Belcourt Capital Group, Inc.
Providing on-line electronic bulletin boards for transmission of messages among computer users concerning athletic training, coaching, and nutrition
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
TRADEMARK
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In Re Application of: Mark: TRICOACH
Belcourt Capital Group, Inc.
Serial No.: 77/794,366
Filed: July 31, 2009
Trademark Law Office: 101
International Classes: 38, 41, 42, 44
Examining Attorney: Justine D. Parker
Atty. Dkt. No.: BELC:002US
RESPONSE TO OFFICE ACTION
Applicant, by and through its undersigned attorney, hereby files its Response to the
Office Action dated November 6, 2009 and respectfully requests reconsideration of this
Application pursuant to the following amendments and remarks.
AMENDMENTS
Identification of Services
Further to the Examining Attorneys request, Applicant has amended its identification of services
by deleting Class 35 and reclassifying the services into Classes 41 and 44 as noted below:
? Class 41: Providing information in the field of athletic training and coaching via a
global computer network
? Class 44: Providing information in the field of nutrition via a global computer
network
REMARKS
Refusal Under Section 2(e)(1)
In the Office Action, the Examining Attorney refused registration of Applicants mark
TRICOACH for all services on the ground that the term tri coach is used to describe someone
who helps people train for triathlons. Because a proper analysis of the mark confirms that
1
TRICOACH is at least suggestive in connection with the services listed in Applicants
application, and given the principle that all doubts as to descriptiveness must be resolved in the
Applicants favor, Applicant respectfully requests that the refusal to register be withdrawn.
I. TRICOACH is Not Merely Descriptive of Applicants Services
It is well settled that a mark or part of a mark is considered to be merely descriptive if it
immediately describes an ingredient, quality, characteristic, function, feature, purpose, or use of
the services or goods to which it is applied. See, e.g., In re On Technology Corp., 41 U.S.P.Q.2d
1475 (TTAB 1996) (citing In re Abcor Dev. Corp., 588 F.2d 811 (CCPA 1978)). In other words,
a mark or portion of a mark is merely descriptive when it tells the potential customer only what
the services or goods are, their ingredients, qualities, or characteristics. In re Quik-Print Copy
Shops, Inc., 205 U.S.P.Q. 505 (CCPA 1980) (merely is considered to mean only) (citing In
re Colonial Stores, Inc., 157 U.S.P.Q. 382 (CCPA 1968)).
The pertinent issue in analyzing descriptiveness is whether the term possesses a merely
descriptive significance as applied to the services or goods in question. TMEP § 1209.01(b). In
comparison, [a] term is suggestive if it requires imagination, thought and perception to reach a
conclusion as to the nature of the goods. Stix Products, Inc. v. United States Merchants &
Mfns., Inc., 160 U.S.P.Q. 777 (S.D.N.Y. 1968). If the mental leap between the mark (or a
portion of the mark) and the products attributes is not almost instantaneous, this indicates
suggestiveness rather than mere descriptiveness. See Investacorp, Inc. v. Arabian Inv. Banking
Corp., 19 U.S.P.Q. 1056 (11th Cir. 1991); see also Plus Prods. v. Medical Modalities Assoc.,
Inc., 211 U.S.P.Q. 1199 (TTAB 1981) (merely descriptive mark immediately conveys
information as to ingredients, qualities or characteristics of goods with a degree of
particularity).
2
A mark or term that connotes two meaningsone possibly descriptive and the other
suggestive of some other associationis not merely descriptive. Blisscraft of Hollywood v.
United Plastics Co., 131 U.S.P.Q. 55 (2d Cir. 1961). The Trademark Trial and Appeal Board
(TTAB) has stated that marks should be evaluated in their entireties rather than broken down
into their component parts and weighed separately. See Mercury Record Corp. v. Custom
Fidelity Records, 129 U.S.P.Q. 368 (TTAB 1961); see also 2 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:27 (4th ed. 2009) (Under the
anti-dissection rule, a composite mark is tested for its validity and distinctiveness by looking at it
as a whole, rather than dissecting it into its component parts.). As observed by the U.S.
