IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK EXAMINING OPERATION
APPLICANT: RowZone, LLC
SERIAL NO: 77/767447
MARK: ROWZONE (AND DESIGN)

RESPONSE TO OFFICE ACTION
I. INTRODUCTION

On October 2, 2009, an office action was issued by the United States Patent and

Trademark Office (“USPTO”) in response to applicant RowZone, LLC’s (“Applicant”)

application (the “Application) to register the mark ROWZONE (and design) (the

“Mark”), which was filed on June 24, 2009. In the office action (the “Office Action”),

the examining attorney handling the Application (the “Examiner”) requested that

Applicant disclaim the descriptive wording “Row” apart from the Mark as submitted

pursuant to 15 U.S.C. §1056(a), TMEP §§1213, 1213.03(a) on the grounds that “Row”

merely describes a feature of the services offered by Applicant. Examiner’s determination

appears to be based on Examiner’s misunderstanding that the mark Applicant seeks to

register is “ROW ZONE” because both the drawing and specimen Applicant initially

submitted with the Application depicted the word elements of the Mark, “Row” and

“Zone,” separated by the design element of the Mark.

Applicant now submits an amended drawing and specimen with this response

which correctly shows the Mark “ROWZONE” (and design) as a single, unitary mark,

which is consistent with: (i) how Applicant actually uses the Mark in interstate

commerce; and (ii) the literal element of the Mark as described in the Application. As a

single, unitary mark, both TMEP §1213.05 and TMEP §1213.05(a) expressly provide

that Applicant need not disclaim any element of the Mark (even if they would be
otherwise unregisterable) because these elements are so merged together that they cannot

be regarded as two separate elements.

Therefore, in light of Applicant’s amended specimen and drawing demonstrating

that the Mark is unitary, Applicant respectfully requests that Examiner withdraw its

disclaimer requirement of the term “Row” and approve Applicant’s Application for

publication.

II. ISSUE

The sole issue before the Examiner is whether or not Applicant is required to

disclaim the component “Row” as an unregisterable component of Applicant’s Mark

despite the fact that the literal element of the Mark is unitary as depicted in Applicant’s

amended drawing and amended specimen.

III. PRELIMINARY MATTER

As previously discussed, Applicant has submitted an amended drawing and

specimen of the Mark “ROWZONE” (and design), which correctly shows the Mark as it

used by Applicant in interstate commerce. Applicant respectfully requests that Examiner

review these submissions and amend the Application accordingly prior to reviewing

Applicant’s argument below.

IV. ARGUMENT

As the following legal arguments will demonstrate, Applicant’s Mark is unitary

and therefore Applicant should not be required to disclaim the term “Row” or any other

element of the Mark.
A. Applicant’s Mark, as Depicted in Applicant’s Amended Drawing and
Specimen, is Unitary in Nature.

A mark or portion of a mark is considered “unitary” when it creates a commercial

impression separate and apart from any unregistrable component. See TMEP 1213.05.

Put differently, the elements of a unitary mark are so merged together that they cannot be

divided to be regarded as separable elements. Id. When analyzing a mark to determine

whether or not it is unitary, the examining attorney must consider a number of factors: (i)

whether it is physically connected by lines or other design features; (ii) the relative

location of the respective elements; and (iii) the meaning of the terminology as used on or

in connection with the goods or services. Id. citing Dena Corp. v. Belvedere International

Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991).

While Applicant submits that the Mark is clearly unitary under this analysis,

TMEP 1213.05 provides further direction that is particularly instructive in this case.

Specifically, TMEP 1213.05 goes on to list specific types of unitary marks, one of which

is “compound word marks.” A compound word mark is comprised of two or more

distinct words (or words and syllables) that are represented as one word (i.e.,

BOOKCHOICE, PROSHOT, MAXIMACHINE, PULSAIR). See TMEP 1213.05(a).

Compound word marks are to be viewed as a single, unitary mark. Id.

Here, the literal element of the Mark, namely “ROWZONE,” is a compound word

mark under TMEP 1213.05 and therefore unitary in nature. This fact is evidenced the

amended drawing submitted by Applicant, which is a substantially exact representation of

the Mark as it appears on the amended specimen as required under TMEP §807(12)(e).

When taking into account this amended drawing and specimen, Applicant respectfully
submits that there are no grounds for Examiner to present the literal element of the Mark

as two (2) separate words. See TMEP §807(12)(e).

B. Applicant is Not Required to Disclaim the Component “Row” Apart
from the Mark as Used in Interstate Commerce Because this Term is
Part of a Compound Word Mark.

If a compound word mark consists of an unregistrable component and a

registrable component combined into a single word, no disclaimer of the unregistrable

component of the compound word will be required. See TMEP 1213.05(a). While

Applicant does not concede that the component “Row” is unregistrable under Section

2(e) of the Lanham Act, TMEP 1213.05(a) provides that Applicant does not need to

prove that this term is registrable in order to avoid Examiner’s disclaimer requirement. It

is clear from Examiner’s Office Action that Examiner agrees with Applicant that the

component “Zone” is indeed a registrable component of the Mark when used in

connection with Applicant’s services. As such, the literal element of Applicant’s Mark

“ROWZONE” is, at worst, comprised of an unregistrable component and registrable

component. In such instances, TMEP 1213.05(a) clearly states that Applicant is not

required to disclaim the arguably unregistrable component, namely the term “Row.”

V. CONCLUSION

In light of the arguments set forth above, as well as Applicant’s amended drawing

and specimen submitted with this response, Applicant respectfully requests that Examiner

withdraw its disclaimer requirement of the component “Row” in accordance with TMEP

1213.05 and 1213.05(a) and approve the Application for publication.