-\
`
`-1
`
`CERTIFICATE OF MAILING
`I hereby certify that this Amendment and Request for Reconsideration is being deposited with the United States
`Postal Service as first class mail in an envelope addressed to: Commissioner for Trademarks, 2900 Crystal Drive,
`Arlington, VA 22202-3514, on October 1, 2003.
`g
`‘
`=<~_».‘,;,>3a_\‘\_\
`,-
`3
`
`Christine Hutter
`
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`For the Mark
`
`Serial No.
`
`éFiled
`
`Examining Attorney
`
`Law Office
`
`Last Office Action
`
`Attorney Docket No.
`
`Don Hoult
`
`RINGPROP
`
`76/401,711
`
`April 30, 2002
`
`Tracy L. Fletcher
`
`115
`
`April 2, 2003
`
`CULZ 5 00004
`
`:
`
`1
`
`Cleveland, Ohio 44114-2518
`October 1, 2003
`
`AMENDMENT AND REQUEST FOR RECONSIDERATION
`
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`Dear Commissioner:
`
`Responsive to the final Office Action dated April 2, 2003, kindly amend the above-
`
`identified application as follows:
`
`1.
`
`Please amend the classification of goods to International Class 12.
`
`Illllllllllllllll||l||llllllllllllllllllllllllllll
`
`1 0-03-2003
`
`US. Patent & TM01cITM Mail ROD! D1. 955
`
`

`
`'\!
`
`REMARKS
`
`Applicant respectfully requests reconsideration of the Examiner's April 2, 2003 final
`
`Office Action.
`
`Classification
`
`The Examiner made final the requirement that the goods are to be classified in
`
`International Class 12. Applicant concedes this requirement and has amended the
`
`application accordingly. By this amendment, Applicant has complied with the outstanding
`
`requirements of the Examiner and such an amendment is an appropriate response to a
`
`final action.
`
`RINGPROP is Merely Suggestive
`
`The Examiner made final the refusal to register RINGPROP under Section 2(e)(1).
`
`The Examiner has maintained the position that the mark is descriptive. The Examiner
`
`bases her refusal on the position that "PROP” is an abbreviation for propeller. She also
`
`relies on three Lexis-Nexis® story excerpts referencing “ring propellers” as a type of
`
`propeller. The Examiner asserts that Applicant does not dispute these facts and,
`
`accordingly, refuses registration under Section 2(e)(1).
`
`To be refused registration under 15 U.S.C. § 1052(e)(1), a mark must be merely
`
`descriptive of the goods to which it relates. A mark is merely descriptive if it immediately
`
`conveys knowledge of the ingredients, qualities or characteristics of the goods.
`
`In re
`
`Gyulay, 3 USPQ2d 1009 (Fed. Cir. 1987); TMEP § 1209.01(b).
`
`If one must exercise
`
`

`
`mature thought or follow a multi-stage reasoning process, the mark is merely suggestive.
`
`In re Tennis in the Round, Inc., 199 USPQ 496 (TTAB 1978).
`
`Applicant asserts that the mark RINGPROP,
`
`taken in its entirety, does not
`
`immediately convey knowledge of the ingredients, qualities, or characteristics of the goods.
`
`Instead, imagination, thought and perception are necessaryto reach a conclusion as to the
`
`nature of the goods. At most, the mark is merely suggestive of the goods.
`
`In this regard, the Examiner's own basis for asserting the mark to be descriptive
`
`consists of multi-stage reasoning or mental gymnastics that render the mark suggestive.
`
`The Examiner’s reasoning requires a person to first determine that PROP can be short for
`
`PROPELLER. Next, the person must think back to whether he or she ever saw the words
`
`“ring" and “propeller” used togetherto describe marine propellers.‘ Finally, if the person
`
`is able to remember seeing “ring” and “propel|er" used together, then, according to the
`
`Examiner's reasoning, he or she must put them together, abbreviate "propel|er” to “prop"
`
`and somehow determine that RINGPROP describes a ringed marine propeller. The
`
`Examiner’s lengthy cogitation alone should be sufficient to deem the mark suggestive.
`
`During prosecution of a trademark application,
`
`it
`
`is acceptable to separate a
`
`compound mark and discuss the implications of each part thereof with respect to the
`
`question of descriptiveness as long as the ultimate determination is made on the basis of
`
`the mark in its entirety.
`
`In re Hester Industries, 230 USPQ 797, 799-80 (TTAB
`
`1986)(TH|GHST|X for boneless chicken parts is suggestive rather than descriptive when
`
`‘As will be discussed later, the Lexis-Nexis® excerpts relied upon by the
`Examiner are irrelevant and fail to show any third party use of “ring" and “propeller” to
`describe a marine propeller.
`
`