Supreme Court, The commercial impression of a trade-mark is derived from it as a whole, not
from its elements separated and considered in detail. For this reason it should be considered in
its entirety. Estate of P.D. Beckwith, Inc. v. Commr of Patents, 252 U.S. 538, 545-46 (1920)
(citing Johnson v. Brandau, 32 App. D.C. 348 (D.C. Cir. 1909)).
A composite mark may therefore be arbitrary or suggestive even though its separate parts
are descriptive or generic. See, e.g., Ex parte Barker, 92 U.S.P.Q. (BNA) 218, 219 (Dec.
Commr Pat. 1952) (While it may be true that each of the individual words in the present
applicants mark are generic and thus independently unregistrable, it seems to me that their
unusual association or arrangement in the applicants mark results in a unique and catchy
expression which does not, without some analysis and rearrangement of its components, suggest
the contents of applicants goods.); Mercury Record Corp. v. Custom Fidelity Records, 129
U.S.P.Q. 368, 369 (TTAB 1961) ([I]t does not necessarily follow as a matter of law . . . that
since the words CUSTOM and FIDELITY are individually merely descriptive and therefore
unregistrable, that together, the resulting expression would be equally descriptive and likewise
3
unregistrable.). The Court of Appeals for the Fifth Circuit has explained: The whole, in
trademark law, is often greater than the sum of its parts. Common words in which no one may
acquire a trademark because they are descriptive or generic may, when used in combination,
become a valid trademark. Association of Co-Operative Members v. Farmland Indus., Inc., 684
F.2d 1134, 1982 (5th Cir. 1982), cert. denied, 460 U.S. 1038 (1983). An example of this
established principle is the composite mark BIASTEEL, which is a valid, protectable mark
notwithstanding the inclusion of the descriptive or generic term STEEL. See Firestone Tire &
Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557 (TTAB 1975), affd, 189
U.S.P.Q. 348 (CCPA 1976) (holding BIASTEEL for steel belted bias tires a suggestive, rather
than descriptive, composite mark).
Similarly, the mark THE MONEY SERVICE was found suggestive of services to arrange
for the transfer of funds (money) to and from savings accounts from remote locations. In Re
TMS Corp. of the Americas, 200 U.S.P.Q. 57 (TTAB 1978). The TTAB noted that the mark
suggests a number of things, but falls short of describing applicants services in any one degree
of particularity. Id. at 59. Another example involves the mark AMERICAN CAFÉ, which the
TTAB found suggestive. In so finding, the TTAB noted that American modifies the noun
café so that we cannot limit our consideration solely to the type of food service, but must
include in our deliberations the service itself, the décor and the ambience of the place. Thus, in
order to be termed descriptive, the name must immediately tell a potential customer what to
expect in the sum total of these concepts, that is, a typical American café. Holiday Inns, Inc.
v. Monolith Enterprises, 212 U.S.P.Q. 949 (TTAB 1981). Other marks found to be suggestive
include CITIBANK for banking services by an urban bank, Citibank, N.A. v. Citibanc Group,
Inc., 222 U.S.P.Q. 292 (11th Cir. 1984); SPRAY N VAC for an aerosol rug cleaner, Glamorene
4
Prods. Corp. v. Boyle-Midway, Inc., 188 U.S.P.Q. 145 (SDNY 1975); FRUIT SUNDAE for fruit
yogurt, Johnston Foods, Inc. v. Carnation Co., 159 U.S.P.Q. 625 (TTAB 1968); HANDI-WIPES
for dust wiping cloths, In re Colgate-Palmolive Co., 149 U.S.P.Q. 793 (TTAB 1966); THE
LIBRARY COMPANY for library supply services, In re Broco, 225 U.S.P.Q. 227 (TTAB
1984); and HULA HOOP for plastic hoops, In re Wham-O-Mfg. Co., 134 U.S.P.Q. 447 (TTAB
1962).
