known as an aerobics move and it is possible that Safe-T-Step could be presumed by the section of public that frequently exercises, to be a special safe form of aerobics exercise. Applicant respectfully reminds the examiner that the distinction as to what amounts to a descriptive and suggestive mark is purely subjective and the question to be considered is what significance does this term convey for the purchasing public.

Applicant clarifies that by its design, structure, and visual “look”, the product is very much a suspended “ladder”, as opposed to a “step” in general public terms. A survey conducted by the Applicant revealed that the general public identified the term “step” mainly with putting one foot in front of another. The second most popular response was the description of steel, wood, concrete or earthen tiers found between floors or at the entrance to a building. However, when the same group of people was asked to describe the term “ladder”, the response was unanimous in describing a device used for ascending or descending from one height to another. In addition, Applicant performed a Google search of the term “ladder” and approximately half of the first few dozen of the 51,600,000 pages returned referred to a climbing device. When the term “step” was searched, only 1 page out of the first 100 returned from a total of 615,000,000 pages, referenced any type of access, ascent or descent device. Applicant agrees that if the mark was named “Safe-T-Ladder”, it could be deemed as merely descriptive of the identified goods but the fact that the mark ‘Safe-T-Step’ was preferred instead should establish that the mark is only suggestive of the identified goods.

Applicant further relies on the case of Blisscraft of Hollywood v. United Plastics Co., 294 F.2d. 694 (2d. Cir. 1961) to corroborate this argument, where the Appeal Court reversed the lower court’s decision that the mark “POLY PITCHER” was descriptive of a polyethylene pitcher and held that the mark was only suggestive. This decision was maintained even when the word “poly” was understood in trade and used in trade magazines as an abbreviation for polyethylene. Applicant indicates the mark ‘Safe-T-Ruler’, registration number 2706391 and 1969011, where the goods identified were ”drafting and drawing instruments, namely rulers” and the mark was registered. Further to the examiner’s suggestion that “Safe-T” is the phonetic equivalent of “safety” AND as the product is actually a ruler, this mark should not have been registered for it was descriptive of the identified goods but nevertheless has been so registered.

Applicant respectfully draws the examiner’s attention to more examples of registered marks that could be construed to describe its identified goods. The marks E-Z Clip, registration number 2727363 could be said to be descriptive of identified goods ”Clips for fastening decorations and ornaments to Christmas trees’. E-Z” is the phonetic equivalent of “easy” and the identified goods refer to “clip(s)”. Although this mark is descriptive of the identified goods, it has been registered. The mark ‘E-Z Spout’ registration number 2838427 could also be said to be descriptive of identified goods, ‘Plastic spout fitted into an opening in a can to pour out the contents of the can’. Again “E-Z” is the phonetic equivalent of “easy” AND the identified goods refer to a spout. Again, although this mark is descriptive of the identified goods, it has been registered.

The fact that the Applicant has advertised the mark SAFE-T-STEP in connection with steps attached to vehicles does not necessarily allow the assumption that the mark is descriptive of the identified goods. In Blisscraft of Hollywood v. United Plastics Co., 294 F.2d. 694 (2d. Cir. 1961), it was widely advertised by the Applicant that “Poly” referred to polyethylene. However, the Court held that there was no evidence to support the public’s understanding of the terminology as polyethylene. Likewise, Applicant submits that there is no concrete evidence to establish that the general public understands or identifies the term SAFE-T-STEP with relation to the identified goods. On the contrary, there is ample evidence to show that the public, in all probability, will understand something completely different from that of the identified goods.

The critical legal distinction here is that although the mark SAFE-T-STEP may suggest aspects of the goods identified, it does not describe the product itself and hence it would be incorrect to generally interpret “SAFE-T-STEP” as a descriptive term for the Applicant’s class of goods. A designation having a suggestive connotation may nevertheless be a valid trademark as was held in Douglas Laboratories Corp. v. Copper Tan, Inc., 2 Cir., 1954, 210 F.2d 453, certiorari denied 347 U.S. 968, 74 S.Ct. 779, 98 L.Ed. 1109.

Applicant respectfully submits that based on the arguments advanced and cases cited, the mark is suggestive but not merely descriptive of the identified goods. The Applicant therefore, respectfully submits that the criterion to establish a descriptive finding has not been met and hence solicits allowance of the mark “SAFE-T-STEP”.

Applicant filed a trademark application for the mark “Common Control Framework” for “computer software for collecting and analyzing data identify, assess and manage risks, manage network devices, enforce policies, deploy checks and controls, assess vulnerabilities, manage compliance, all in the area of enterprise information technology; computer software for management and administration of regulatory, security, audit, legal, and corporate compliance requirements; computer software to automate, control, improve, manage and administer computer security and compliance; computer software to manage configuration of computers, software, and network devices” The trademark office issued an office action refusing registration of the mark on the ground that the mark is descriptive of the product. The following response to the office action was filed with the U.S. PTO:

The Office Action states: “Registration was refused on the Principal Register because the proposed mark describes the goods”

In response to the above refusal, Applicant requests that the mark be transferred to the Supplemental Register and submits a substitute specimen showing the mark in use in commerce for each class of goods specified in the amendment to allege use.

Applicant further submits the following statement, “The substitute specimen was in use in commerce prior to the filing of the amendment to allege use.”

IV. Another way to counteract a descriptive refusal is if the applicant can prove that the mark has been in continuous commercial use for five years or more. The following response is such an example.

APPLICATION OF     :     _______________
MARK                         :     _______________
SERIAL NO:               :     _______________
FILING DATE            :      _______________
EXAMINER                :        ______________
ATTY DOCKET NO    :   _________________
Commissioner of Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

This is in response to an Office Action dated August 25, 2006 for the above-captioned application. The Office Action set a statutory period for response that expires on Februry 25, 2006.

The Examiner has refused registration based on Trademark Act No. 2(e)(1) refusing registration of the mark because the proposed mark “merely describes a function of the applicant’s goods”.

Applicant herby wishes to change the basis for filing the application from 2(e)(1) to 2(f). Applicant continuously used the mark to identify the goods set forth in the application in excess of five(5) years as its date of first use set forth in the application itself is at least as early as June 21, 2001. Accordingly, it is believed that Applicant’s mark has acquired distinctiveness due to Applicant’s continuous use of the mark since at least as early as the date set forth in the application.

It is believed that this fully responds to the issues raised by the Examiner and it is requested that the Examiner permit the case to pass to publication. A self-addressed, postage prepaid postcard is also enclosed so that the PTO can acknowledge receipt of this communication.