IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

___________________________________

In re Application of
Gulf Coast Nutritionals, Inc.
Law Office 104
Serial No.: 77/792224
Trademark Attorney
Filed: July 29, 2008
Jenny K. Park
Mark: SEA MOBILITY JOINT RESCUE
___________________________________

REMARKS

A first office action in the above dated November 10, 2009

has been received electronically and its contents carefully

noted.

RESPONSE

Applicant submits herewith evidence and arguments in

support with the following response.

DISCLAIMER

The Examining Attorney has requested of a disclaimer of

the terms “SEA” and JOINT.” Applicant respectfully submits the

following response:

Applicant disclaims the exclusive right to use “JOINT”
apart from the mark as shown, but does not thereby
relinquish any common law rights it may have in said word

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Mark: SEA MOBILITY JOINT RESCUE

apart from the mark as shown. The submission of
Applicant’s disclaimer herein is conditional upon the
withdrawal of any pending, or later issued, refusal, if
any, and the application having completed the publication
period.

THE EVIDENCE SUPPORTS THAT THE TERM “SEA” SHOULD NOT BE
DISCLAIMED

Applicant respectfully submits that the Examiner Attorney

is improperly dissecting the composite mark SEA MOBILITY JOINT

RESCUE, a term which must be taken together as a whole, when

requesting a disclaimer of the term SEA from Applicant.

In order to be proper subject matter for a disclaimer a

term must describe a characteristic of Applicant’s goods.

Here, the term SEA is not descriptive, and rather is fanciful

or suggestive at worst. The Examiner Attorney has failed to

show that the SEA describes a location, or any component or

aspect of Applicant’s goods. The refusal therefore must be

based on conjecture alone, unsupported by evidence. As such,

the refusal is totally inappropriate. Further, the Examiner

Attorney’s analysis relies heavily on dissecting the

Applicant’s mark, which is not permitted under the rules and

authority governing examining of the present application.

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ANTI-DISSECTION RULE

Additional support for the registrability of Applicant’s

trademark arises when applying the anti-dissection rule as is

required in the present matter. Applicant respectfully submits

that the Examining Attorney may be inappropriately dissecting

Applicant’s mark into separate component parts in support of

the refusal to register. 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. 1 McCarthy Trademarks and Unfair Competition

4th Ed. §11:26 (1977). “The commercial impression of a

trademark 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. Commissioner of Patents, 252 U.S. 538, 545-46 (1920).

The validity of a composite mark must be determined by

looking at the mark as a whole. Id. As stated above, a

composite mark should not be fragmented into its various

pieces. A composite mark must be considered in its entirety.

In re Standard Elektrik Lorenz Aktiengesellschaft, 152 U.S.P.Q.

563 (CCPA 1967). When considering Applicant’s mark as a whole,
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Mark: SEA MOBILITY JOINT RESCUE

any alleged descriptive feature of Applicant’s mark is clearly

lost, as the entire composite mark represents a distinctive

mark which Applicant has successfully and extensively utilized

to promote its goods.

This rule is appropriate in the instant case because,

Applicant’s mark “SEA MOBILITY JOINT RESCUE” is a unitary and

distinctive mark which is thus entitled to registration. The

elements in Applicant’s marks are so integrated and/or merged

together that they cannot be regarded as separable units. If

the elements of a mark are so merged together that they cannot

be regarded as separate elements, the mark is a single unitary

mark. McCarthy, Trademarks and Unfair Competition at §19.20[4];

EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981).

Applicant respectfully traverses the Examining Attorney’s

requirement that “SEA” be disclaimed. It is black letter law

that a trademark is used as a proper adjective. In this case

the term SEA is not generic and not merely descriptive but

rather is a trademark term distinguishing the goods in a

typical trademark fashion.

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The Examining Attorney has asserted that “the proposed

wording ‘SEA’ immediately conveys that the goods or the

ingredients for the goods come from the ‘sea’.”

Applicant conducted a search of the Trademark Electronic

Search System on January 11, 2010, and found the following

results (see Composite Exhibit 1):

• 1,440 current registrations and applications which include

the term SEA, of those approximately 1,263 do not have

disclaimers of the term SEA;

• 72 current Class 5 records which include the term SEA, of

those approximately 61 do not have disclaimers of the term

SEA.

Applicant respectfully points to a few examples of the

current registrations and applications in Class 5 that have NOT

been required to disclaim SEA (see Composite Exhibit 2).