In the present case, it is respectfully submitted that when considered in its entirety, the
mark TRICOACH is not merely descriptive of Applicants services. The services recited in the
amended Application are:
? Class 38: Providing on-line electronic bulletin boards for transmission of
messages among computer users concerning athletic training, coaching, and nutrition
? Class 41: Providing information in the field of athletic training and coaching via a
global computer network
? Class 42: Providing a website featuring on-line non-downloadable software for
use in assessing and monitoring the performance and progress of users in the fields of
athletic training, coaching, and nutrition
? Class 44: Providing information in the field of nutrition via a global computer
network
Considering Applicants Class 41 and 44 services, TRICOACH in no way only
describes providing information or referrals in the field of athletic training, coaching, and
nutrition. Nor does the Applicants mark immediately describe on-line bulletin boards (Class
38) or non-downloadable software (Class 42) for users in the fields of athletic training, coaching,
and nutrition. The term tricoach, in fact, has no relationship to on-line bulletin boards,
nutrition referrals, or non-downloadable performance software. The mark is therefore, at most,
suggestive of the Applicants services because it requires imagination, thought, and perception to
reach any conclusion as to the nature of the services.
5
In the instant Office Action, the Examining Attorney attached Internet evidence showing
that the term tri coach is used by some consumers to describe someone who helps people train
for triathlons. As such, the Examining Attorney concluded, consumers will immediately
understand that applicants services feature triathlon coaching. None of the Applicants
services, however, include the actual training of individuals for triathlons. The Examining
Attorneys evidence, in contrast, consistently describes a tri coach or tri-coach as an actual
person for hire, rather than a provider of information and referrals or a provider of bulletin
boards or software. In addition, none of the Internet evidence creates a composite term out of the
terms tri and coach. Thus, when consumers encounter Applicants mark TRICOACH, they
will have to go through several mental exercises to determine how the mark relates to
Applicants services as the services in fact relate to many aspects of the facilitation and provision
of information in the fields of coaching, nutrition, and athletic training.
When the mark TRICOACH is applied to the services listed in the Application, it is
obvious that the mark does not merely describe the purpose of the Applicants services. Much
like the suggestive marks BIASTEEL and CITIBANK, it takes a great deal of thought and
imagination on the part of the consumer to understand the relationship between the services
provided by the Applicant and the mark TRICOACH. As explained, there is nothing about the
mark that describes or even suggests assessments of an individuals performance in the field of
nutrition (Class 42) or referrals in the field of athletic training (Class 41). Moreover, when
TRICOACH is viewed in its entirety, consumers must speculate on the meaning of the terms
tri and coach in the context of Applicants services. The term tri, for instance, might be
understood by consumers, in the context of Applicants services, as referring to the three fields
of athletic training, coaching, and nutrition. In other words, consumers must engage in a
6
multistage reasoning process to determine with any degree of particularity the characteristics of
Applicants services offered under the mark.
Finally, Applicants assertion that TRICOACH is at most suggestive is also supported by
BellSouth Corp. v. Planum Tech Corp., 14 U.S.P.Q.2d 1555 (TTAB 1988). In BellSouth, the
Board held that the mark PHONE FORWARD was suggestive of automatic telephone call
diverters. Id. at 1556. The Board reasoned that the applicants mark was a somewhat
incongruous combination of words and requires a modicum of imagination or thought to
determine the nature of applicants product. Id. A multistage reasoning process, the Board
elaborated, is necessary in order to ascertain the nature or function of applicants goods. At
worst, applicants mark is highly suggestive of a feature or function of the product. Id.; see also
Airco, Inc. v. Air Products & Chemicals, Inc., 196 U.S.P.Q. 832 (TTAB 1977) (holding AIR-
CARE not merely descriptive for maintenance of hospital and medical anesthesia and inhalation
therapy equipment). Accordingly, the refusal should be withdrawn.