`
`taken in its entirety).
`
`In spite of the Examiner's claims that RING and PROP taken
`
`separately may have descriptive overtones, when RINGPROP is taken in its entirety, it is
`
`merely suggestive of the goods.
`
`Applicant acknowledges that one purpose behind the statutory prohibition against
`
`registration of merely descriptive terms is to prevent others from monopolizing such terms
`
`in relation to the goods. However, because RING PROP is not merely descriptive of marine
`
`propellers, there would be no such breach of policy by allowing the Applicant to register
`
`RINGPROP for its "ringed marine propeller for inboard/outboard marine engines."
`
`Applicant contends that allowing the mark to register will not render it difficult for others
`
`selling similar goods to adequately describe their products? Thus, registration will not
`
`inhibit competition.
`
`In this regard, the Examiner has not pointed to a single example of a
`
`third party use of RINGPROP to describe marine propellers.
`
`Applicant notes that the CCPA was confronted with a similar factual situation in In
`
`re Reynolds Metals Co., 178 USPQ 296 (CCPA 1973). There. the CCPA held that
`
`registration of “BROWN-lN-BAG" for transparent plastic bags was suggestive because it
`
`did not prevent competitors from informing consumers that goods may be browned in their
`
`bags. Similarly, the TTAB held that registration of “DRl-FOOT” could not preclude the use
`
`by competitors of the ordinary descriptive phrase “keeps feet dry" in connection with their
`
`products in In re Pennwault Corp, 173 USPQ 318 (TTAB 1972).
`
`In the present case,
`
`Applicant's competitors will not be prevented from describing similar goods as “ringed
`
`marine propellers" or "propellers with rings."
`
`zcompetitors can appropriately reference their goods as “ringed marine
`propellers” or the like.
`
`

`
`RINGPROP, when used in association with marine propellers, is at most suggestive.
`
`It requires imagination, thought and perception to reach a conclusion as to the nature of
`
`the goods. If one must exercise "mature thought orfollow a multi-stage reasoning process"
`
`to determine the attributes of a product, then the term is at most suggestive and not
`
`descriptive.
`
`In re Tennis in the Round, Inc., 199 USPQ 496 (TTAB 1978); In re Nalco
`
`Chemical Company, 228 USPQ 972 (TTAB 1986) ("VERl-CLEAN," as applied to chemical
`
`anti-fouling additives for use in refineries, is suggestive of a desired end result of use of the
`
`product); In re C.J. Webb, Inc., 182 USPQ 63 (TTAB 1974); ("BRAK CLEAN," the phonetic
`
`equivalent of BRAKE CLEAN, is suggestive of a desired end result of brake cleaner).
`
`Applicant also relies on reasoning in In re Shop-Vac Corp., 219 USPQ 470 (TTAB 1983)
`
`(WET/DRY BROOM is not merely descriptive of electric vacuum cleaners).
`
`In the present situation, the occasional reference to propellers as “props," does not
`
`form a basis for refusing registration of RINGPROP. The Examiner failed to demonstrate
`
`a single use of RlNGPROP (or even RING PROP) in connection with marine propellers.
`
`Even the three Lexis-Nexis® examples cited by the Examiner failed to establish that
`
`RlNGPROP is descriptive.
`
`Indeed, the Examiner provided three Lexis-Nexis® articles,
`
`none of which support her position. Regarding the April 7, 1996 Florida Times—Union
`
`excerpt, the article is not referring to propellers but rather propeller gflrgs or cages which
`
`surround a propeller. The guard or cage is placed outside the propeller.
`
`It is not a part of
`
`the propeller itself. This article is referring to "propeller guards or cages" in the form of a
`
`ring. Proper interpretation of the article will reveal that it is not concerned with a “ring
`
`propeller."
`
`

