IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In Re Application of:

MJSI, Inc.
Trademark Attorney: Kelly McCoy
Serial No.: 77/789,960
Law Office: 107
Filed: July 27, 2009
Docket No.: 171901-3220

For: HYDROFLUSH

RESPONSE TO NON-FINAL OFFICE ACTION

Commissioner for Trademarks
PO. Box 1451
Alexandria, VA 22313-1451

In response to the Non-final Office Action dated November 5, 2009, Applicant

hereby submits the following remarks.

I. No Similar Marks

Applicant notes that the Office records have been searched and there are no

similar registered or pending marks that would bar registration under Trademark Act

Section 2(d), 15 U.S.C. § 1052(d).

II. The Mark is Not Merely Descriptive

The Office Action refused registration under Trademark Act Section 2(e)(1), 15

U.S.C. §1052(e)(1), based on the assertion that Applicant’s mark is merely descriptive.

Applicant respectfully traverses this rejection and maintains the mark is not merely

descriptive for the reasons set forth herein.
A. The Mark Does Not Merely Describe the Goods
The Office Action asserts that Applicant’s mark is merely descriptive “because

the applied-for mark merely describes the feature, characteristic, purpose and function

of applicant’s goods.” See Office Action, p. 1. Applicant contends, however, that

Applicant’s mark HYDROFLUSH does not merely (or only) describe Applicant’s goods,

but is at least only suggestive.

A word is capable of functioning as a trademark even if the word is suggestive of

qualities of the product, but not entirely descriptive. See Playboy Enters, Inc. v.

Chucklebeny Pub/’g. Inc., 687 F.2d 563 (2″’1 Cir. 1982) (finding the mark PLAYBOY not

merely descriptive despite the court’s admission that the word does describe at least some

aspects of the magazine’s readership). Indeed, a descriptive term immediately and

clearly conveys characteristics of a product, whereas a suggestive term only indirectly

conveys these things. See, e.g., Levi Strauss & Co. v. R. Josephs Sportswear, 28

U.S.P.Q.2d 1464 (T.T.A.B. 1993) (finding ACTION SLACKS for pants not merely

descriptive). Thus, Applicant submits that imagination, thought, and perception are

required to reach a conclusion as to the nature of Applicant’s goods.

In resolving whether a mark is “merely descriptive,” the term “merely” means

“only.” See In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A.

1968). In other words, when considered with the particular goods, a merely descriptive

mark does nothing but describe the goods. See id. (emphasis added). Applicant’s

mark does not directly describe, but at most only suggests, characteristics of Applicant’s

goods. Certainly, the word HYDROFLUSH, on its face, does not have a merely

descriptive significance. In fact, in order to reach a conclusion about the precise nature

of Applicant’s goods (i.e., dual flush toilet flush valves, among other characteristics), a
consumer would necessarily need to use imagination, thought, and perception.

Accordingly, Applicant’s mark is not merely descriptive.

Finally, as stated above, Applicant’s mark does not convey a real and

unequivocal idea of some characteristic of the products, but rather some reflection is

necessary on the part of the consumer. In addition, any doubt is to be resolved in favor

of the applicant when determining whether a mark is merely descriptive or only

suggestive, on the assumption that competitors have the opportunity to oppose the

registration once published. See In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565

(T.T.A.B. 1972) (any doubt in determining the registrability of THE LONG ONE for bread

is resolved in favor of applicant “on the theory that any person who believes that he

would be damaged by the registration will have an opportunity to oppose the

registration of the mark and to present evidence, usually not present in the ex parte

application, to that effect”); In re Conductive Systems, Inc., 220 U.S.P.Q. 84 (T.T.A.B.

1983) (doubts under Section 2(e) about the merely descriptive nature of a term are

resolved in favor of the applicant); In re Aid Laboratories, Inc., 221 U.S.P.Q. 1215

(T.T.A.B. 1983) (PEST PRUF for animal shampoo with insecticide held on the

suggestive side of the line).