II. Doubts Must Be Resolved in Applicants Favor
When determining whether a mark is suggestive or merely descriptive, any doubts as to
whether the mark, or a portion of the mark, is descriptive must be resolved in the Applicants favor
by finding the proposed mark or term to be suggestive. See, e.g., In re Conductive Sys., Inc., 220
U.S.P.Q. 84 (TTAB 1983); In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (TTAB 1972) (holding
THE LONG ONE not merely descriptive of bread); In re Aid Labs, Inc., 221 U.S.P.Q. 1215
(TTAB 1983) (holding PEST PRUF for animal shampoo with insecticide suggestive); In re
Morton-Norwich Prod., Inc., 209 U.S.P.Q. 791 (TTAB 1981) (holding COLOR CARE
suggestive of a characteristic of laundry bleach rather than merely descriptive). Doubts are
resolved in the Applicants favor on the theory that any person who believes that he or she would be
7
damaged by the registration will have an opportunity to oppose registration of the mark. See, e.g.,
In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (TTAB 1972). In accordance with the Boards
practice and precedent, Applicant respectfully submits that the Examining Attorney should
resolve all doubts in favor of publishing Applicants mark for opposition.
CONCLUSION
Applicant respectfully submits that its mark TRICOACH is not merely descriptive of its
services. Rather, it is at least as suggestive as the marks CITIBANK, BIASTEEL, AIR-CARE,
and PHONE FORWARD. In light of the marks suggestive nature, Applicant respectfully
requests that the refusal to register under Section 2(e)(1) be withdrawn, and that the application
be allowed to proceed to publication.
The present Response is intended to address all issues outlined by the Examining
Attorney. If a telephone conference would expedite the processing of this application, please
contact Applicants attorneys Sherri Eastley at (512) 482-5232 or [email protected], or
Jered Matthysse at (512) 482-5245 or [email protected]
Respectfully submitted,
Jered Matthysse
ATTORNEY FOR APPLICANT
PIRKEY BARBER LLP
600 Congress Ave., Suite 2120
Austin, Texas 78701
Tel: (512) 322-5200
Fax: (512) 322-5201
8
TRADEMARK
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In Re Application of: Mark: TRICOACH
Belcourt Capital Group, Inc.
Serial No.: 77/794,366
Filed: July 31, 2009
Trademark Law Office: 101
International Classes: 38, 41, 42, 44
Examining Attorney: Justine D. Parker
Atty. Dkt. No.: BELC:002US
RESPONSE TO OFFICE ACTION
Applicant, by and through its undersigned attorney, hereby files its Response to the
Office Action dated November 6, 2009 and respectfully requests reconsideration of this
Application pursuant to the following amendments and remarks.
AMENDMENTS
Identification of Services
Further to the Examining Attorneys request, Applicant has amended its identification of services
by deleting Class 35 and reclassifying the services into Classes 41 and 44 as noted below:
? Class 41: Providing information in the field of athletic training and coaching via a
global computer network
? Class 44: Providing information in the field of nutrition via a global computer
network
REMARKS
Refusal Under Section 2(e)(1)
In the Office Action, the Examining Attorney refused registration of Applicants mark
TRICOACH for all services on the ground that the term tri coach is used to describe someone
who helps people train for triathlons. Because a proper analysis of the mark confirms that
1
TRICOACH is at least suggestive in connection with the services listed in Applicants
application, and given the principle that all doubts as to descriptiveness must be resolved in the
Applicants favor, Applicant respectfully requests that the refusal to register be withdrawn.
I. TRICOACH is Not Merely Descriptive of Applicants Services
It is well settled that a mark or part of a mark is considered to be merely descriptive if it
immediately describes an ingredient, quality, characteristic, function, feature, purpose, or use of
the services or goods to which it is applied. See, e.g., In re On Technology Corp., 41 U.S.P.Q.2d
1475 (TTAB 1996) (citing In re Abcor Dev. Corp., 588 F.2d 811 (CCPA 1978)). In other words,
a mark or portion of a mark is merely descriptive when it tells the potential customer only what
the services or goods are, their ingredients, qualities, or characteristics. In re Quik-Print Copy
Shops, Inc., 205 U.S.P.Q. 505 (CCPA 1980) (merely is considered to mean only) (citing In
re Colonial Stores, Inc., 157 U.S.P.Q. 382 (CCPA 1968)).