`
`
`
`Next, the October 2, 1995 Chattanooga Times article does not refer whatsoever to
`
`ring propellers. The Examiner should note that the article is referencing "whirring
`
`propellers." The (whir-) appears on the previous line. Accordingly, this excerpt has no
`
`relevance to the present application whatsoever.
`
`Finally, the February 17, 1995 Miami Herald article is referring to Applicant's
`
`product. Applicant should not be penalized because of poor journalism and/or incorrect
`
`trademark usage by a representative of Stealth Propulsion International.
`
`By way of information, Applicant is associated with the British Company RingProp
`
`PLC. Attached as Exhibit A is some information on RingProp PLC. RingProp PLC is
`
`licensed to use the RINGPROP trademark. There is a great deal of publicity associated
`
`with RingProp PLC’s propeller. Media references that refer to RINGVPROP marine
`
`propellers are references to the Applicant's mark. Applicant is unaware of any other use
`
`of RINGPROP aside from use as a trademark and mark in association with its propellers.
`
`Indeed, RINGPROP, when used in association with a marine propeller, does not
`
`immediately convey the nature of Applicant's goods. Indeed, at first glance of the mark in
`
`association with a propeller, consumers envision a ringed couplerfor holding the propeller
`
`to the propeller shaft. Others envision a ringed support member for holding the propeller
`
`in place. Still others envision the circular or ring-like motion made by the propellers as they
`
`spin. The direct association with Applicant’s product and the mark is certainly not evident.
`
`There is in no regard an immediate association.
`
`Still other consumers have different visualizations upon seeing the mark. For
`
`example, one consumer reports that RINGPROP brings to mind supports for gymnastics
`
`rings. Another was reminded of her glass jewelry ring holder. Others were reminded of
`
`6
`
`

`
`a bell, while still others were reminded of theatrical equipment used on stage (i.e., acting
`
`props or ringed juggling props) or at a circus (i.e., a three-ring circus or a support or prop
`
`for holding a tent up over a single-ring circus). Indeed, there is no immediacy associated
`
`between the mark and the cited ringed marine propeller for inboard/outboard marine
`
`engines. Although the mark RINGPROP may suggest the presence of a circle around the
`
`propeller, it certainly does not describe such a product.
`
`Indeed, the Examiner's Lexis-Nexis® evidence failed to locate a single instance of
`
`RINGPROP. There is no need for others to use RINGPROP in describing their ringed
`
`marine propellers.
`
`The Identical Mark is Registered in Australia
`
`Applicant provides the Examiner with information concerning corresponding
`
`Australian Registration No. 888997 for RINGPROP covering the identical goods (Exhibit
`
`B). The mark registered in Australia without incident. Applicant proposes amending the
`
`basis of the subject application to Section 44(e) if that would enable the Examiner to
`
`readily withdraw the Section 2(e)(1) refusal.
`
`CONCLUSION
`
`Applicant asserts that RINGPROP is no more than merely highly suggestive.
`
`Accordingly, it is respectfully requested that this request for reconsideration be looked upon
`
`favorably by the Examiner. Should the Examiner maintain the finality of the refusal, a
`
`

`
`Notice of Appeal has already been placed on file with the Trademark Trial and Appeal
`
`Board for consideration of this issue.
`
`All outstanding issues having been addressed, the subject application is believed
`
`to be in condition for acceptance and publication. Early notice to that effect is solicited.
`
`Respectfully submitted,
`
`FAY, SHARPE, FAGAN,
`MINNICH & MCKEE, LLP
`
`..
`1/ I”:
`‘
`,
`‘‘ 4:75’
`
`Jaiy Moldovanyi
`1100 Superior Avenue
`Seventh Floor
`
`Cleveland, OH 44114-2518
`(216) 861-5582
`
`N:\CULZ\5000O4\CAH1132A.wpd
`
`