Mark: SEA PET
Reg. No. 2415516
Goods: Nutritional supplements in the form of treats for
animals, namely, dogs, cats, horses and other domestic
pets
Disclaimer: PET

Mark: LIFE FROM THE SEA
Reg. No. 1889143
Goods: Dietary supplements and dietary food supplements

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Mark: SEA CURE
Reg. No. 1413934
Goods: Copper medication for use in marine aquariums for
treatment of protozan parasites on marine fish

Mark: SEA TABS
Reg. No. 1144677
Goods: Vitamin-mineral supplements for marine animals
Disclaimer: TABS

Mark: SEA-BOND (Stylized)
Reg. No. 2855766
Goods: Denture adhesives

Mark: SEA-BOND (Stylized)
Reg. No. 2972084
Goods: Preparations for relining dentures

Mark: SEA-BOND
Reg. No. 2972085
Goods: Preparations for relining dentures

Mark: HEALTH FROM THE SEA
Reg. No. 3504999
Goods: Food supplements

Mark: SEA SIDE (Stylized)
Reg. No. 127469
Goods: Fresh citrus fruits, namely, lemons

Mark: SEA BREEZE
Reg. No. 92041
Goods: Lotion for treating the skin

Mark: SEA CHONDROITIN
Reg. No. 2202214
Goods: Sea cucumber food supplement
Disclaimer: Chondroitin

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Applicant also respectfully notes that there are numerous

registrations that did not disclaim the term SEA, even though

the goods do in fact come from the sea (see Composite Exhibit

3).

Mark: SEA LEGS EXTREME
Reg. No. 3388171
Goods: Seafood, namely, surimi seafood and seafood in
general

Mark: SEA LEGS LOBSTER SUPREME
Reg. No. 1691773
Goods: Processed seafood

Mark: SEA LEGS SALAD-REDI
Reg. No. 1698461
Goods: Processed seafood

Mark: SEA LEGS SUPREME
Reg. NO. 1324861
Goods: Fish and crabmeat based frozen crab leg substitute

Mark: SEA LEGS SELECT
Reg. No. 1297872
Goods: Fish and crabmeat based frozen crab leg substitute

Mark: SEA LEGS
Reg. No. 1153302
Goods: Fish-based frozen crab leg substitute

While each case is decided on its own facts, prior

government actions by the USPTO is instructive to the public in

choosing a mark for use and deciding which marks they should

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avoid. If the public is unable to rely on prior actions by the

Examining Corps in very similar situations, then there is a

lessening in the confidence an applicant may place in its study

of the record.

It is a fact that Applicant’s mark requires a consumer to

exercise “mature thought or follow a multi-stage reasoning

process” to determine attributes of Applicant’s goods. In re

Tennis in the Round, Inc., 199 U.S.P.Q. 496 (TTAB 1978) (TENNIS

IN THE ROUND held not descriptive of tennis facilities); Rodeo

Collection, Ltd. v. West Seventh, 2 U.S.P.Q.2d 1204, 1206, (9th

Cir. 1987) (If a consumer must use more than a small amount of

imagination to make the association of service attribute, the

mark is suggestive and not descriptive.)

BENEFIT OF THE DOUBT GOES TO APPLICANT

There is a fine line between marks that are descriptive

and marks that are suggestive. In In re Shutts, 217 U.S.P.Q.

363 (TTAB 1983)(SNO-RAKE held not merely descriptive of a snow

removal hand tool), the Board recognized that the

suggestive/descriptive dichotomy can require the drawing of

fine lines and that it often involves a good measure of
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subjective judgment. The court in Schutts held that SNO-RAKE

presented just such a challenge in making the necessary

classification. It decided the dilemma by stating that when

the line between suggestive and descriptive marks is so fine,

any doubt must be resolved in the applicant’s favor. The Board

stated:

[W]e have doubts about the “merely descriptive”
character of the mark before us and, unlike the
situation in determining likelihood of confusion under
Section 2(d) of the Trademark Act, it is clear that
such doubts are to be resolved in favor applicants.
In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972)(DRI-
FOOT for anti-perspirant foot deodorant); In re Ray J.
McDermott and Co., Inc., 170 USPQ 524 (TTAB
1971)(SWIVEL-TOP for fuel transfer mooring buoys). In
re Shutts, at 365.

Applicant’s mark is clearly less descriptive than SNO-

RAKE. Any doubt as to this must be resolved in favor of

Applicant. The fact that the Examining Attorney is uncertain

in stating a singular descriptive basis, but rather makes of

record many varied definitions, is an indication of the non-

descriptiveness of the mark.

In order to continue with a refusal in this case, the

Examining Attorney would have to rely upon a series of

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impermissible assumptions, all of which would have to be made

in the light least favorable to the applicant.

CONCLUSION

In light of the foregoing, Applicant therefore

respectfully requests that the Examining Attorney reconsider

her position and pass the application to publication.

Respectfully submitted,

/JENNIFER L. WHITELAW/
JENNIFER L. WHITELAW
WHITELAW LEGAL GROUP
Attorney for Applicant
3838 Tamiami Trail North
Third Floor
Naples, Florida 34103
Telephone: (239) 262-1001
Facsimile: (239) 261-0057
Email [email protected]

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CERTIFICATE OF MAILING

I HEREBY CERTIFY that the original of this Response to
Office Action 1 is being submitted electronically at the TEAS
system at www.uspto.gov on April 20, 2010.

/JENNIFER L. WHITELAW/
JENNIFER L. WHITELAW

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