U.S. Serial No. 77/586,936

Response to Office Action

In the Office Action, the Examining Attorney refuses registration of the present
application, asserting that Applicant’s mark is merely descriptive as applied to the associated
services. Applicant respectfully disagrees for the following reasons and requests reconsideration.

A mark is merely descriptive if it immediately conveys information about an ingredient,
quality, characteristic, function, feature, purpose or use of the specified goods and/or services.
T.M.E.P. §1209.01(a)-(b). In contrast, a suggestive mark, as applied to the associated goods or
services, requires imagination, thought or perception to reach a conclusion as to the nature of
those goods or services. T.M.E.P. §1209.01(a). A designation does not have to be devoid of all
meaning in relation to the goods/services to be eligible for registration on the Principal Register.
Id. Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register
without proof of secondary meaning.

Determining whether a mark is descriptive or suggestive is not always readily apparent,
and most courts employ the “imagination” test to make such determination. 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition, §§11.67-11.68 (4th ed. 2009); see
also Stix Products, Inc. v. United Merchants & Mfrs., Inc., 160 U.S.P.Q. 777 (S.D.N.Y. 1968).
“If a consumer must use more than a small amount of imagination to make the association [of a
product attribute], the mark is suggestive and not descriptive.” See Rodeo Collection, Ltd. v.
West Seventh, 2 U.S.P.Q.2d 1204, 1206 (9th Cir. 1987). For example, the Court of Appeals for
the Ninth Circuit considered whether the mark “RODEO COLLECTION” was descriptive as
applied to a collection of shops and restaurants comprising a shopping center. The court stated,

“A person would not be likely to picture a shopping center upon first hearing the
name ‘RODEO COLLECTION.’ One must use some imagination to associate the
word ‘collection’ with the collection of shops and restaurants that make up the
shopping center. The remoteness of that association indicates that a competing
shopping center would not need to use the term ‘collection’ in order to identify its
own shopping center.”

Id. at 1207.

Similarly, the District Court for the District of Rhode Island considered this very issue in
Railroad Salvage of Conn., Inc. v. Railroad Salvage, Inc. et al., 219 U.S.P.Q. 167 (D.R.I. 1983).
As an initial matter, the court explained that “the line between descriptive and suggestive terms
is often blurred, and the categorization of a name as ‘descriptive’ or ‘suggestive’ cannot be
divined by the application of any hard and fast rules, but must be decided on a case-by-case
basis.” Id. at 172. The court provided examples of descriptive marks, such as “VISION
CENTER” for a place where one purchases eyeglasses and “HOTRAY” for electric food
warmers. Id. (internal citations omitted). With respect to suggestive marks, the court pointed
out that the mark “ULTRASUEDE” is suggestive of suede-like fabrics and the mark “BEETLE”
is suggestive of plastic fishing lures. Id. (internal citations omitted).

After laying the foundation for the blurry descriptive/suggestive distinction, the court
considered whether the service mark “RAILROAD SALVAGE” was generic, descriptive, or
suggestive of the associated services, which consisted of purchasing undeliverable goods from
railroad companies and selling those goods to purchasers at a discount. The court considered
the plain meaning of “RAILROAD,” which is a “permanent road having a line or rails fixed to
ties on a level or graded roadbed and providing a track for cars,” and the plain meaning of
“SALVAGE,” which is “something extracted … as valuable or having further usefulness.” Id. at
173. The court found that “the plain meaning of the words, when coupled, does not denote basic
services provided by the [owner of the mark].” Id. Furthermore, “although the name depicts, in
some general manner, the source of … the goods sold by the [owner of the mark], it does not
fully or precisely limn” the services offered by the owner of the mark. Id. Ultimately, the court
held that “the nomenclature at issue here necessitates some use of the consumer’s imagination in
order to determine the nature of the [mark owner’s] services, and is distinctive.” Id.

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In the present case, the meaning of Applicant’s mark must be evaluated on the basis of the
definition that would be readily understood by the relevant consuming public. Applicant has
consulted the Merriam Webster Online Dictionary, which is a renowned and reliable source for
dictionary services. The term “LOWER” is defined as, inter alia, “situated or passing little above
a reference line, point or plane.” The term “LIMB” is defined as, inter alia, “one of the
projecting paired appendages (as wings) of an animal body used especially for movement and
grasping…” or “a leg or arm of a human being.” See Exhibit A (printouts from Merriam Webster
Online Dictionary). Combining the two terms connotes a limb extending from the lower part of a
human or animal.

Applying the “imagination” test to the present case reveals that Applicant’s mark is
suggestive, not descriptive, of the services listed in the application, which are custom
manufacturing of orthotic devices and prosthetic devices. More specifically, consumers
encountering the mark “LOWER LIMB” will not immediately receive any idea of the nature of
Applicant’s services. See T.M.E.P. §1209(a)-(b). Stated another way, consumers encountering
the mark will not picture Applicant’s services upon first hearing “LOWER LIMB.” See Rodeo
Collection, 2 U.S.P.Q.2d at 1207. Rather, consumers must understand that “LOWER LIMB”
refers to a body part and then make the mental leap that Applicant manufactures custom orthotic
devices and prosthetic devices, some of which may be suitable for use in connection with that
body part. See id. at 1206.

Moreover, “the plain meaning of the words, when coupled, does not denote basic services
provided by” Applicant. See Railroad Salvage, 219 U.S.P.Q. at 173. Clearly, a consumer
encountering Applicant’s mark “LOWER LIMB” must “use more than a small amount of
imagination” to arrive at the nature of Applicant’s services. See id. Furthermore, the remoteness
of that association indicates that a competing manufacturer of custom orthotic and prosthetic
devices would not need to use the term “LOWER LIMB” in order to identify its own services.
See Rodeo Collection, 2 U.S.P.Q.2d at 1207. Accordingly, Applicant’s mark is at least
suggestive, and not descriptive, of its services.

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With respect to the potential genericness advisory, the Court of Appeals for the Federal
Circuit has stated that “[t]he critical issue in genericness cases is whether members of the relevant
public primarily use or understand the term sought to be registered to refer to the genus of goods
or services in question.” H. Marvin Ginn Corp. v. Int’l Assoc. of Fire Chiefs, Inc., 228 U.S.P.Q.
528, 530 (Fed. Cir. 1986). In fact, generic terms are terms that the relevant purchasing public
understands primarily as the common or class name for the goods or services. T.M.E.P. §
1209.01(b). Members of the relevant public would describe the genus or type of Applicant’s
services as “custom manufacture of orthotic and prosthetic devices,” not as “lower limbs,” as
advised by the Examining Attorney.

Therefore, in light of the foregoing, Applicant respectfully requests withdrawal of the
Section 2(e)(1) descriptiveness refusal and allowance of the present application.

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