The pertinent issue in analyzing descriptiveness is whether the term possesses a merely
descriptive significance as applied to the services or goods in question. TMEP § 1209.01(b). In
comparison, [a] term is suggestive if it requires imagination, thought and perception to reach a
conclusion as to the nature of the goods. Stix Products, Inc. v. United States Merchants &
Mfns., Inc., 160 U.S.P.Q. 777 (S.D.N.Y. 1968). If the mental leap between the mark (or a
portion of the mark) and the products attributes is not almost instantaneous, this indicates
suggestiveness rather than mere descriptiveness. See Investacorp, Inc. v. Arabian Inv. Banking
Corp., 19 U.S.P.Q. 1056 (11th Cir. 1991); see also Plus Prods. v. Medical Modalities Assoc.,
Inc., 211 U.S.P.Q. 1199 (TTAB 1981) (merely descriptive mark immediately conveys
information as to ingredients, qualities or characteristics of goods with a degree of
particularity).
2
A mark or term that connotes two meaningsone possibly descriptive and the other
suggestive of some other associationis not merely descriptive. Blisscraft of Hollywood v.
United Plastics Co., 131 U.S.P.Q. 55 (2d Cir. 1961). The Trademark Trial and Appeal Board
(TTAB) has stated that marks should be evaluated in their entireties rather than broken down
into their component parts and weighed separately. See Mercury Record Corp. v. Custom
Fidelity Records, 129 U.S.P.Q. 368 (TTAB 1961); see also 2 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:27 (4th ed. 2009) (Under the
anti-dissection rule, a composite mark is tested for its validity and distinctiveness by looking at it
as a whole, rather than dissecting it into its component parts.). As observed by the U.S.
Supreme Court, The commercial impression of a trade-mark is derived from it as a whole, not
from its elements separated and considered in detail. For this reason it should be considered in
its entirety. Estate of P.D. Beckwith, Inc. v. Commr of Patents, 252 U.S. 538, 545-46 (1920)
(citing Johnson v. Brandau, 32 App. D.C. 348 (D.C. Cir. 1909)).
A composite mark may therefore be arbitrary or suggestive even though its separate parts
are descriptive or generic. See, e.g., Ex parte Barker, 92 U.S.P.Q. (BNA) 218, 219 (Dec.
Commr Pat. 1952) (While it may be true that each of the individual words in the present
applicants mark are generic and thus independently unregistrable, it seems to me that their
unusual association or arrangement in the applicants mark results in a unique and catchy
expression which does not, without some analysis and rearrangement of its components, suggest
the contents of applicants goods.); Mercury Record Corp. v. Custom Fidelity Records, 129
U.S.P.Q. 368, 369 (TTAB 1961) ([I]t does not necessarily follow as a matter of law . . . that
since the words CUSTOM and FIDELITY are individually merely descriptive and therefore
unregistrable, that together, the resulting expression would be equally descriptive and likewise
3
unregistrable.). The Court of Appeals for the Fifth Circuit has explained: The whole, in
trademark law, is often greater than the sum of its parts. Common words in which no one may
acquire a trademark because they are descriptive or generic may, when used in combination,
become a valid trademark. Association of Co-Operative Members v. Farmland Indus., Inc., 684
F.2d 1134, 1982 (5th Cir. 1982), cert. denied, 460 U.S. 1038 (1983). An example of this
established principle is the composite mark BIASTEEL, which is a valid, protectable mark
notwithstanding the inclusion of the descriptive or generic term STEEL. See Firestone Tire &
Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557 (TTAB 1975), affd, 189
U.S.P.Q. 348 (CCPA 1976) (holding BIASTEEL for steel belted bias tires a suggestive, rather
than descriptive, composite mark).
