TRADEMARK

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
IN RE TRADEMARK APPLICATION

Applicant: Aluminum Athletic Trademark Attorney: David E. Tooley
Equipment Co.
Appln. No.: 77/754,436 Law Office: 112
Filed: June 8, 2009 Our File: AAE-TM001
Mark: BALLSTOPPER Date: February 19, 2010

RESPONSE TO OFFICE ACTION

In the outstanding Office Action, the Examining Attorney asserts that the
recitation of goods is unacceptable as indefinite, the specimen is unacceptable and
has refused registration under Section 2(e)(1) on the grounds that the mark
BALLSTOPPER is merely descriptive.
With respect to the identification of goods rejection, Applicant respectfully
submits that the identification is proper in this instance because Applicant sells its
products as a system, and not all of the identified goods are necessarily included in
each system. Therefore, in order to be accurate, Applicant submits that its original
identification of goods is appropriate in this case.
As to the specimen issue, Applicant submits that the specimen in question is
an excerpt from a catalog and is acceptable on that basis.

A. APPLICANT’S MARK IS ENTITLED TO REGISTRATION ON
THE PRINCIPAL REGISTER

1. Mark Which Is Deemed “Merely Descriptive” Must
Immediately Convey An Idea About The Applicant’s
Goods or Services.

As the Board stated in In re The Rank Organization Limited, 222 USPQ 324
(TTAB 1984):
Applicant: Aluminum Athletic Equipment Co.
Application No.: 77/754,436

Whether or not a term is merely descriptive in a trademark sense must
be considered in relation to the goods for which registration is sought,
the context in which it is used on labels, packages, or advertising
material directed to these goods, and the likely reaction thereto by the
average purchaser as he or she encounters the goods in the
marketplace [citations omitted]… As a general rule, if a mark imparts
or conveys an immediate idea of the qualities or characteristics or the
goods, the term is descriptive, while the term would be considered
suggestive if, as applied to the goods, it requires imagination, thought
or perception to reach a conclusion as to the nature thereof. [Citations
omitted].

Id. at 326. In that case, the Board held that “LASER” was registrable for
high-fidelity loudspeakers that were manufactured using a laser hologram. In
allowing registration, the Board stated: “[w]e conclude that the term “LASER”
requires mature thought and imagination in order to determine what features or
characteristics applicant’s goods possess. Id. (accord In re Hutchinson Technology,
7 USPQ2d 1490, 1493 (Fed. Cir. 1988) (In order for a mark to be deemed “merely
descriptive,” the term must convey an immediate idea of the “ingredients, qualities,
or characteristics of the goods” (citing Abcor Dev., 200 USPQ 215, 217 (CCPA
1978)).
Applicant’s mark “BALLSTOPPER” does not immediately convey an idea of
the qualities or characteristics of Applicant’s goods, i.e., protective sports netting
systems. Applicant submits that the mark “BALLSTOPPER” requires mature
thought and imagination in order to determine what features or characteristics
Applicant’s goods possess. In encountering “BALLSTOPPER”, one does not
immediately know the precise nature of Applicant’s goods.
Additionally, any doubt as to whether a term is merely descriptive or
suggestive should be resolved in favor of the applicant. In In re Intelligent Medical
Systems, Inc., 5 USPQ2d 1674, 1676 (TTAB 1987), the Board remarked on a
number of occasions that “there is a thin line between a suggestive and a merely
descriptive designation, and where reasonable men may differ, it is the Board’s
Applicant: Aluminum Athletic Equipment Co.
Application No.: 77/754,436

practice to resolve the doubt in applicant’s favor…” See also, In re The Rank
Organization Ltd., 222 USPQ 324, 326 (TTAB 1984); In re J. Ray McDermott & Co.,
Inc., 170 USPQ 524, 525 (TTAB 1971); In re Shop-Vac Corp., 219 USPQ 470, 472
(TTAB 1983) (resolving doubts in favor of applicant and holding “WET/DRY
BROOM” for electric vacuum cleaners to be suggestive, not merely descriptive); In
re American Hospital Supply Corp., 219 USPQ 949, 951 (TTAB 1983) (resolving all
doubts in favor of applicant and finding that “HEPATIC-AID” for nutritional
supplement comprising caloric source formulation of amino acid is only suggestive);
and In re Priefert Mfg. Co., Inc., 222 USPQ 731, 733 (TTAB 1984) (“HAY DOLLY” is
not merely descriptive of self-loading trailers for hauling bales).
This case is highly analogous to In re Hamilton Watch Co., 158 USPQ 300
(TTAB 1968). In that case, the Board in reversing an examiner’s refusal to register
the trademark “PRECISION METALS” stated:

