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 Attorney’s 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 Applicant’s 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

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TRICOACH is at least suggestive in connection with the services listed in Applicant’s

application, and given the principle that all doubts as to descriptiveness must be resolved in the

Applicant’s favor, Applicant respectfully requests that the refusal to register be withdrawn.

I. TRICOACH is Not Merely Descriptive of Applicant’s 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 product’s 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”).

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A mark or term that connotes two meanings—one possibly descriptive and the other

suggestive of some other association—is 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. Comm’r 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.

Comm’r Pat. 1952) (“While it may be true that each of the individual words in the present

applicant’s mark are generic and thus independently unregistrable, it seems to me that their

unusual association or arrangement in the applicant’s mark results in a unique and catchy

expression which does not, without some analysis and rearrangement of its components, suggest

the contents of applicant’s 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

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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), aff’d, 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 applicant’s 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

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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 Applicant’s 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 Applicant’s 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 Applicant’s 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 Applicant’s services because it requires imagination, thought, and perception to

reach any conclusion as to the nature of the services.

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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 applicant’s services feature triathlon coaching.” None of the Applicant’s

services, however, include the actual training of individuals for triathlons. The Examining

Attorney’s 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 Applicant’s mark TRICOACH, they

will have to go through several mental exercises to determine how the mark relates to

Applicant’s 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 Applicant’s 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 individual’s 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 Applicant’s services. The term “tri,” for instance, might be

understood by consumers, in the context of Applicant’s services, as referring to the three fields

of athletic training, coaching, and nutrition. In other words, consumers must engage in a

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multistage reasoning process to determine with any degree of particularity the characteristics of

Applicant’s services offered under the mark.

Finally, Applicant’s 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 applicant’s mark was a “somewhat

incongruous combination of words and requires a modicum of imagination or thought to

determine the nature of applicant’s product.” Id. A multistage reasoning process, the Board

elaborated, “is necessary in order to ascertain the nature or function of applicant’s goods. At

worst, applicant’s 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 Applicant’s 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 Applicant’s 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 Applicant’s favor on the theory that any person who believes that he or she would be

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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 Board’s

practice and precedent, Applicant respectfully submits that the Examining Attorney should

resolve all doubts in favor of publishing Applicant’s 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 mark’s 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 Applicant’s 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

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