Office Action Response
Serial No. 77/685361
Mark: REFINER’S RETURN KIT

OFFICE ACTION RESPONSE

This responds to the Office Action issued by the United States Patent and

Trademark Office on June 4, 2009 for Application Serial No. 77/685361 for the mark

REFINER’S RETURN KIT (the “Mark”).

DISCLAIMER

The Examining Attorney has requested that Applicant disclaim the wording

“RETURN PACK” apart from the Mark as shown. Applicant respectfully notes that this

wording is not included in Applicant’s Mark and cannot disclaim matter that is not part of

Applicant’s Mark.

However, to the extent that the Examining Attorney requests that Applicant

disclaim the wording “RETURN KIT”, Applicant submits that no claim is made to the exclusive

right to use “RETURN KIT” apart from the mark as shown.

AMENDMENT OF GOODS

Please amend the goods for the Mark as follows:

Packaged supplies provided as a component of the purchase of
jewelry, watches, and other items made of precious metals,
namely, packaged kits comprised of paper and plastic secure mail
pouches that are traceable, printed content description forms and
instruction manuals for assembling and mailing return pouches.
(Class 16)

REMARKS

Applicant Green Bullion Financial Services, LLC d/b/a Cash4Gold (“Cash4Gold”

or “Applicant”) is pleased to note that the Examining Attorney has found no similar registered or

pending mark which would bar registration under Section 2(d) of the Trademark Act.

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The Examining Attorney has initially refused to register Applicant’s Mark on the

ground that the Mark is descriptive of Applicant’s goods and cannot be registered under Section

2(e) of the Trademark Act. Specifically, the Examining Attorney states that Applicant’s mark

REFINER’S RETURN KIT is descriptive of Applicant’s goods, because the wording

immediately describes the goods, namely, refiner’s kits for securely returning items. Applicant

respectfully disagrees with Examining Attorney’s refusal to register Applicant’s REFINER’S

RETURN KIT mark because the mark is at least suggestive as it does not immediately convey

the nature of Applicant’s identified goods.

ARGUMENT

A. Applicant’s REFINER’S RETURN KIT Mark is Suggestive

Applicant’s Mark is not descriptive. A mark is descriptive if it describes an

ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or

services. TMEP § 1209.01(b). A descriptive mark immediately conveys a real and unequivocal

idea of the nature of the Applicant’s goods and services or the quality, purpose, function, or use

for which the products are to be used. See In re Southern National Bank of North Carolina, 219

U.S.P.Q. 1231 (TTAB 1983) (emphasis added). Whether a term is merely descriptive is

determined not in the abstract, but in relation to the goods or services for which registration is

sought, the context in which the mark is being used on or in connection with the goods or

services, and the possible significance that the term would have to the average purchaser of the

goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204 U.S.P.Q. 591,

593 (TTAB 1979).

By contrast, a suggestive mark conveys an impression of a good or service, but

requires the exercise of “imagination, thought, and perception” or a “multi-stage reasoning

process” to reach a conclusion as to the nature of the offering. In re Tennis in the Round, Inc.,

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199 U.S.P.Q. 496, 497 (TTAB 1978); In re Nett Designs, 236 F.3d 1339, 1341 (Fed. Cir. 2001).

Suggestive marks, however, need not be devoid of all meaning in order to be entitled to

registration. TMEP § 1209.01(a). To the extent that any doubt exists as to whether a mark is

descriptive or suggestive, such doubts are to be resolved in favor of Applicant and the Mark

should be published. In re Merrill Lynch, Price, Fenner, and Smith, Inc., 828 F.2d 1567, 1571

(Fed. Cir. 1987); In re Atavio, 25 U.S.P.Q. 2d 1361 (TTAB 1992); In re Morton-Norwich

Products, Inc., 209 U.S.P.Q. 791 (TTAB 1981).

Applicant’s Mark is suggestive for the applied-for goods because it does not

immediately convey the nature of Applicant’s goods used in connection with the Mark. The

Examining Attorney contends that the Mark is descriptive of Applicant’s goods because

Applicant’s Mark “immediately describes the goods, namely refiner’s kits for securely returning

items.” However, Applicant’s Mark is not descriptive of the applied-for goods, as the Mark

requires imagination and thought by consumers to understand the nature not only of the goods

offered under Applicant’s Mark, but its business model as well.

Applicant offers an innovative twist on a concept practiced by pawnbrokers and

jewelry exchanges from time immemorial: selling one’s unwanted jewelry for money. Instead

of requiring customers to make an in-person visit to a traditional “brick and mortar” pawn shop

or jewelry exchange to consummate transactions, harnessed the power of e-commerce, enabling

customers to sell their unwanted jewelry through its website, located at www.cash4gold.com (the

“Cash4Gold Website”). Customers visiting the Cash4Gold Website fill out an online form and

request a comprehensive set of unique and creative instructions and marketing materials,

including a secure, traceable mailing pouch to be sent to their mailing address. Upon the receipt

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of the these materials, the customer can deposit their unwanted gold, silver, or platinum into a

secure, traceable mailing pouch and send it to Cash4Gold’s headquarters in Florida.

