April 19, 2010

RESPONSE TO OFFICE ACTION of October 19, 2009

CLAY BUSTER
Application Serial No. 77/781482

I. Remarks

As amended here, Applicant has applied to register its CLAY BUSTER trademark for
“soil conditioners for domestic and horticultural use; soil amendments, soil additives, soil
wetting agents; growing media for plants, garden soils, planting soils, potting mixes, potting
soils, compost, humus, loam, manure and peat” in Class 1. The Examining Attorney issued an
Office Action refusing registration on grounds that Applicant’s mark is merely descriptive.
Specifically, the Examining Attorney has determined that CLAY is “merely descriptive of a use
of the goods in that applicant sells soil conditioners and other products for use on clay soil.”
Applicant disagrees with the conclusion that CLAY as part of its mark is merely descriptive, but
has now disclaimed the term apart from its entire mark.

The Examining Attorney also determined that BUSTER means “[o]ne that breaks up
something; a crime buster.” Applicant urges the Examining Attorney to withdraw her citation,
however, because as set forth below, BUSTER is at least suggestive for Applicant’s goods.
Among other things, the U.S. Patent and Trademark Office (“USPTO”) has treated BUSTER as
a suggestive term, even previously granting a registration to Applicant’s CLAY BUSTER mark
for related goods in Class 31.

A. BUSTER Is At Least Suggestive
Generally a mark is merely descriptive and may not be registered on the Principal
Register if it “immediately conveys knowledge of the ingredients, qualities or characteristics of
the goods or services.” See, for example, In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205
U.S.P.Q. 505, 507 (C.C.P.A. 1980). By contrast, a mark is suggestive and may be registered if
some imagination, thought or perception is required to reach a conclusion as to the nature of the
goods or services. See Stix Products, Inc. v. United Merchants & Manuf., Inc., 295 F. Supp. 479,
166 U.S.P.Q. 777 (S.D.N.Y. 1968). Indeed, “a designation does not have to be devoid of all
meaning in relation to the goods and services” to be deemed suggestive, see TMEP § 1209.01(a).
The Trademark Trial and Appeal Board applies the same standard when determining whether a
component of a mark must be disclaimed. See In re C.J. Webb, Inc., 182 USPQ 63, 64 (TTAB
1974) (“A component of a mark which is ‘suggestive’ as opposed to “merely descriptive” would
not be unregistrable and therefore a disclaimer is not required.”)

The question whether a particular designation is merely descriptive must be determined
not in the abstract but in relation to the goods or services for which registration is sought, the
context in which the designation is being used on or in connection with the goods or services,
and the possible significance that it would have, because of such manner of use, to the average
purchaser of the goods or services. In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (T.T.A.B. 1979);
RESPONSE TO OFFICE ACTION of October 19, 2009
CLAY BUSTER
Application Serial No. 77/781482

Q-Tips, Inc. v. Johnson & Johnson, 95 U.S.P.Q. 264 (D. NJ 1952). Further, under the well-
accepted test for distinguishing between suggestive and merely descriptive marks, the mark must
describe Applicant’s goods or services with particularity in order to be descriptive. In re The
House Store, Ltd., 221 U.S.P.Q. 92, 93 (T.T.A.B. 1983); In re TMS Corp. of the Americas, 200
U.S.P.Q. 57, 58 (T.T.A.B. 1978) (the Board held that THE HOUSE STORE for retail store
services in the field of furniture and house wares was “too broad to describe such services with
immediacy and particularity and, consequently, should be viewed as suggestive rather than
impermissibly descriptive.”) Finally, descriptiveness “… is to be determined from the standpoint
of the average prospective purchaser.” In re Abcor Develop. Corp., 200 U.S.P.Q. 215, 218
(C.C.P.A. 1978).

