Office Action Response
Serial No. 77/685146
Mark: REFINER’S RETURN PAK

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. 77/685146 for the mark

REFINER’S RETURN PAK (the “Mark”).

DISCLAIMER

No claim is made to the exclusive right to use “RETURN PACK” apart from the

mark as shown.

AMENDMENT OF GOODS

Please amend the goods for the Mark as follows:

Traceable security pouches provided as a component of the
purchase of jewelry, watches, and other items made of precious
metals, namely, paper mail pouches and plastic or paper pouches
for merchandise packaging. (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.

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 PAK is descriptive of Applicant’s goods because the wording describes a

particular type of packaging system used to transport items in the jewelry industry. Applicant

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

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RETURN PAK 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 PAK 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.,

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

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(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 goods offered in connection with the Mark. The Examining

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

a phonetic equivalent of “REFINER’S RETURN PACK,” which, in the jewelry industry refers

to a specific packaging system to securely transport various items. However, Applicant’s Mark

is not descriptive of the applied-for goods, as the Mark is solely used in reference to Applicant’s

mailing pouches, and 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

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

secure, traceable mailing pouch—the goods under the REFINER’S RETURN PAK mark—and

send it to Cash4Gold’s headquarters in Florida.

Taken as a whole, Applicant’s Mark is used in connection with its traceable,

secure, mailing pouches in Class 16. The word “refiner” is defined as “a person, device, or

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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 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. The secure mailing pouches offered under Applicant’s Mark

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 PAK 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 PAK mark is intended to be

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

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

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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 the pouches themselves, the contents of the

pouches, or what is returned to the customer.

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

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

of the Applicant’s pouches. 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.

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.” In support of its position, the

Examining Attorney has attached three printouts of websites. Applicant respectfully clarifies

that each of the three articles that the Examining Attorney has attached actually refers to

Cash4Gold, and merely evidence the exclusive manner in which Applicant uses the mark

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REFINER’S RETURN PAK in commerce. Indeed, other parties who offer similar services to

Cash4Gold refer to their mailing pouches under different marks. (See website printouts, Exhibit

B.) Accordingly, the evidence submitted by the Examining Attorney supports that the

REFINER’S RETURN PAK mark is not descriptive and is exclusively used to refer to

Applicant.

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

respectfully submits that the application should proceed to publication.

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