Stinis Beheer B.V.

Remarks

In the Office Action, the Examining Attorney acknowledges that a search of the
Office records did not identify any similar registered or pending marks that would bar
registration under the Trademark Act.

The Examining Attorney has objected to the identification of goods recited in
International Classes 006 and 007. Pursuant to the Examining Attorney’s suggestion, the
identification of goods in International Class 006 has been cancelled from the present application
and the identification of goods in International Class 007 has been amended with the assistance
of the suggestions provided by the Examining Attorney. Thus, removal of the objections to the
identification of goods is respectfully requested.

The Examining Attorney refuses registration of the mark under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1) as to some of the goods in the application, on the
basis that the mark is merely descriptive, if not generic, for the goods in question. More
specifically, the Examining Attorney refuses registration of the mark as to the “parts, fittings and
accessories for lifting equipment” of the present application. These goods are now identified as
follows: “metal parts and fittings for power-operated lifting equipment, namely, metal chains and
grips”.

Applicant’s pending mark, TWIN-SPREADER-OPERATION, is proposed to
identify the source of, inter alia, metal parts and fittings for power-operated lifting equipment,
namely, metal chains and grips. The Examining Attorney states that a mark is merely descriptive
if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the
relevant goods. Applicant respectfully asserts that their proposed mark is not merely descriptive
or generic, but that it at least rises to the level of being suggestive for the goods in question.

A term is considered to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it immediately conveys accurate and distinct knowledge of an
ingredient, quality, characteristic, feature, function, purpose, subject matter or use of the goods
or services. In re Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987). On the other hand, a mark is
suggestive, and therefore registrable, if imagination, thought or perception is required to reach a
conclusion on the nature of the goods. Id. It has been recognized that there is “but a thin line of
distinction between a suggestive and a merely descriptive term”. In re Recovery, Inc., 196
USPQ 830, 835 (TTAB 1977). Additionally, the court has held that it is a well-established
practice that, where reasonable people may differ, doubt must be “resolved in the applicant’s
favor”. In re The Gracious Lady Service, Inc., 175 USPQ 380, 383 (TTAB 1972).

The Examining Attorney supports the descriptiveness conclusion by asserting that
the proposed mark is descriptive for the goods in question because the terms of the mark describe
the function or use of the parts and fittings, namely, to cause or promote the functioning of twin
spreaders. However, the Examining Attorney has not established that one would see the mark
TWIN-SPREADER-OPERATION and have it immediately convey accurate and distinct
knowledge of an ingredient, quality, characteristic, feature, function, purpose, subject matter or
use of the goods. One needs to undergo a mental exercise to appreciate the fact that the mark
placed in conjunction with the parts and fittings means that the metal chains and grips promote
the functioning of the power-operated lifting equipment, such as twin spreaders that load and
unload containers on and off of sea vessels. As such, Applicant asserts that the present mark
rises to the level of being at least suggestive of the nature of the goods because it does not
immediately convey the function, purpose or nature of the Applicant’s goods. The mark does
not immediately inform a purchaser that the goods of interest in question relate to metal chains
and grips that assist in the function of twin spreaders. Instead, imagination, thought or
perception is required to reach a conclusion as to the nature of the goods of the present
application.

Contrary to the position of the Examining Attorney, the term “TWIN-
SPREADER” is not merely descriptive of a type of lifting equipment. Instead, it is one of
various combinations of words coined by the Applicant itself to serve as source identifiers of its
own lifting equipment. Applicant is the owner of U.S. Trademark Registration Nos. 2,264,161
and 2,934,351 for the marks LONG-TWIN and DOUBLE-TWIN, respectively, that serve as
trademarks for the Applicant for their lifting machines.

The attachments provided by the Examining Attorney with the Office Action do
not support the assertion that the term “TWIN-SPREADER” is descriptive. Instead, attachments
1 and 7 are articles discussing Applicant’s LONG-TWIN SPREADER machines. Attachments
2-5 and 8-10 are news releases discussing other companies that are using lifting machines to
transport containers on sea vessels. These companies do not produce elevating and lifting
equipment themselves, but they buy the machines from other companies, such as the Applicant.
As such, referring to the machines in the news releases as a “TWIN SPREADER” does not
support the argument that the term “TWIN-SPREADER” (hypen or not) is merely descriptive.
They are just as likely referring to the machines (possibly Applicant’s machines) using “TWIN
SPREADER” in a trademark sense as a source indicator.

In view of the foregoing, Applicant asserts that the pending mark is suggestive of
“metal parts and fittings for power-operated lifting equipment, namely, metal chains and grips”
and respectfully requests reconsideration of the Examining Attorney’s refusal to register the
pending mark on the grounds that the mark is merely descriptive. Further, the Applicant notes
that no such refusal has been made as to the remainder of the goods of the present application.

Copy of Foreign Registration and Dual Filing Basis

Applicant wishes to maintain, for the time being, the dual filing bases in the
present application. Corresponding European Community Trademark Application No.
005285960 issued on October 29, 2007. A copy of the foreign trademark registration has been
requested by the undersigned and will be submitted in due course.

Conclusion

In view of the foregoing remarks, Applicant submits that this application is in
condition for approval and respectfully requests passage of the mark to publication upon receipt
of the copy of the corresponding foreign trademark registration.

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