In this case, Applicant’s mark CLAY BUSTER is in Class 1 for soil conditioners for
domestic and horticultural use; soil amendments, soil additives, soil wetting agents; growing
media for plants, garden soils, planting soils, potting mixes, potting soils, compost, humus, loam,
manure and peat. BUSTER has several dictionary meanings, including, for instance: (1) a
person who breaks up something: crime busters (this corresponds with the Examining Attorney’s
dictionary example); (2) something that is very big or unusual for its kind; (3) a loud, uproarious
reveler; (4) a frolic; spree; and (5) (initial capital letter) (used as a familiar term of address to a
man or boy who is an object to the speaker’s annoyance or anger): “Look, Buster, you’re
standing in my way!” A printed copy of these definitions as they appear online at
www.dictionary.com is attached as Exhibit A. Thus among other things, “buster” can identify a
type of person, or perhaps a person’s behavior.

Applicant’s CLAY BUSTER mark, however, employs BUSTER differently. As part of
Applicant’s mark, BUSTER is suggestive in part because it evokes the notion of a person whose
actions destroy or damage or break, possibly through the person’s sheer size or presence, and/or
through their destructive behavior. Therefore, BUSTER is at least suggestive because consumers
may understand that people can be “busters,” but do not immediately conceive that inanimate
objects can “bust” or somehow take overt and deliberate breaking action, at least without further
review of the goods themselves and/or their packaging. BUSTER is generally applied to people
or at least to sentient beings, and therefore, BUSTER as part of Applicant’s entire mark is
incongruous because it contributes to and suggests a human element or behavior in an otherwise
non-thinking and non-living thing (soil amendments, etc.). Overall, because CLAY BUSTER
does not immediately convey characteristics of Applicant’s goods, it may be registered as a mark
that is at least suggestive, and not merely descriptive.

B. BUSTER Marks On The Principal Register
The USPTO previously granted registration on the Principal Register to a number of
BUSTER marks, for a broad range of agricultural and other goods in Class 1, all without
requiring disclaimer of BUSTER. Indeed, SOIL BUSTER is registered for “soil conditioner and
nutrient” without disclaimer of BUSTER, and THATCH BUSTER is registered for “fertilizer for
use in reducing thatch” also without disclaimer of BUSTER. Moreover, the USPTO had
previously registered Applicant’s CLAY BUSTER mark for Applicant’s related goods in Class

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RESPONSE TO OFFICE ACTION of October 19, 2009
CLAY BUSTER
Application Serial No. 77/781482

31. A printed copy of the online USPTO record for this mark is attached here as Exhibit B.
Additional examples of such BUSTER registrations include:

Mark App. / Reg. Class/Goods/Services Notation
No.
SOIL BUSTER 1331493 Cl. 1 soil conditioner and nutrient BUSTER not
disclaimed
THATCH BUSTER 2789006 Cl. 1 fertilizer for use in reducing BUSTER not
thatch disclaimed
WAX BUSTER 2877414 Cl. 1 diesel fuel chemical additives BUSTER not
for treatment to improve fuel flow, disclaimed
modify wax buildup, prevent ice,
and lubricate
GLARE BUSTER 3152814 Cl. 1 anti-reflective anti-glare BUSTER not
spray coating for reversed image disclaimed
screens, namely television cathode
ray tubes, computer and video
cathode ray tubes
OIL BUSTER 3058710 Cl. 1 combination of an absorbent BUSTER not
and a hydrocarbon degrading disclaimed
material for absorbing
hydrocarbon spills
DUST-BUSTER 3280394 Cl. 1 foam dust suppressant for use BUSTER not
in road building, coal mining disclaimed
applications and on unpaved roads
BUSTER & Design 2130317 Cl. 1 bacteria for wastewater BUSTER not
treatment disclaimed
M-BUSTER 3310861 Cl. 1 desiccants BUSTER not
disclaimed
THE MILEAGE 3371294 Cl. 1 chemical fuel and oil BUSTER not
additives for enhancing engine disclaimed
performance and producing better
mileage efficiency
FLAT BUSTER 2524869 Cl. 1 sealing compound, namely, BUSTER not
pneumatic tire sealing compound disclaimed
MUD BUSTER 2413446 Cl. 1 aluminum sulfate for clearing BUSTER not
bodies of water, namely, ponds disclaimed
and lakes; aluminum sulfate used
to raise the acid content in soil
FOAM-BUSTER 2197863 Cl. 1 chemical defoamer for use in BUSTER not
oil and gas well drilling disclaimed
SLUMP BUSTER 2137866 Cl. 1 slump reducing admixture BUSTER not