Taken as a whole, Applicant’s Mark is used in connection with packaged supplies

that include marketing and information materials and secure mailing pouches in Class 16. The

word “refiner” is defined as “a person, device, or substance that removes impurities, sediment, or

other unwanted matter from something.” (See definition attached as Exhibit A.) When used

with respect to the applied-for goods in Class 16, the term “refiner” is not descriptive of the

pouches or marketing materials, any of the items in the pouches, or what is received in exchange

for the items in the pouches. None of the goods identified to be used under Applicant’s Mark

remove any impurities, sediment, or other unwanted materials from the precious metals or

unwanted jewelry that consumers send to Applicant. These materials and pouches themselves do

not refine any jewelry or precious metals.

Applicant uses the distinctive term REFINER’S in its Mark to suggest to

consumers that unlike a traditional pawn broker or jewelry exchange, Applicant accepts

unwanted or broken jewelry through its website because it is ultimately melted and refined rather

than re-sold to other consumers, pawn brokers, or jewelry exchanges. By submitting unwanted

or broken jewelry to Applicant, rather than a traditional pawn broker or jewelry exchange,

consumers avoid having to personally visit a pawn shop or jewelry exchange store, which can be

uncomfortable for some consumers. The mark REFINER’S RETURN KIT suggests a key

advantage of using Applicant’s services, namely, avoiding the need to visit a physical location in

order to sell precious metals and unwanted jewelry.

Moreover, Applicant’s REFINER’S RETURN KIT mark is intended to be

suggestive of the expertise and knowledge that it has in the field of precious metals evaluation,

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assaying, and recycling. Because Applicant has experience with refining precious metals,

Applicant has more knowledge and expertise in handling precious metals than most traditional

pawn brokers and jewelry exchanges, and even from other competitors who purchase precious

metals and jewelry over the Internet who do not refine items sent in by consumers. Further,

because the ultimate melting and/or refining of the unwanted jewelry and precious metals is so

far removed from when the consumer deposits their unwanted or precious jewelry into these

pouches, Applicant’s REFINER’S RETURN PAK mark does not immediately convey to

consumers Applicant’s identified goods. In re Bright-Crest, Ltd., 204 U.S.P.Q. at 593-94.

Applicant’s Mark is certainly not descriptive of any of the marketing materials, information, or

mailing pouches themselves, their contents, or what is returned to the customer.

Applicant has not applied to register the REFINER’S RETURN KIT mark in

connection with refining services, and therefore, the term REFINER’S is not merely descriptive

of the Applicant’s pouches. Further, the commercial impression conveyed by Applicant’s Mark

requires consumers to engage in mental leaps in understanding key elements of Applicant’s

business model: (1) that the consumer’s unwanted jewelry and precious metals will not be resold

in its original state, but rather, will be eventually melted and/or refined; (2) that Applicant’s

experience in refining precious metals imbues it with greater experience in evaluating the

consumer’s unwanted jewelry; and (3) that Applicant’s services do not require consumers to

make an in-person visit to a pawnbroker or jewelry exchange. Accordingly, Applicant’s

REFINER’S RETURN KIT Mark is suggestive of the quality, expertise and professionalism that

accompany Applicant’s services, and of the distinction between Applicant’s services and

traditional pawn broker and jewelry exchange services.

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B. The Evidence Does not Support that Applicant’s Mark is Descriptive

In support of its contention that Applicant’s REFINER’S RETURN KIT Mark is

descriptive, the Examining Attorney asserts that “the evidence shows that within the jewelry

industry, the wording refers to a specific packaging system” that are known as “refiner’s kits.”

In support of its position, the Examining Attorney has attached several printouts from websites.

Applicant respectfully disagrees that the evidence submitted by the Examining Attorney

evidences that there is such a thing as “refiner’s kits” in the industry that Applicant operates its

business in.

First, several of the pieces of evidence that the Examining Attorney relies upon

merely evidence that REFINER’S RETURN KIT are exclusively used in connection with

Applicant’s services. For example, the Examining Attorney points to two different websites with

advertisements for Cash4Gold’s business, which merely evidence the exclusive manner in which

Applicant uses the mark REFINER’S RETURN KIT in commerce. Indeed, other parties who

offer similar services to Cash4Gold refer to these materials under different marks. (See website

printouts, Exhibit B.)

Two other websites which the Examining Attorney points to appear to be

examples of misappropriation of Applicant’s Mark. Although this may be evidence of

infringement, it is not evidence of descriptive use of the applied-for mark. Indeed, for one of

these websites, Applicant sent a cease and desist letter over the misappropriation of the

REFINER’S RETURN KIT Mark and the website has now been changed so that it no longer

includes any reference to Applicant’s Mark. (See copy of cease and desist letter, Exhibit C; see

also printout of webuygold.tripod.com, Exhibit D.)

Accordingly, the evidence submitted by the Examining Attorney does not

evidence that in the jewelry industry, the term “refiner’s kits” signify any packaging use to

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securely return items. To the contrary, the evidence merely demonstrates the manner in which

Applicant uses its Mark or evidences misappropriation of Applicant’s Mark by unauthorized

third parties.

As this attends to all outstanding issues concerning the application, Applicant

respectfully submits that the application should proceed to publication.

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