To the Commissioner for Trademarks:

RESPONSE TO OFFICE ACTION

            COMES NOW the Applicant ASIF (hereinafter “Applicant”), by counsel Matthew H. Swyers, Esq. of The Trademark Company, PLLC, and submits its response to the Office Action stating as follows:

Refusal under Section 2(e)(1) of the Trademark Act of 1946

            The Examining Attorney has refused registration based upon a finding that the mark is merely descriptive of the Applicant’s services.  Insofar as Applicant’s proposed mark is not merely descriptive of the services identified in the application to register the instant mark Applicant respectfully submits that there is no basis to maintain the instant refusal and that registration of the Applicant’s mark is appropriate.

Matter that "merely describes" the goods or services on or in connection with which it is used is not registrable on the Principal Register. TMEP § 1209.  As noted in In re Abcor Development Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978):

The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

To be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates.  TMEP § 1209.01(b).  A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing).

The determination of whether or not a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. TMEP § 1209.01(b)(emphasis added). 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. Id. See also In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. 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).

It is not necessary that a term describe all of the purposes, functions, characteristics or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d1370, 1371 (Fed. Cir. 2004) ("A mark may be merely descriptive even if it does not describe the 'full scope and extent' of the applicant's goods or services," citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010.

To be characterized as “descriptive,” a mark must immediately convey knowledge of the ingredients, qualities or characteristics of the goods or services. In re Quik-Print Copy Shops Inc., 616 F.2d 523, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980) (emphasis added). In the context of the Lanham Act, “merely” descriptive means “only” descriptive. Id. at n. 7.  Moreover, the mark must give some reasonably accurate or tolerably distinct knowledge of the essence of the service. If the information conveyed by the mark is indirect or vague, the mark is being used in a suggestive rather than a descriptive manner. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §11:19 ( Ed. 2000); The Money Store v. Harris Corp. Finance, Inc. 216 U.S.P.Q. 11, 18 ( Cir. 1982) (“‘THE MONEY STORE’ conveys the idea of a commercial establishment whose service involves supplying money. The term does not, however, necessarily convey ‘the essence of the business, money lending.... Some imagination and perception are therefore required to identify the precise nature of the services . . . .“); In re Ralston Purina Company, 191 U.S.P.Q. 237, 238 (T.T.A.B. 1976) (The term SUPER is not used to describe any real or specific item or characteristic or quality, but merely to connote a vague desirable characteristic or quality and therefore it need not be disclaimed from RALSTON SUPER SLUSH).

In determining whether a particular mark is merely descriptive of a product, a reviewing court must consider the mark in its entirety, with a view toward “what the purchasing public would think when confronted with the mark as a whole.” In re Hutchinson Technology Inc. 852 F,2d 552, 552-54 (Fed. Cir. 1988). To the extent that there may be doubt as to whether applicant’s mark is merely descriptive or suggestive of its goods, it is commonly accepted practice to resolve any doubt in the applicant’s favor and publish the mark for opposition. In re Morton-Norwich Products, Inc. 209 USPQ 791 (TTAB 1981); In re Gourmet Bakers Inc., 173 USPQ 565 (TTAB 1972).

Applicant respectfully submits that the instant mark is suggestive of the Applicant’s services and not merely descriptive as contended by the examining attorney.

If a consumer has to exercise “mature thought or follow a multi-stage reasoning process” to determine the characteristics of a product or service, then the mark is suggestive, not descriptive. In re Tennis in the Round, Inc. 199 U.S.P.Q. 496, 498 (TTAB 1978) (“This association of applicant’s mark with the phrase ‘theater-in-the-round’ creates an incongruity...,” thus TENNIS IN THE ROUND is not merely descriptive of tennis facilities.). See also, Blisscraft of Hollywood v. United Plastics Co. 294 F.2d. 694, 131 U.S.P.Q. 55 (2d. Cir. 1961) (POLY PITCHER not merely descriptive of polyethylene pitchers; suggestive of Molly Pitcher of Revolutionary time); In re Colonial Stores, Inc. 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A. 1968) (SUGAR & SPICE not merely descriptive of bakery products; suggestive of nursery rhyme); Douglas Laboratories Corp. v. Copper Tan, Inc. 210 F.2d 453, 100 U.S.P.Q. 237 (2d Cir. 1954), cert. denied 347 U.S. 968, 101 U.S.P.Q. 505 (1954) (finding COPPERTONE for sun tan oil suggestive, not descriptive); In re Realistic Co. 440 F.2d 1393, 169 U.S.P.Q. 610 (C.C.P.A. 1971) (finding CURV for permanent wave solution suggestive, not descriptive); and, Colgate-Palmolive Co. v. House for Men, Inc. 143 U.S.P.Q. 159 (TTAB 1964) (findingRAP1D- SHAVE for shaving cream suggestive, not descriptive).