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RESPONSE TO OFFICE ACTION of October 19, 2009
CLAY BUSTER
Application Serial No. 77/781482

Mark App. / Reg. Class/Goods/Services Notation
No.
used in the concrete industry disclaimed
TILE BUSTER 1856146 Cl. 1 water treatment chemicals BUSTER not
for use in swimming pools and disclaimed
spas
O-BUSTER 1951927 Cl. 2 chemical compounds used in BUSTER not
absorbent materials and desiccants disclaimed
for use in the food industry
DUST-BUSTER 1493758 Cl. 1 foam dust suppressant BUSTER not
disclaimed
ICE BUSTER & 1407239 Cl. 1 ice melting chemicals for use BUSTER not
Design on pavement, walkways, streets disclaimed
and the like
ICE BUSTER 1407237 Cl. 1 ice melting chemicals for use BUSTER not
on pavement, walkways, streets disclaimed
and the like
TACKLE BUSTER 1295335 Cl. 1 liquid fishpond fertilizer BUSTER not
disclaimed
FOAM BUSTER 1281142 Cl. 1 chemical defoaming agents BUSTER not
for use in swimming pools, spas disclaimed
and hot tubs
CRUST BUSTER 1048784 Cl. 1 lime and scale remover BUSTER not
disclaimed
RUST BUSTER 0980184 Cl. 1 water softener salt BUSTER not
disclaimed

Printed copies of the USPTO’s electronic records for these marks are attached here as Exhibit C.
The term BUSTER was not disclaimed in any of these prior marks, demonstrating that the
USPTO has already found that BUSTER generally is not descriptive. It also allows the inference
that the USPTO, in viewing BUSTER, has found that it is imbued with sufficient distinctiveness
to merit registration without disclaimer. The Applicant urges the Examining Attorney to follow
this precedent and permit Applicant’s CLAY BUSTER mark to proceed to registration on the
Principal Register.

C. Doubt About Descriptiveness Should Be Resolved In Applicant’s Favor

Sometimes the line between merely descriptive and suggestive marks can be quite thin;
the Board has acknowledged that drawing distinctions between descriptive and suggestive marks
involves highly subjective judgments and mandates that close questions are resolved through
publication. In re J. Ray McDermott & Co., 170 U.S.P.Q. 524, 525 (T.T.A.B. 1971); see also In
re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (T.T.A.B. 1972). Here, however, the other
determinations of the USPTO as to the suggestiveness of BUSTER at the very least raise serious

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RESPONSE TO OFFICE ACTION of October 19, 2009
CLAY BUSTER
Application Serial No. 77/781482

doubt as to whether this term is merely descriptive. The TTAB has held that any doubt about
descriptiveness should be resolved “in Applicant’s behalf…” In re Aid Laboratories, Inc., 221
U.S.P.Q. 1215, 1216 (T.T.A.B. 1983); and see In re Grand Metropolitan Foodservice Inc., 30
U.S.P.Q.2d 1974, 1976 (T.T.A.B. 1994) (finding MUFFUNS (Stylized) not merely descriptive of
muffins because “any doubt with respect to the issue of descriptiveness should be resolved in
applicant’s behalf”). Accordingly, Applicant respectfully requests that the Examining Attorney
withdraw the refusal.

II. Significance Of Mark

In response to the Examining Attorney’s inquiry, Applicant submits that CLAY BUSTER
is not a term of art in the lawn and garden industry. Applicant’s goods are intended for use in
clay soils, to make them more hospitable to plants including for instance through regulation of
the wetness possibly found in clay soils, but also for instance through the addition of nutrients
and the like. Applicant’s mark does not identify a geographic place.

III. Conclusion

For the reasons set forth above, BUSTER as a component of Applicant’s mark is at least
suggestive (and certainly as suggestive as any of the BUSTER marks listed above).
Accordingly, Applicant respectfully request that the Examining Attorney accept Applicant’s
disclaimer of CLAY made here and withdraw the citation otherwise refusing registration on
grounds of descriptiveness.

Respectfully submitted,

/Gail I. Nevius Abbas/

Gail I. Nevius Abbas
Manatt, Phelps & Phillips, LLP

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