`
`

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`Ringprop plc
`RingProp is initially looking to make its revolutionary
`design of propeller available to the outboard market
`- both in the recreational and military sectors.
`Developed largely in Australia, the design
`incorporates an outer ring in a one-piece design.
`Originally designed with safety in mind, the propeller
`displays superior acceleration and manoevrabllity,
`with almost no torque steer or ventilation (blow-out)
`on turns, and matches the top speed of the
`conventional offering. It also has the additional
`advantages of reduced line snagging, a reduced
`likelihood of suffering damaging impacts, high
`integral strength and rigidity and reduced back-
`wash.
`
`Gosport l-
`Site plan
`Unit sizes
`Centre fa:
`Location z
`News
`E5/eil_t.$
`Company
`
`The company believes that there is now a serious
`need for a solution, particularly to the personal
`injury issue as well as the problem of damage to
`marine life - especially of manatees in the U.S. and
`Australia. The "guard" solutions currently available
`cause a significant loss in boat performance.
`RingProp will be looking to manufacture their design
`using a suitable alloy material.
`
`RingProp plc
`Haslar Marine Technology Park
`Haslar Road
`Gosport
`Hampshire PO12 2AG
`
`Tel 023 9260 3818
`Fax 023 9260 3819
`
`Email:
`
`i.nfo@ri.n9p.rQp.c9..uk
`
`Copyright =;i:) 2003 Solent Enterprise Hub I Back to Top"
`
`l Home I Legal
`
`http://www.so1enthub.co.uk/pages/ringpropplcgosport.htm1
`
`9/29/2003
`
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`Home : Locations : Gosport : Company directory
`
`The Solent Enterprise Hub has over 70 companies across its four locations. If
`you are located in one of our sites and would like an entry in the Directory
`please contact your site manager who can upload your details immediately.
`A.s.ixa.o_c.e.s1..tt4.atin.e...;.nn2xati9.n..Is:.s.h.n.9!.g.9.v...§u.L2sea.Ltd
`Specialists in novel solutions for underwater equipment.
`
`.c_uss9n.s..Te.c.h.n_t>J_9gy...Li.mjte4
`Supplier of Specialist Hydrodynamic Research and Development Equipment
`and Associated Instrumentation
`
`Gosport l-
`S‘
`I
`Ulfii ‘$2325
`C
`r
`Le"tr.e a_'
`ocahon ‘
`E.9YY.5
`Vents
`Company
`
`Ethernet at its Best
`
`.§_.r.a.i.:.h.is.s._.B..esears.h...§_9r99.ratLqn....Limitesl.
`Marine design and analysis consultants and software developers
`
`RingpI‘0..P P“:
`A safer, more environmentally friendly and high performance alternative to the
`outboard propeller
`
`Quest. _L.i.m.ited.
`
`t Distributor For TFl' LCD Products
`
`L.J.n.i_w9.r.l.d....Q9.m.mu.n.is:a.tiqns Ltd
`Communication Services
`
`Copyright ©2003 Solent Enterprise Hub | Back to Top“ I Home | Legal
`
`I
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`http://www.so1enthub.co.uk/Companies/Gosport
`
`9/29/2003
`
`