In Equine Technologies Inc. v. Equitechnology Inc. 68 F.3d 542 (1st Cir. 1995), the court was required to determine whether the mark EQUINE TECHNOLOGIES was descriptive or suggestive when used in connection with high-tech hoof pads for horses. The court cited authorities indicating that the hallmark of the descriptive term is a specific identification of the marked good. Id. at 544. In holding the mark EQUINE TECHNOLOGIES suggestive rather than descriptive, the court noted that while there is no dispute that the term “equine” is descriptive of horses, the question is whether the mark, in its entirety, is merely descriptive of the plaintiff’s product — hoof pads for horses. Id. at 545. In this case, the court found that the mark itself does not convey information about the plaintiff’s products or its intended consumers. Rather, it requires imagination to connect the term “Equine Technologies” to hoof care products in general, and to the plaintiff’s product in particular.

In Ex Parte Club Aluminum Products Co. 105 USPQ 44 (Commissioner 1955), the mark COOK-N-LOOK was held registerable for transparent glass covers for cooking utensils. The mark was somewhat suggestive of a property the goods might have, but like Applicant’s mark, did not describe the goods per se:

The mark is a compound word mark which describes what one who uses the covers can do, i.e. look into the utensil to see the cooking process, but this does not make the mark descriptive of the covers. The necessity for analysis removes it form the category of mere descriptiveness.

Id.

In Independent Nail & Packing Co. v. Stronghold Screw Products, Inc. 205 F.2d 921, 925 ( Cir. 1953), cert. denied 346 U.S. 491 (1953), the court held that STRONGHOLD as applied to ribbed nails was not descriptive, and stated that:

Although the world ‘stronghold’ is suggestive of one of the attributes of plaintiff’s nail with the annular thread, it is not descriptive of a nail, let alone that type of nail. A person unaware of the particular product of the manufacturer, upon seeing or hearing the name ‘stronghold’ would find it virtually impossible to identify the product to which it might have been applied.

Id.

In Worthington Foods, Inc. v. Kellogg Co. 732 F. Supp. 1417, 1435 (S.D. Ohio 1990), the court found that a multi-stage reasoning process was necessary before a consumer could understand the message conveyed by the mark HEARTWISE, that is, food which is healthful for the heart. The court also noted that assuming HEARTWISE meant “wise for one’s heart,” it might refer to a large number of goods or services such as running shoes, a treadmill, a calorie counter, or an Ann Landers newspaper column. The court held that BEARTWISE was a suggestive rather than descriptive mark as the consumer could not directly cull a message concerning the healthful characteristics of the goods simply from looking at the mark.

A brief review of other suggestive marks helps clarify this dichotomy:

(1) SUGAR & SPICE for use on bakery products held suggestive not descriptive. In re Colonial Stores, Inc. 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968).

(2) 100 YEAR NITE-LITE for light with life expectancy of 500 years held suggestive not descriptive. Donsky v. Bandwagon, Inc. 193 USPQ 336 (D. Mass. 1976).

(3) TENNIS IN THE ROUND held not descriptive of tennis facilities. In re Tennis in the Round, Inc. 199 USPQ 496 (TTAB 1978).

(4) RAILROAD SALVAGE for sale of goods from bankruptcy liquidations and discontinued goods held suggestive. Railroad Salvage of Conn., Inc. v. Railroad Salvage, Inc. 561 F.Supp. 1014 (D.R.I. 1983).

(5) UNDERNEATH IT ALL for undergarment products held suggestive in Maidenform, Inc. v. Munsingwear, Inc. 195 USPQ 297 (S.D.N.Y. 1977).

(6) CITIBANK for urban banking services held suggestive in Citibank, N.A. v. Citibanc Group, Inc. 724 F.2d 1540 (11th Cir. 1984).

(7) CHARRED KEG for bourbon whiskey held suggestive, even though bourbon is an American-type whiskey that is made in part by aging carried out in new charred oaken containers. In re Majestic Distilling Co., Inc. 164 USPQ 386 (CCPA 1970).

(8) LONGTONG for barbecue tongs held suggestive in Ex parte Nixdorff Krein Mfg Co., 115 USPQ 362 (Comm. Pat. 1957).

(9) BRAKLEEN for a brake parts cleaner was suggestive and not descriptive in C.J. Webb, Inc. 182 USPQ 63 (TTAB 1974).

(10) DRI-FOOT was held only suggestive of foot deodorant in In re Pennwalt Corp. 173 USPQ 317 (TTAB 1972).

(11) CHEW ‘N CLEAN was held not to be descriptive for a dentrifice in In re Colgate-Palmolive Company 160 USPQ 733 (CCPA 1969).

(12) COPPERTONE was found not descriptive of a suntan preparation in Douglas Lab Corp. v. Copper Tan, Inc. 210 F.2d 453, 100 USPQ 237 (2d Cir. 1954), cert denied 347 U.S. 968 (1954).