1. The Nature of Applicant’s Goods is not Immediately Conveyed
by the Mark HYDROFLUSH

Applicant’s mark is not merely descriptive because it does not immediately

convey the characteristics of Applicant’s goods. The Office Action alleges that

Applicant’s mark, HYDROFLUSH, immediately conveys that the goods are “valves
utilizing water to empty toilets.“ See Office Action, p. 2. However, the terms “hydro”

and “flush” when used in relation to goods can have countless meanings, as is

evidenced by the numerous registered trademarks that contain these terms. Further,

while the terms “hydro” and “flush” may be suggestive of Applicant’s goods, they can

also be suggestive of a multiplicity of other goods, as evidenced by the numerous

meanings attributed to the terms. See Exhibits A and B (numerous definitions for the

terms “hydro” and “flush” from www.merriam-webster.com). Certainly, HYDROFLUSH

does not only convey the immediate idea alleged by the Of?ce Action. Accordingly,

Applicant’s mark does not immediately convey the characteristics of the goods.

At most, Applicant’s mark suggests characteristics of the goods; nevertheless,

suggestive marks are registerable. “[A] designation does not have to be devoid of all

meaning in relation to the goods/services to be registrable. TMEP Section 1209.01(a);

see also Cullman Ventures, Inc. v. Columbian Art Works, Inc., 717 F. Supp. 96, 13

U.S.P.Q.2d 1257 (S.D.N.Y. 1989) (a family of AT-A-GLANCE marks for calendars, such

as WEEK-AT-A-GLANCE or MONTH-AT-A-GLANCE, was found suggestive of format,

but not directly descriptive); Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d

158, 73 U.S.P.Q.2d 1127 (2d Cir. 2004) (the term WET ONES (for pre-moistened wet

wipes) is too generalized to directly describe this product; it could plausibly describe a

wide variety of products.)

2. “HYDROFLUSH” Does Not Have a Well Understood and
Recognized Meaning

The Office Action has not shown that the term HYDROFLUSH has a well

understood and recognized meaning. See TMEP Section 1209.03. The Office Action

1 Applicant notes that the goods associated with this mark as described in the application are “dual ?ush toilet ?ush
alleges that Applicant’s mark is descriptive because Applicant intends to use the mark

HYDROFLUSH on “valves utilizing water to empty toilets.” See Office Action, p. 2.

In support of this assertion, the Office Action cites to online definitions for the words

“hydro” and “flush.” However, not only has the Office Action failed to show any well

understood and recognized meaning for the term “hydroflush,” but, as evidenced by the

definitions provided with the Office Action, both “hydro” and “flush” have multiple

meanings. See Attachments to Office Action (the term “hydro” can also mean “affected

with an accumulation of serous fluid” or “combined with hydrogen”; the term “flush” can

also mean “to turn red…b|ush” or “to glow, especially with a reddish color”); see also

Exhibit A (various other definitions for the term “hydro”); Exhibit B (numerous definitions

for the term “flush”); Exhibit C (the term “hydroflush” does not appear in the dictionary).

As such, the Office Action has not shown that the term HYDROFLUSH has a well

understood and recognized meaning, but has, in fact, presented evidence that the

separate terms “hydro” and “flush” each have multiple meanings.

Accordingly, contrary to the statements in the Office Action, Applicant respectfully

asserts that the evidence of meanings of the terms “hydro” and “flush” set forth in the

Office Action actually supports the conclusion that HYDROFLUSH does not have a well

understood meaning. Specifically, due to the significant differences in the possible

definitions of “hydro” and “flush,” Applicant asserts that HYDROFLUSH cannot be said

to read on a known structure. Thus, Applicant asserts that HYDROFLUSH does not

have a well understood and recognized meaning.

Further, Applicant notes that the Office Action did not present a dictionary

definition for the term “hydroflush” to support its assertion of well-known meaning, likely

valves.”
because one does not exist. See Exhibit C (search results from www.merriam-

webster.com for “hydroflush”). In addition, a search of www.wikipedia.org also yields

zero results for the term “hydroflush.” See Exhibit D (search results from

www.wikipedia.org for “hydroflush”). Thus, Applicant asserts that HYDROFLUSH does

not have a well understood and recognized meaning.
Ill. Conclusion

Applicant submits that publication of the Applicant’s mark is believed warranted.

Applicant, therefore, requests that the rejections be withdrawn and the mark proceed to

publication. If the Examining Attorney believes that a telephone conference will

expedite the processing of this application, the Examining Attorney is invited to call the

undersigned attorney.

No fees are believed to be due in connection with this response. If, however, any

fee is due, you are hereby authorized to charge any such fees to Deposit Account No.

20-0778.