`
`-
`
`1
`
`Ringprop — 30/O6/O3
`
`page 1 0f2
`
`RingProp - 30th June 2003
`
`
`
`Shares in RingProp slipped by 1% to 152.5p today after the safe
`propeller maker revealed that a change in the material used to
`build the propeller would delay the product launch. Interesting
`potential but still many hurdles to clear, says Douglas smith.
`
`The trouble with early stage businesses is that what looked great on the drawing board
`can soon be found to be impractical in practice. RingProp, which has spent the last 20
`years developing a propeller with enclosed blades to improve safety, has suffered just
`such a setback. But thankfully, it's not quite back to square one.
`
`The design itself remains unchanged - RingProp's propeller still has a unique integral
`ring around the sharp, biting teeth of the blades to prevent traumatic injury to humans
`and wildlife - but the group now proposes to make the propeller body out of the more
`traditional aluminium rather than injection-moulded composite materials.
`
`The advantages of using a composite material were outlined in Ringprop‘s initial
`prospectus and they still stand - quick production, cheap material, high margins, and
`comparable strength properties - but "further research", said chairman Johnny
`Townsend, has seen the group decide that it could better establish itself using
`traditional materials.
`
`Put simply the yachtsmen and boat owners who will buy these props just don't trust
`composite blades. Horror stories from the 1970s have given the material a bad
`reputation and with something as vital as a propeller - something that is perhaps a
`boat's only form of power many miles out to sea - a good reputation is everything.
`
`Introducing a "revolutionary" new blade - the first radical change since the invention of
`the propeller in 1839 by the Swede John Ericsson, claims RingProp - as well as a new
`material has proved to be a revolution too far. RingProp was always going to struggle
`to re—educate the market in the improved reliability and performance of composite
`propellers.
`
`Aluminium propellers currently have 82°/o of the world's market, against composites,
`which hold just 3-4°/o of the market, and RingProp is right to think that it would
`establish itself better using traditional materials. The group has since found an
`aluminium propeller manufacturer which can compare favourably on price.
`
`It expects to price the propellers at the higher end of the aluminium propeller blade
`market, and make some £70 pounds or so per propeller sold. The change means,
`however, that maiden revenues - previously expected about now - will not occur until
`2004. Townsend believes that the target of 275,000 units sold by 2005 is still
`achievable.
`
`Today's interim results show a net loss before tax of £359,000 over the six months to
`March 2003, with no sales over the period, and a cash balance of £2.4m.
`
`Valuation
`Forecasts at this stage are non existent. What investors need is an indication of the
`likely uptake by the market. Increasing legislation - and the threat of more law suits
`following a recent US case versus a conventional propeller manufacturer - will play a
`
`http2//www.hemscott.co.uk/hstoday/focus2003/1'ingprop_3O06_20O3 .htm
`
`9/29/2003
`
`

`
`Ringprop — 30/06/03
`
`Page 2 of 2
`
`part in the introduction of safer propellers. But for RingProp to become a real success,
`the market needs to embrace the design willingly.
`
`Sales haven't started yet and so RingProp and its analysts are no wiser to the financial
`merits of their enclosed propeller than the more speculative investors that are aboard
`already. There is a market for the group's products; even if only prompted by
`legislation, but how quickly the potential is realised is anyone's guess. One to watch.
`
`Share prices can go down as well as up. The past is not necessarily a guide to future
`performance and the marketability of some shares can make them difficult to sell.
`
`
`
`Te_l_l_ _..iJ..§_..\/..\I.l_.1_.___a,_,t. Y
`ds.mith.@..h.e..
`
`th'n__k .h.er.e_..t_o_e:m.ai.|....y.9u_t_...c9mments. to Douglas .S_mi_th_ at
`
`Hemscott Invest is produced by Hemscott Investment Analysis Ltd which is regulated by the Financial Services
`Authority.
`Copyright © Hemscott Investment Analysis Limited 2003
`2nd Floor, Finsbury Tower, 103-105 Bunhill Row, London EC1Y 8TY.
`Tel: +44 (0)20 7496 0055 Fax: +44 (0)20 7847 1709
`http ://www.hemsc_ott._n__et
`
`http:l/www.hemscott.co.uk/hstoday/focus2003/ringprop_3006_2003.htm
`
`9/29/2003
`
`
`
`

