IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of

Thomas Jack Hulting

US Serial No: 77666826

Filed: February 9, 2009 Examining Atty: Tricia Sonneborn

Mark: NO MORE RINOS!

RESPONSE

To the Commissioner of Patents and Trademarks

Sir:

In response to the SOU Office Action issued July 6, 2010:

Request for reconsideration is respectfully requested.

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REMARKS

The applied-for mark is not merely informational and registration should therefore be
permitted.

A mark may be construed as merely informational in nature when, or to be common laudatory
phrases or statements that would ordinarily be used in business or in the particular trade or
industry, are not registrable. TMEP § 1202.04. To support the conclusion that the applied-for
mark NO MORE RINOS! is merely informational, examiner cites two cases. Each case cited is
distinguishable from the instant matter.

First, examiner cites In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB
1998). In Volvo the TTAB held, inter alia, that phrases DRIVE SAFELY, is a familiar
phrase that should remain in public domain, “since granting exclusive rights in this ordinary
and commonly used phrase to applicant automobile company would interfere with rights of
others in automobile industry to freely use phrase to promote safe driving and/or to assert
that purchasers can drive safely in their respective makes of automobiles.” Id.

Applicant concedes that admonitory phrases should remain in the public domain. This
concession, however, does not concern the mark NO MORE RINOS!

The present application is distinguished from Volvo. First, because that case involved was
concerned with the applicant’s attempt to acquire secondary meaning with a mark DRIVE
SAFELY that was already in the public domain, the mark could not serve to designate
source of “applicant automobile company’s cars on ground that applicant’s reputation for
safety gives phrase double entendre, indicating both that applicant’s cars enable one to ‘drive
safely’ and that applicant is concerned about safety of its customers, since second meaning
ascribed to phrase by applicant is not really different from first such meaning, and since there
is no ambiguity of meaning arising from admonition ‘drive safely’ that lends itself to more
than one interpretation, and therefore no double entendre which may be indicative of
source.” 46 U.S.P.Q.2d 1455 (P.T.O. T.T.A.B). In the instant application, however,
secondary meaning is not at issue, nor has evidence been submitted on the record to
sufficiently demonstrate that the mark has risen to the level of a common admonitory phrase.

Second, examiner cites In re Manco, Inc., 24 USPQ2d 1938, 1942 (TTAB 1992), in which
TTAB held the term THINK GREEN, which applicant seeks to register for mailing and
shipping boxes and for weatherstripping, would not be perceived as indicator of source,
regardless of whether it appears with background design, but instead would be regarded
simply as slogan of environmental awareness and ecological consciousness, particularly as
applied to paper and weatherstripping products; applicant’s use of color green on packaging
for its goods merely reinforces environmental theme conveyed by THINK GREEN.” Id. at
1938.

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A slogan can function as a trademark if it is not merely descriptive or informational. TMEP §
1202.04. The mark NO MORE RINOS! is distinguishable from Manco because the others have
not been shown to use the mark to describe or promote the applicant’s source of goods in t-shirts,
buttons, placards, and bumper stickers. The NO MORE RINOS! mark is also registrible because
it is arcane, because it is of uncommon usage, and because it serves the function of identifying
the source of applicant’s goods from Statesman Enterprises.

The instant application is more closely aligned with principles of In re the Hallicrafters Co., in
which the Board held that “[although] QUALITY THROUGH CRAFTSMANSHIP is laudatory,
others are not shown to be using term to describe or promote their goods; slogan is not so highly
laudatory or trite as to be incapable of serving function of trademark; slogan is registrable since it
performs trademark function of identifying applicant’s goods and distinguishing them from
goods of others.” 153 U.S.P.Q. 376 (TTAB 1967).

Moreover, the slogan is not so highly laudatory as to be incapable of serving function of
trademark. It is inherently distinctive. The mark is, at a minimum, suggestive because the plain
meaning of “NO MORE RINOS!” requires imagination, thought, and perception to reach a
conclusion as to the nature of the goods. A casual observer, without more, could not be
characterize the applicant’s mark as descriptive and, thus, requiring evidence of secondary
meaning under § 2(f) because it does not create in the mind of the consumer an immediate idea
as character and quality of the goods. The common, pedestrian consumer would be significantly
more likely to conclude that “RINOS” is a malapropism or phonetic misspelling, that it would be
to divine the meaning of the acronym.

The mark functions as a trademark to identify & distinguish applicant’s goods from those
of others and to indicate the source of applicant’s goods.

Evidence submitted in the Office Action Response demonstrates that the mark is plainly used in
conjunction with the source of the goods – i.e., Statesman Enterprises –so as to indicate the
source of the goods to the consumer.

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CONCLUSION

Reconsideration and allowance of the proposed mark is respectfully requested.

Sincerely,

/TJH/

Thomas J. Hulting
6717 Auto Club Road
Bloomington, MN 55438
Tel. (952) 942-9164
Fax. (952) 942-9252

/ETH/

Evan T. Hulting, Esq.
10729 Park Heights Avenue
Owings Mills, MD 21117
Tel. (612) 251-7440

January 6, 2011

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