Respectfully submitted,

Melissa Rhoden
Registration Number: 60,733

Thomas, Kayden, Horstemeyer & Risley, L.L.P.
600 Galleria Parkway, SE.
Suite 1500
Atlanta, Georgia 30339-5948
Phone: (770) 933-9500
Fax: (770) 951—0933
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EXHIBIT A

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Main Entry: ‘hy-dro 13}
Pronunciation: ‘hi—(.)dr6 Words You Never
Function: noun Knew Came From

In?ected Form(s): plural hydros “Mother”
Etymology: short for hydropathic establishment
Date: 1882
British : an establishment offering hydropathic
treatment (as for weight loss) : HEALTH SBA

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Pronunciations m I

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Main Entry: 2hydro
Function: noun Words You Never
Knew Came From
Usage: often attributive
“Mother”
Etymology: short for hydropower
Date: 1916
: hydroelectric power

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iivgro Spa Parts On Sale
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Pronunciation Symbols

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“hydro.” Merriam-Webster Online Dictionary. 2010.
Merriam-Webster Online. 4 May 2010

hydro. (2010). In Memam-Webster Online Dictionary.
Retrieved May 4, 2010. from http://www.merriam-webster.com/dictionary/hydro

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Main Entry: 1flush
Pronunciation: ‘?osh
Function: verb
Etymology: Middle English ?usshen
Date: 13th century
intransitive verb
: to ?y away suddenly
transitive verb
1 : to cause (as a bird) to ?ush
2 : to expose or chase from a place of concealment

Physician-reviewed articles on flush on Healthline.
1. Skin blushing/flushing (1 image)
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Main Entry: 2flush
Function: noun Words You Never
Knew Came From
Etymology: Middle French ?us, ?uz, from Latin
“Mother”
?uxus ?ow, ?ux
Date: circa 1529
1 : a hand of playing cards all of the same suit;
specifically : a poker hand containing ?ve cards of
the same suit but not in sequence — see [£2511]:
MSIRAILOA
2 : a series of three or more slalom gates set
vertically on a slope

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Main Entry: ’flush
Function: noun Words You Never
Etymology: perhaps modi?cation of Latin ?uxus
Date: 1529
1 : a sudden ?ow (as of water); also : a rinsing or
cleansing with or as if with a ?ush of water
2 a : a sudden increase or expansion; especially :
sudden and usually abundant new plant growth
b : a surge of
emotion
3 a : a tinge ofred : BLUSH b : a fresh and
Vigorous state
4 : a transitory sensation of extreme lie—at —
compare HQTWELASH

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1. Drug-Induced Flushing

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Main Entry: 4flush
Function: verb Words You Never
Knew Came From
Date: 1548
“Mother”
intransitive verb

1 : to ?ow and spread suddenly and freely ii
2 a : to glow brightly b : BLUSH
3 : to produce new growth
transitive verb
1 a : to cause to flow b : to pour liquid over or
through; especially : to cleanse or wash out with or
as if with a rush of liquid
2 : INFLAME, EXCJTE —usually used passively

3 : to cause to blush

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1. Skjnittushinglflushing (uma?qe)
Skin blushing or ?ushing is a sudden reddening of the fa…

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Main Entry: 5flush
Function: adjective Words You Never
Date: circa 1568 KNEW Came From
“Mother”
1 a : ofa ruddy healthy color b : full of life and 7
W%
vigor : LUSTY
2 a : ?lled to over?owing b : AFFLUENJ
3 : readily available : ABUNDANT
4 a : having or forming a continuous plane or
unbroken surface b : directly
abutting or immediately adjacent: as (1) : set even
with an edge of a type page or column : having no
indention (2) : arranged edge to edge so as to ?t
snugly
— flush-ness noun

Physician-reviewed articles on flush on ?ealt line.
1. ,Srhinlbluishinglflushmg? image) M77
Skin blushing or ?ushing is a sudden reddening of the fa…

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Main Entry: “flush
Function: adverb
Date: 1700
1 : in a ?ush manner
2 : SQUARE LY

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Main Entry: ’flush
Function: transitive verb Words You Never
Date: circa 1842 Knew Came From
: to make ?ush

Physician-reviewed articles on flush on ?e?thline.
1. akinblushingl?ushira? imagei
Skin blushing or ?ushing is a sudden reddening of the fa…

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“?ush.” Merriam-Webster Online Dictionary. 2010.
Merriam-Webster Online. 4 May 2010

APA Style
?ush. (2010). In Merriam-Webster Online Dictionary.
Retrieved May 4, 2010, from http://www.merriam-webster.com/dictionary/?ush

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Hydro?ush – De?nition from the Merriam-Webster Online Dictionary Page 1 of 1

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