            In the present case, the “mental link” between the mark .BANK and Applicant’s services as recited in the application is neither immediate nor instantaneous.

 The Trademark Trial and Appeal Board has adopted a three-part test to help determine whether a mark is descriptive or suggestive: (1) the degree of imagination necessary to understand the product; (2) a competitor’s need to use the same terms; and (3) competitors’ current use of the same or similar terms. See No Nonsense Fashions, Inc. v. Consolidated Food Corp., 226 U.S.P.Q. 502 (TTAB 1985).  

Under the degree of imagination test, the more imagination that is required by a consumer to get some direct description of the product or service from the mark, the more likely the term is suggestive and not merely descriptive. See Railroad Salvage of Connecticut, Inc. v. Railroad Salvage, Inc., 561 Fed. 1014 (D.C.R.I. 1983).  Since there is no instantaneous connection as to the nature of the services provided by the Applicant, it is far more likely that the mark is suggestive than descriptive.  See Stix Products, Inc. v United Merchants and Manufacturers, Inc., 295 Fed. Supp. 479 (S.D.N.Y. 1968).

Applicant uses the mark .BANK in connection with domain name registration services.  Does the mark create an instant association with domain name registration services?  Does the term BANK automatically cause a consumer to think of registering, maintaining, or hosting a domain name?  The answer is simply no.  Some degree of imagination is required to associate the term .BANK with the Applicant’s services.  And even if that imagination is utilized, we are still left wondering what type of services are provided under . BANK.  In short, there is no evidence in the record which indicates the instant association between the mark and the services required to maintain the record.

As such, there can be no instantaneous connection as to the nature of the services provided by the Applicant, it is far more likely that the mark is suggestive than descriptive.  See Stix Products, Inc. v United Merchants and Manufacturers, Inc., 295 Fed. Supp. 479 (S.D.N.Y. 1968).

The second test in the descriptiveness analysis is the competitor’s need to use the same or similar terms.  This test inquires as to the probability that a competitor may need the mark to fairly describe the competitor’s goods or services.  If a competitor is likely to need the mark to describe its goods or services, it is thus more likely that the mark is descriptive.  See Educational Development corp. v. Economy Company, 562 Fed.2d 26 (10th Cir. 1977).  Correspondingly, if a competitor is not likely to need the mark’s terms to describe its product, it is less likely that the mark is actually descriptive. Id.

Applying the second test to the mark at issue, there are any number of terms that could be used to conjure up the idea of .BANK as applied for by the Applicant (e.g., .SAVINGS, .STORE, .STOCKPILE, .SAVINGSANDLOAN, .TRUST, .CREDITUNION etc.).  Accordingly, it is highly unlikely that any competitor would have need of this exact phrase.

The third test, is the competitor’s use test. Under this test, if competitors are not already using a term from the mark at issue to describe their goods or services, this is evidence that the term is neither a natural nor obvious way to describe the goods or services. See Firestone Tire and Rubber Company, 186 USPQ 557 (TTAB 1975).  In the instant matter, there is no evidence of record or a competitor’s use of Applicant’s applied for mark.

Moreover, an examination of registered marks on the Principal Register reveals that the term .BANK in relation to services like those of the Applicant have previously been treated as suggestive of the respective registrant’s services (See Exhibit A):

As such, it is respectfully submitted that it would be inconsistent for the Office to deny registration of the Applicant’s mark by concluding that the term .BANK is merely descriptive of the Applicant’s services where the above-referenced marks have been permitted to register on the Principal Register without disclaimers as to the term at issue in connection with like goods and services.

In sum, applying the Trademark Trial and Appeal Board’s test to the refusal at hand as well as in deference to the treatment of the term .BANK by the Office application of the degree of imagination test indicates that the relevant consuming public consumer would not form an immediate impression of the features, functions, qualities or characteristics of the services offered by Applicant by mere sight of the mark. 

In view of the above arguments, Applicant believes that the proposed mark is entitled to registration on the Principal Register. However, if the Examining Attorney remains unsure, he or she is respectfully reminded that because of the thin line between suggestive and descriptive marks, it is the practice of the USPTO to resolve doubt in Applicant’s favor and publish the mark for opposition. See In re Morton-Norwich Products, Inc. 209 U.S.P.Q. 791 (TTAB 1981); and In re Grand Metropolitan Foodservice Inc. 30 U.S.P.Q.2d 1974, 1976 (TTAB 1994).

Conclusion

            WHEREFORE the Applicant ASIF, by counsel, respectfully requests that the refusal under Section 2(e)(1) of the Trademark Act of 1946 be withdrawn, the amendment concerning clarification of Applicant’s entity status be entered, and the mark be allowed for publication on the Principal Register.