[A]s applied to ‘special metal alloys,’ ‘PRECISION METALS’ suggests
the high quality and care involved in the production of the goods; but it
does not immediately or with any degree of particularity describe their
function, characteristics or use.

Id. at 301.

The above-quoted language of Hamilton Watch is clearly apposite here as
well. “BALLSTOPPER” like “PRECISION METALS”, is suggestive and not
descriptive of Applicant’s services, as it fails to convey any definite information
about them. Significantly, the fact that the term “metals” clearly described a
characteristic of the goods (“special metal alloys”) in In re Hamilton could not stand
as a basis for refusing registration of the unitary mark “PRECISION METALS”.
See also, Bose Corp. v. International Jensen Inc., 22 USPQ2d 1704 (CAFC 1992)
(“ACOUSTIC RESEARCH” held suggestive for stereo speakers and turntables); In
re Morton-Norwich Products, Inc., 209 USPQ 791, 792 (TTAB 1981) (The mark
“COLOR CARE” for bleach “intimates or suggests a characteristic of the product
Applicant: Aluminum Athletic Equipment Co.
Application No.: 77/754,436

rather than being merely descriptive thereof.”); In re TMS Corp. of the Americas,
200 USPQ 57, 59 (TTAB 1978) (“THE MONEY SERVICE” suggestive of financial
services).
In fact, Applicant submits that there are many examples of marks that have
registered that combined the term “stopper” with potentially descriptive terms. See
attached TARR status pages.

Applicant’s mark is no more descriptive than any of these marks which have
registered on the Principal or Supplemental Registers.

2. Applicant’s Mark Is Suggestive

To be registrable on the Principal Register, a mark does not have to be devoid
of all meaning relative to the goods or services. It is not prohibited that marks have
the capacity to draw attention to what the product or its characteristics are. A term
is suggestive if, when applied to the goods, it requires imagination, thought or
perception to reach a conclusion as to the nature of the goods. A suggestive term,
thus, differs from a descriptive term, which immediately tells something about the
product. See TMEP § 1209.01(a), (b). A mark that is “merely suggestive of a
possible desirable end result” and does not describe the goods with which it is used,
cannot be denied registration on the Principal Register. In re Frank J. Curran Co.,
189 USPQ 560 (TTAB 1975) (“CLOTHES FRESH” for clothes and shoe deodorant
held to be suggestive).
For example, in Healing the Children Inc. v. Heal the Children Inc., 22
USPQ2d 1690 (W.D.Pa. 1992), the court considered whether the service mark
“HEALING THE CHILDREN” was descriptive of organization whose activities
included medical services for children. In finding the mark suggestive, the court
stated:
Applicant: Aluminum Athletic Equipment Co.
Application No.: 77/754,436

In this case, “Healing the Children,” does suggest an organization
which benefits children is a salutory, curative, beneficial, or remedial
way. But it is only with imagination that the consumer can determine
that the organization’s activities include coordinating medical teams
which visit foreign countries to train local medical personnel and to
provide acute care and diagnostic services for local children, and
organizing transportation, visas, medical care, and foster care for
children referred to plaintiff by cooperating foreign governments and
private agencies. [Citation omitted.] We must therefore conclude that
“Healing the Children” is a suggestive mark…

Id. at 1693.

