IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant: Market Torque, LLC Atty. Docket No.: KBMAR-0002

Serial No.: 77,627,707 Law Office: 114

Filed: December 5, 2008 Examiner: Regina C. Hines, Esq.
Mark: RFP BRIEFS (as stylized)

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

Madam:

RESPONSE

Applicant submits the following remarks in response to the First Office Action

dated March 10, 2009.

The Examining Attorney has refused registration of Applicant’s mark RFP

BREIFS(as stylized) (the “Mark”) for “Publications, namely, books, magazines, articles,

newsletters, brochures, manuals, reports, summaries, and data sheets in the fields of

business services, government services and information, and supply contracts” under 15

U.S.C. § 1052(e)(1), on the ground that it is merely descriptive of the goods provided

thereunder. Applicant submits that this refusal is in error and requests reconsideration of

this ruling.

I. The Mark Includes Multiple Design Elements Suggestive of the Goods Provided

Thereunder.
Existing design elements within the mark are suggestive of the goods provided by

the mark, and even if they were deemed distinctive on their own, there yet need to be an

analysis of whether the combination of multiple descriptive components is transformative

of the mark into a suggestive whole. See e.g. TMEP 1209.03(d). The Mark, reproduced

below, includes the elements RFP, BRIEFS, a line, and a period.

The Examiner asserted that the present Mark is not capable of registration: “The

applicant includes a small line and a period in connection with the wording RFP

BRIEFS, however, it is not enough to change the overall descriptive nature of the

wording.”(emphasis added). Applicant trusts that the Examiner will act in reliance upon

the nature of design elements, rather than stature and quantity.

The Mark includes a myriad of design elements, each of which must be

considered in analyzing the Mark for distinctiveness. For example, the mark includes the

following characteristics:

• Standard fonts for ‘RFP.’

• A midpoint line crossing the midsections of ‘R’ and ‘F.’

• The midpoint line includes skewed dimensions.

• The ‘P’ lacks ornamentation in stark contrast to the ‘R’ and ‘F.’

• The term ‘Briefs’ is rightwardly angled.

• The term ‘Briefs’ concludes with a period and that period is angled.
• The angled term ‘Briefs’ is suggestive of brevity, as objects in motion are

typically angled to comport with the laws of momentum and also indicative of the

effects of wind resistance.

• The period proximate to ‘Briefs’ is suggestive of the brevity of the services

provided under this mark as it indicates a complete thought has transpired in this

brief phrase.

Examiner cogently cites caselaw related to the use of punctuation and its effect on marks,

particularly related slashes and hyphens to the lining of Applicant’s Mark and a

punctuation mark to the period of Applicant’s Mark. A slash and hyphen possess

grammatical significance and are linguistically functional; the present Mark’s mid-point

line includes no linguistic functionality and is purely decorative. The exclamation point

capping the SUPERHOSE! mark in Examiner’s cited case In re Samuel Moore & Co.,

195 USPQ 237, 240 (TTAB 1977), bore no apparent significance beyond the function of

a typical exclamation point, whereas the period in Applicant’s Mark bears a functional

meaning that is eclipsed by its more prominent suggestive meaning, i.e. brevity.

The multiple design elements place this Mark within the suggestive stratum of the

distinctiveness continuum. Examples of registered design marks bearing little more than

a line coupled with a descriptive term include U.S. Registration Nos.:

• U.S. Registration No. 777,217 (for tubes made at least in part of

paperboard);
• U.S. Registration No. 2,925,118 (for Medical syringes; lancets);

• U.S. Registration No. 2,784,238 (for Retail hardware store services); and

• U.S. Registration No. 1,494,664 (for printing and printing design

services).
II. Conclusion

In light of the foregoing remarks, Applicant requests registration of the Mark.

Respectfully Submitted,

Date: 9.10.2009

M. Keith Blankenship, Esq.
General Counsel, P.C.
6862 Elm Street
Suite 800
McLean, VA 22101
Phone: 703-556-0411
Fax: 703-556-6540