`
`
`
`Portsmouth Today
`
`page 1 of2
`
`Portsmouth
`
`Pcuvorr.-n‘ by Tin? ¢~,N1rM/S
`
`Propeller revolution can save sea giants
`BOSSES at a Gosport company could save the lives of hundreds of marine animals with th
`of an innovative propeller.
`Every year, all kinds of animals are killed or injured in waters
`around the world by ships and their propellers. But RingProp is
`hoping its design -— based on 20-year-old plans - will help to
`protect sealife.
`
`The manatee or sea cow pictured could benefit more than any other V
`animal from the new propeller as the mammals - which can weigh
`more than one tonne each - are very slow-moving. Fast-moving
`power boats are the greatest threat to manatees, their propellers
`killing around 80 every year and leaving dozens more with horrific
`injuries — with only 3,000 of them left.
`
`’
`
`RingProp's new propeller was designed about two decades ago
`with a special ring around them which protects wildlife and
`safeguards swimmers. Two firms owned the rights to the design
`but it only sold in small numbers when released in the US.
`
`Now RingProp - a company specially created to make and sell the
`propeller - has refined the design and plans to relaunch it next
`year. The company intends to make tens of thousands of the
`propellers every year from plastic which would be fitted to mainly
`leisure boats with outboard motors.
`
`Operations director Mark Chapple said: ‘Five million propellers are made around the worlt
`year and we would be looking to capture a percentage of that. Others have tried to make
`with rings around them in the past, but they've never come up with a design that has goo
`performance. We think this one is different.’
`
`RingProp, based in Haslar Road has raised £3m to finance its ambitious bid by becoming I
`the Alternative Investment Market (AIM), a junior version of the FTSE. The cash came fro
`hoping to profit when the design goes on sale. Shares were also handed out to the two co
`that owned the design.
`
`Simon White, a corporate finance partner at the Hampshire office of BDO Stoy Hayward, v
`helped manage the flotation, said: ‘This shows the market's appetite for companies with g
`potential even in uncertain stock market conditions.’
`
`View other arl
`
`
`[Disclaimer] : All rights reserved 2001 Johnston Press New Media.
`
`http://www.portsmouthtoday.co.uk/Custom__Pages/bCustomPage.asp?Page=125 8
`
`9/29/2003
`
`

`
`

`
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`
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`C|i-ssificatiovrszé 2
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`,
`
`Word:
`
`Image:
`
`Trade Mark : 888997
`
`RingProp
`
`Lodgement Date: 13-SEP-2001
`Class/es:
`2
`
`Status:
`Kind:
`
`Type:
`
`Registered/Protected
`n/a
`
`Word
`
`Owner/s: Don Hoult
`
`Goods & Services
`
`Class: 7 Ringed marine propeller for inboard/outboard marine engines
`
`History
`Opgosition
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`http://pericles.ipaustralia.gov.au/atrnoss/fa1eon_detai1s.show_tm_detai1s?p_tm_number=88... 10/1/2003
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`TM Number 888997 has no oppositions
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`"-"*{;; Disclaimer
`fliirs
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`
`Image Terms
`
`
`:5
`
`
`History for Trade Mark: 888997
`
`Amendment
`Comment
`Type
`Date
`Trade Marks Registered
`Advert
`14-NOV-2002
`Return to Sender
`Correspondence
`01-NOV-2002
`Register Trade Mark
`Update
`28—OCT-2002
`Sealing fee (single class)
`"Correspondence
`24-OCT-2002
`Registration Fee Reminder Notice
`Update
`04-OCT-2002
`Amend Status from Accepted
`Up_da_te
`12-AUG-2002
`Adgcripted Applications for Registration of Trade Advert
`02_MAY_2002
`Qczacripted Applications for Registration of Trade Advert
`O2_MAY_2002
`Clear Report - Approved
`Report No. 2
`05-APR-2002
`Clear Examination report approved
`Update
`O5-APR-2002
`Classes before Amendment 12
`Update
`O4-JAN-2002
`Class 12 Goods and Services
`Update
`04-JAN—2002
`Exam Response
`_,C_g_r_l;e_sp_o_r1_d_enc:_e_
`13-DEC—2001
`Adverse Report - Approved
`Report No. 1
`O7-DEC—2001
`Amend Status from Indexing Approved
`_U_p_cl_a_t_e_
`07-DEC-2001
`Acceptance date
`Update
`07-DEC-2001
`Applications Filed
`Advert
`04-OCT-2001
`Amend Status from Indexed
`Update
`17-SEP-2001
`Amend Status from Filed - Approved
`Update
`17-SEP-2001
`Approve Filing
`U_p_d_at_e
`17-SEP-2001
`New Trade Mark Application
`C._0_r.E§§Dondence
`13-SEP-2001
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