Similarly, the mark THE MONEY SERVICE was found suggestive of services to arrange
for the transfer of funds (money) to and from savings accounts from remote locations. In Re
TMS Corp. of the Americas, 200 U.S.P.Q. 57 (TTAB 1978). The TTAB noted that the mark
suggests a number of things, but falls short of describing applicants services in any one degree
of particularity. Id. at 59. Another example involves the mark AMERICAN CAFÉ, which the
TTAB found suggestive. In so finding, the TTAB noted that American modifies the noun
café so that we cannot limit our consideration solely to the type of food service, but must
include in our deliberations the service itself, the décor and the ambience of the place. Thus, in
order to be termed descriptive, the name must immediately tell a potential customer what to
expect in the sum total of these concepts, that is, a typical American café. Holiday Inns, Inc.
v. Monolith Enterprises, 212 U.S.P.Q. 949 (TTAB 1981). Other marks found to be suggestive
include CITIBANK for banking services by an urban bank, Citibank, N.A. v. Citibanc Group,
Inc., 222 U.S.P.Q. 292 (11th Cir. 1984); SPRAY N VAC for an aerosol rug cleaner, Glamorene
4
Prods. Corp. v. Boyle-Midway, Inc., 188 U.S.P.Q. 145 (SDNY 1975); FRUIT SUNDAE for fruit
yogurt, Johnston Foods, Inc. v. Carnation Co., 159 U.S.P.Q. 625 (TTAB 1968); HANDI-WIPES
for dust wiping cloths, In re Colgate-Palmolive Co., 149 U.S.P.Q. 793 (TTAB 1966); THE
LIBRARY COMPANY for library supply services, In re Broco, 225 U.S.P.Q. 227 (TTAB
1984); and HULA HOOP for plastic hoops, In re Wham-O-Mfg. Co., 134 U.S.P.Q. 447 (TTAB
1962).
In the present case, it is respectfully submitted that when considered in its entirety, the
mark TRICOACH is not merely descriptive of Applicants services. The services recited in the
amended Application are:
? Class 38: Providing on-line electronic bulletin boards for transmission of
messages among computer users concerning athletic training, coaching, and nutrition
? Class 41: Providing information in the field of athletic training and coaching via a
global computer network
? Class 42: Providing a website featuring on-line non-downloadable software for
use in assessing and monitoring the performance and progress of users in the fields of
athletic training, coaching, and nutrition
? Class 44: Providing information in the field of nutrition via a global computer
network
Considering Applicants Class 41 and 44 services, TRICOACH in no way only
describes providing information or referrals in the field of athletic training, coaching, and
nutrition. Nor does the Applicants mark immediately describe on-line bulletin boards (Class
38) or non-downloadable software (Class 42) for users in the fields of athletic training, coaching,
and nutrition. The term tricoach, in fact, has no relationship to on-line bulletin boards,
nutrition referrals, or non-downloadable performance software. The mark is therefore, at most,
suggestive of the Applicants services because it requires imagination, thought, and perception to
reach any conclusion as to the nature of the services.
5
In the instant Office Action, the Examining Attorney attached Internet evidence showing
that the term tri coach is used by some consumers to describe someone who helps people train
for triathlons. As such, the Examining Attorney concluded, consumers will immediately
understand that applicants services feature triathlon coaching. None of the Applicants
services, however, include the actual training of individuals for triathlons. The Examining
Attorneys evidence, in contrast, consistently describes a tri coach or tri-coach as an actual
person for hire, rather than a provider of information and referrals or a provider of bulletin
boards or software. In addition, none of the Internet evidence creates a composite term out of the
terms tri and coach. Thus, when consumers encounter Applicants mark TRICOACH, they
will have to go through several mental exercises to determine how the mark relates to
Applicants services as the services in fact relate to many aspects of the facilitation and provision
of information in the fields of coaching, nutrition, and athletic training.