Similarly, in In re TMS Corp. of America, 200 USPQ 57 (TTAB 1978), the
Board reversed the examining attorney’s refusal to register “THE MONEY STORE”
for financial services. The reasoning behind the Board’s holding was that, although
the mark “THE MONEY STORE” is composed of commonly used words of the
English language, “its suggests a number of things, but yet falls short of describing
applicant’s services in any one degree of particularity.” Id. at 59. See also Game
Power Headquarters Inc. v. Owens, 37 USPQ2d 1427, 1431 (E.D.Pa. 1995) (“GAME
POWER HEADQUARTERS” for video game sales and rental stores is suggestive,
since term requires imagination, thought or perception to reach conclusion as to
nature of services.
“BALLSTOPPER” is no more descriptive than any of the above-cited marks.
See also Cheng v. Thea Dispeker Inc., 35 USPQ2d 1493, 1496 (SDNY 1995)
(“BRAVO BROADWAY!” suggestive when used to identify musical entertainment
services); Dial-A-Mattress Operating Corp. v. Mattress Madness Inc., 33 USPQ2d
1961 (EDNY 1994) (“DIAL-A-MATTRESS” for services selling mattresses by
telephone order is suggestive); Wynn Oil Co. v. Thomas, 5 USPQ2d 1944, 1950 (6th
Cir. 1988) (“CLASSIC CAR WASH” suggestive as applied to car washing services).
In fact, “BALLSTOPPER” immediately conveys nothing to the consumer about the
nature of Applicant’s goods.
Applicant: Aluminum Athletic Equipment Co.
Application No.: 77/754,436

3. Applicant’s Mark Has Acquired Distinctiveness.
In the alternative and without prejudice pursuant to TMEP §1212.02(c).,
Applicant submits that even assuming, arguendo, that the mark is descriptive, the
mark has acquired distinctiveness through Applicant’s use of the mark. Applicant
is submitting a Section 2(f) claim based on evidence. Applicant has attached a
declaration from its President establishing consumers’ recognition of Applicant’s
mark as a distinctive indicator of source. In addition to the length of time the mark
has been used, other factors to be considered include the type and amount of
advertising, and the Applicant’s efforts to associate the mark with the services. See
Ralston Purina Co. v. Thomas J. Lipton, Inc., 314 F.Supp. 129 (SDNY 1972).
Moreover, these other factors can outweigh the length of time of use in the
appropriate circumstances. See McCarthy on Trademarks, 15:54, citing, Barton v.
Rex-Oil Co., 2 F.2d 402 (3d Cir. 1924).

As indicated in the attached Declaration, Applicant’s mark has acquired
secondary meaning based, in part, on the following:

• Applicant has used the BALLSTOPPER mark since at least as early as
2000 and was first used in interstate commerce in conjunction with the
following goods at least as early as 2000.
International Class 28: Protective sports netting system comprised of
some or all of the following, namely, uprights, grounds bars, netting,
pulleys, posts, cables and clips, carts and accessories therefor.

• Applicant has been advertising the BALLSTOPPER System since 2000 and
since at least as early as 2005, the BALLSTOPPER mark has appeared in
advertising for the systems with which the mark is in use.
• Since 2000, the BALLSTOPPER mark has appeared in conjunction with the
systems with which the mark is use in Applicant’s catalog, which is
distributed to over 15,000 athletic industry professionals annually.
Applicant: Aluminum Athletic Equipment Co.
Application No.: 77/754,436

• Applicant has also sent a flyer for the BALLSTOPPER Systems, with which
the mark was used, to over 15,000 athletic industry professionals.
• Since 2000, Applicant has attended annual trade shows and exhibitions
which are geared to the athletic industry. At these trade shows, Applicant
has actively marketed its BALLSTOPPER System.
• Applicant has distributed product brochures for the BALLSTOPPER System
since 1998.
• Since 2000, Applicant has spent over $500,000 in advertising and promoting
its BALLSTOPPER System.
• Applicant’s sales for the BALLSTOPPER System since 2000 total over
$2,000,000.

CONCLUSION

In view of the foregoing, Applicant respectfully requests that the Examining
Attorney pass this application to publication. If questions remain, Applicant’s
counsel, John O’Malley, is available for discussion and can be contacted by email at
[email protected] or by telephone at 215-568-6400.