REMARKS

Applicant seeks to register the mark IGUN (the “Mark”) for “Computer game
software downloadable from a global computer network” in International Class 9. The
Examining Attorney has preliminarily rejected the Applicant’s application on the basis that the
Mark is merely descriptive of the Applicant’s goods.

For the reasons set forth below, we respectfully disagree with the Examining
Attorney’s position and submit that the Mark is not merely descriptive.

THE APPLICANT’S MARK IS NOT
MERELY DESCRIPTIVE

Evaluation of a mark proposed for trademark registration requires consideration of
the mark as a whole and the determination of whether or not a mark is merely descriptive must be
made in relation to the goods or services for which registration is sought, not in the abstract. This
requires consideration of the context in which the mark is used or intended to be used in connection
with those goods or services, and the possible significance that the mark would have to the average
purchaser of the goods or services in the marketplace. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215 (C.C.P.A. 1978). Moreover, in order to deny the registration of a mark as descriptive, the
USPTO has the burden of substantially showing, that the term is in fact descriptive based on clear
evidence. In re Am. Fertility Soc’y., 188 F.3d 1341, 1346 (Fed.Cir.1999). For a mark to be “merely
descriptive” the nature of the product must be immediately known to a consumer from the mark
without using imagination, thought or perception. See generally Ginger Group, Ltd. v. Beatrice
Companies, 678 F. Supp. 555 (E.D. Pa. 1988).

1. With respect to the Mark, the prefix “I” is not likely to be viewed as a reference to
the Internet.

Applicant does not dispute that its goods pertain to guns – they are software for
mobile phones that simulate the use of various guns. However, the letter “I” is not descriptive with
respect to these goods. Therefore, the Mark is not primarily merely descriptive.

The Examining Attorney states that, “[t]he letter “i” or “I” used as a prefix would be
understood by the purchasing public to refer to the Internet when used in relation to Internet-related
products or services.” (Office Action at pg. 2). For this proposition, the Examining Attorney cites
only In re Zanova, Inc., 59 USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive
of computer software for use in creating web pages, and custom designing websites for others);
TMEP §1209.03(d)).

The facts of this case are materially different from those in Zanova. In that case, the
Board’s finding of the prefix “I” to be descriptive was based heavily on the fact that record was
replete with multiple examples of third party descriptive use of the phrase “internet tools.” There
was thus little question that the letter “I” in the mark ITOOL was literally an abbreviation for the
term “Internet.” The The Board stated, “[f]rom the record it is clear that ‘Internet tool(s)’ is a
commonly used term and can refer to a wide variety of computer programs or program-based
services relating to the Internet.” In re Zanova, Inc., at 13 (Serial No. 75/519,495 and Serial No.
75/571,710). In addition, the Board in Zanova noted substantial usage of “iTools” to indicate
“internet tools” by Applicant’s competitors. Id. at 17. The Examining Attorney offers no evidence
whatsoever that “internet gun” or “igun” are commonly used phrases or that any party besides
Applicant uses the term “igun” in connection with the offering of similar goods and services. The
Examining Attorney’s reliance on Zanova for the proposition that the relevant consumer’s of
Applicant’s goods would recognize “i” or “I” as indicating “internet” is therefore misplaced.

As set forth above, the USPTO has the burden to prove that an allegedly descriptive
term or mark is, in fact, descriptive. That burden has not been met here. With the exception of the
highly distinguishable Zanova case, the Examining Attorney, fails to provide a single source
showing that “i” is understood to stand for Internet. Dictionary.com, “the world’s largest and most
authoritative online dictionary,” contains no less than 32 definitions for the letter and prefix “i”,
including as an abbreviation for “interstate” and “intelligence.” But not one of these definitions
indicates a meaning associated with the Internet. See dictionary.com entry on “I” available online at
http://dictionary.reference.com/browse/i, a PDF of which is attached hereto as Exhibit A.
Accordingly, there is nothing in the record to support the Examining Attorney’s statement that the
letter “i” or “I” used as a prefix “would be understood by the purchasing public to refer to the
Internet when used in relation to Internet-related products or services.”

2. The term “IGUN” is suggestive

A mark cannot be considered descriptive, where, as here, the mark suggests a number of
possible uses or characteristics of the goods or services, and/or contains elements that are vague or
elusive as applied to the goods or services so that it is not possible to immediately understand the
nature of the goods or services with which it is used. See Airco, Inc. v. Air Prods. & Chemicals,
Inc., 196 USPQ 832, 835 (TTAB 1977) (AIR-CARE not merely descriptive of maintenance program
for hospital inhalation and breathing equipment).

It is not prohibited for a suggestive mark to have the capacity of drawing attention to the
nature of the product or service or to its characteristics. A mark is suggestive if it indirectly
informs the consumer about the goods or services (i.e. requires a multi-step thought process to
determine the precise nature of the goods or services). See Bellsouth Corp. v. Planum Tech. Corp.,
14 USPQ2d 1555 (TTAB 1988).

IGUN does not describe with any definiteness any attribute of Applicant’s services.
Among the plausible interpretations of the Mark’s “I” prefix are: (1) “I” alludes to the fact that
Applicant’s games run on cell phones including the iPhone, (2) “I” is a personal pronoun for the
customer and the Mark suggests a personal gun, (3) “I” is an abbreviation for “interactive”.
When considered in the context of Applicant’s services, IGUN could reasonably have any
number of different meanings to consumers – none of which are descriptive.

Based on the reasons set forth above, it is clear that the IGUN mark suggests a number of
different connotations, and requires an observer to employ imagination and multi-stage reasoning
to arrive at an understanding of the precise services involved. It does not serve merely to

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describe Applicant’s services. Accordingly, Applicant submits that its IGUN mark is suggestive,
not descriptive.

Similarly formed I- marks have not been treated as descriptive by the USPTO. For
example, an application for the mark IMIRROR for PDA and cell phone software that simulates a
mirror in IC 9 was allowed to register on the Principal Register as recently as March 9, 2010
(Application Serial. No. 77661141). Other examples of similarly formed Principal Register marks
include IBOOK for computer software relating to user-modifiable electronic books in IC 9 (Reg. No.
2446634), I PRINT for goods including software for the addition of text to graphics to be printed and
saved as a digital file in IC 9 (Reg. No. 3429811, “PRINT” disclaimed), I SCAN for goods including
software to detect, record, view, process and forward biometric features of a living person pertaining
to the eyes in IC 9 (Reg. No. 3530099, “SCAN” disclaimed), I-CITATION for services including
providing non-downloadable software relating to traffic citations in IC 42 (Reg. No. 3721049), I-
CUT for a digital cutting system in IC 9 (Reg. No. 2947528), I-SIM for goods including computer
software for simulating air traffic control in IC 9 (Reg. No. 3694228), and ITUBE for goods
including computer software in the field of manufacture of tubes in IC 9 (Reg. No. 3547005).
Printouts of the TESS information for the forgoing marks are attached hereto as Exhibits B – I.

Indeed, there is no easily applicable, objective test to determine whether or not a
particular mark, as applied to specific goods or services, is merely descriptive or suggestive.
However, in case after case, the TTAB has stated that any doubt in determining the fine line
between whether Applicant’s mark is suggestive or merely descriptive must be resolved in favor
of the Applicant by publishing the mark and allowing any person who believes he or she would
be damaged by registration of the mark to file an opposition. See In re Atavio, 25 USPQ2d
1361, 1363 (TTAB 1992).

CONCLUSION

For the reasons set forth above, Applicant respectfully requests that the instant refusal be
withdrawn and that its application be permitted to publish.

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