When the mark TRICOACH is applied to the services listed in the Application, it is
obvious that the mark does not merely describe the purpose of the Applicants services. Much
like the suggestive marks BIASTEEL and CITIBANK, it takes a great deal of thought and
imagination on the part of the consumer to understand the relationship between the services
provided by the Applicant and the mark TRICOACH. As explained, there is nothing about the
mark that describes or even suggests assessments of an individuals performance in the field of
nutrition (Class 42) or referrals in the field of athletic training (Class 41). Moreover, when
TRICOACH is viewed in its entirety, consumers must speculate on the meaning of the terms
tri and coach in the context of Applicants services. The term tri, for instance, might be
understood by consumers, in the context of Applicants services, as referring to the three fields
of athletic training, coaching, and nutrition. In other words, consumers must engage in a
6
multistage reasoning process to determine with any degree of particularity the characteristics of
Applicants services offered under the mark.
Finally, Applicants assertion that TRICOACH is at most suggestive is also supported by
BellSouth Corp. v. Planum Tech Corp., 14 U.S.P.Q.2d 1555 (TTAB 1988). In BellSouth, the
Board held that the mark PHONE FORWARD was suggestive of automatic telephone call
diverters. Id. at 1556. The Board reasoned that the applicants mark was a somewhat
incongruous combination of words and requires a modicum of imagination or thought to
determine the nature of applicants product. Id. A multistage reasoning process, the Board
elaborated, is necessary in order to ascertain the nature or function of applicants goods. At
worst, applicants mark is highly suggestive of a feature or function of the product. Id.; see also
Airco, Inc. v. Air Products & Chemicals, Inc., 196 U.S.P.Q. 832 (TTAB 1977) (holding AIR-
CARE not merely descriptive for maintenance of hospital and medical anesthesia and inhalation
therapy equipment). Accordingly, the refusal should be withdrawn.
II. Doubts Must Be Resolved in Applicants Favor
When determining whether a mark is suggestive or merely descriptive, any doubts as to
whether the mark, or a portion of the mark, is descriptive must be resolved in the Applicants favor
by finding the proposed mark or term to be suggestive. See, e.g., In re Conductive Sys., Inc., 220
U.S.P.Q. 84 (TTAB 1983); In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (TTAB 1972) (holding
THE LONG ONE not merely descriptive of bread); In re Aid Labs, Inc., 221 U.S.P.Q. 1215
(TTAB 1983) (holding PEST PRUF for animal shampoo with insecticide suggestive); In re
Morton-Norwich Prod., Inc., 209 U.S.P.Q. 791 (TTAB 1981) (holding COLOR CARE
suggestive of a characteristic of laundry bleach rather than merely descriptive). Doubts are
resolved in the Applicants favor on the theory that any person who believes that he or she would be
7
damaged by the registration will have an opportunity to oppose registration of the mark. See, e.g.,
In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (TTAB 1972). In accordance with the Boards
practice and precedent, Applicant respectfully submits that the Examining Attorney should
resolve all doubts in favor of publishing Applicants mark for opposition.
CONCLUSION
Applicant respectfully submits that its mark TRICOACH is not merely descriptive of its
services. Rather, it is at least as suggestive as the marks CITIBANK, BIASTEEL, AIR-CARE,
and PHONE FORWARD. In light of the marks suggestive nature, Applicant respectfully
requests that the refusal to register under Section 2(e)(1) be withdrawn, and that the application
be allowed to proceed to publication.
The present Response is intended to address all issues outlined by the Examining
Attorney. If a telephone conference would expedite the processing of this application, please
contact Applicants attorneys Sherri Eastley at (512) 482-5232 or [email protected], or
Jered Matthysse at (512) 482-5245 or [email protected]
Respectfully submitted,
Jered Matthysse
ATTORNEY FOR APPLICANT
PIRKEY BARBER LLP
600 Congress Ave., Suite 2120
Austin, Texas 78701
Tel: (512) 322-5200
Fax: (512) 322-5201
8