IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
___________________________________________________________________________________

Applicant: EZ Beach Attachments, LLC

Serial No.: 77785043 Filed: 7/20/2009

Trademark Atty: Stephanie M. Ali

Word Mark: FAT SAND BIKE
______________________________________________________________________________

I hereby certify that this correspondence is being electronically submitted via
Trademark Electronic Application System (TEAS): July 6, 2010. Please note that July 5, 2010
was a federal holiday and this is being filed within six (6) months in light of the holiday.

/Bambi Faivre Walters/
Printed Name: Bambi Faivre Walters
______________________________________________________________________________
RESPONSE TO
JANUARY 5, 2010 OFFICE ACTION
______________________________________________________________________________

This Response is filed in reply to the Office Action mailed on January 5, 2010. The
Applicant respectfully submits the following response, along with specimens of the applied for
mark in use in commerce, as well as the necessary declaration. Applicant submits that the above-
identified trademark application for FAT SAND BIKE is in condition for allowance.

Applicant respectfully responds as follows:

Mark is not “Merely Descriptive” as defined in 15 U.S.C. § 1052(e)(1)

In the January 5th, 2010 Office Action Examiner Ali states “the applied-for mark merely
describes a feature of the applicant’s goods.” Examiner Ali further states that “[a] term is merely
descriptive if it conveys an immediate idea of the ingredients, qualities, or characteristics of the
identified goods. See In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422
(Fed. Cir. 2005); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d
1807, 1812 (Fed. Cir. 2001).”
The burden of establishing that Applicant’s mark is merely descriptive lies on the
Examining Attorney. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007). Applicant asserts that Examiner Ali has failed to meet this burden.
Applicant has disclaimed “bike” because it immediately conveys a characteristic of
Applicant’s product. However, when determining whether a mark is merely descriptive it must
be viewed in its entirety, and not just its individual parts. In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1030 (TTAB 2007). Applicant contends that its mark is not suggestive nor is it
description because the terms “fat”, “sand” and “bike” would not be terms that an ordinary
consumer would associate with the Applicant’s description of goods. Furthermore, if the
USPTO insists that these are suggestive, then the Applicant respectfully submits that the
consumer “must exercise mature thought or follow a multi-stage reasoning process in order to
determine what product or service characteristics the term indicates.” In re Tennis in the Round,
Inc., 199 USPQ 496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-365 (TTAB
1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). That is, why
wouldn’t a consumer could think these terms as applying to goods associated with obese
individuals who ride a bike for use in the sand? Or, why not for a very large, oversized sand
bike? Or, even a very large sand castle in the shape of a bike?
Examiner Ali asserts the term “fat bike” refers the bicycles with wide tires. To support
this claim she has attached three websites (www.wildfirecycles.com, www.cyclelicio.us,
www.arcticcylces.com) to the Office Action and directly quotes www.wildfirecycles.com
(“specially designed for year round use on snow, sand, and other soft and sketchy surfaces…..
It’s the best beach bike around plus it works fantastic on exposed roots and rough rocky trails.”).
See Exhibit 1.
This quote does not describe a descriptive term “fat bike”. Instead, the quote refers to the
product associated with Wildfire Cycles’ brand “FatBike”. See, www.wildfirecycles.com.
Every instance on the Wildfire Cycles website of the term “FatBike” has the “F” and “B”
capitalized with no space between the words. Further evidence of this is available from the
website Examiner has relied on, cyclelicio.us: “‘FatBikes’ is the trademark for the bicycles from
Wildfire Cycles in Alaska.” (emphasis added on explicit description of “trademark” by
Applicant).
All of the websites Examiner Ali has listed refer to all-terrain mountain biking in Alaska.
This is not descriptive of Applicant’s product. An article published by the Anchorage Daily
News explains the beginning of the industry that Examiner Ali is referring to and why consumers
within this industry often make reference to the mark FatBike. (See Exhibit 3, also available at
http://www.adn.com/play/recreation/columns/medred/story/33820.html).
Even if the flaws in Examiner Ali’s supporting evidence are ignored, three instances of
websites using the term “FatBike” is not sufficient to show that consumers would immediately
think of that term as descriptive, especially considering the term seems to be confined to all-
terrain bicycles used in Alaska. The consumers of Applicant’s product would very likely be
unaware of this niche market and any terms used within it. Even if consumers were aware of this
market they would recognize the term as a mark and be aware that its use is generally confined to
Alaska. “Fat Bike” is not a term used within the bicycling industry as a whole and would not be
thought of as descriptive by consumers of Applicant’s product.
FAT SAND BIKE is not descriptive because it does not immediately convey a
characteristic of Applicant’s product. Applicant’s product is obviously and admittedly a “bike”,
and so this term has been disclaimed. However, as “fat” does not describe the terms “sand”,
“bike”, nor “sand bike” the consumer must conduct mature thought or follow a multi-stage
reasoning process to determine that “fat” refers to wide tires. How does the term “fat” imply the
term “tire”? Furthermore, “sand” does not describe “fat”, “bike”, nor “fat bike”. A consumer
would not even recognize these terms as suggestive terms for the product. For example, why
wouldn’t a consumer could think these terms as applying to goods associated with obese
individuals who ride a bike for use in the sand? Or, why not for a very large, oversized sand
bike? Or, even a very large sand castle in the shape of a bike? While Applicant’s product can be
used on sand, it is well suited to be ridden on a variety of terrain (gravel, mud, roads, off road,
etc.) and is not limited to sand.
Conclusion
Applicant asserts, based on the above arguments, that the mark FAT SAND BIKE is not
“merely descriptive” as defined in 15 U.S.C. § 1052(e)(1).

Applicant respectfully submits in good faith that all refusals, rejections, and/or objections
have been overcome and that the applied for mark is in condition for allowance.

If the Office has any questions, the Office is invited to contact the undersigned at (757)
253-5729 (office), (757) 784-1978 (cellular), or [email protected]

Respectfully submitted,

/Bambi F. Walters/
Bambi F. Walters, Reg. No. 45,197
Attorney for Applicant
PO Box 5743
Williamsburg, VA 23188
Telephone: 757-253-5729
Date: 6 July 2010