TTAB
`
`Trademark Law Office 108
`
`Ser. No. 76/636,336
`SETTLE MY CLAIM
`
`BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application of: David M. Chester
`
`Serial No.:: 76/63 6,336
`
`Filed: O4/13/05
`
`Title: SETTLE MY CLAIM
`________
`
`)
`)
`)
`)
`)
`)
`
`)
`)
`
`Date:
`
`February 1, 2006
`
`Trademark Law Office: 108
`
`Examiner: Sue Carruthers
`
`Certificate of Maiiling
`
`Certificate of Transmission
`
`I hereby certify that this correspondence is being
`deposited with the United States Postal Service with
`sufficient postage as first class mail in an envelope
`addressed to: Commissioner for Trademarks, P.O. Box
`1451, Alexandria, VA 22313-1451 on
`.2-g§4.)bj(date).
`
`I hereby certify that this correspondence is being
`facsimile transmitted to the United States Patent and
`Trademark Office, Fax No. (571) 273-9108 on
`é “Q-7219
`(date).
`
`Typed or printed name of person signing this certificate
`
`Typed or printed name of person signing this certificate
`
`72:
`
`05
`
`Signature
`
`
`
`Commissioner for Trademarks
`
`ATTN: Law Office 108
`
`P.O. Box 1451
`
`Alexandria. VA 22313-1451
`
`Dear Sir:
`
`APPELLANT’S APPEAL BRIEF UNDER 37 CFR 1.192
`
`In an action dated January 19. 2006, the present application was finally refused registration
`
`MWWWWWWMMW
`
`02-06-2006
`b.S. Patent & TMOfcITM Mail Rep! D1. #26
`
`
`
`Trademark Law Office 108
`
`Ser. No. 76/636,336
`SETTLE MY CLAIM
`
`BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application of: David M. Chester
`
`Serial No.:: 76/63 6,336
`
`Filed: O4/13/05
`
`Title: SETTLE MY CLAIM
`________
`
`)
`)
`)
`)
`)
`)
`
`)
`)
`
`Date:
`
`February 1, 2006
`
`Trademark Law Office: 108
`
`Examiner: Sue Carruthers
`
`Certificate of Maiiling
`
`Certificate of Transmission
`
`I hereby certify that this correspondence is being
`deposited with the United States Postal Service with
`sufficient postage as first class mail in an envelope
`addressed to: Commissioner for Trademarks, P.O. Box
`1451, Alexandria, VA 22313-1451 on
`.2-g§4.)bj(date).
`
`I hereby certify that this correspondence is being
`facsimile transmitted to the United States Patent and
`Trademark Office, Fax No. (571) 273-9108 on
`é “Q-7219
`(date).
`
`Typed or printed name of person signing this certificate
`
`Typed or printed name of person signing this certificate
`
`72:
`
`05
`
`Signature
`
`
`
`Commissioner for Trademarks
`
`ATTN: Law Office 108
`
`P.O. Box 1451
`
`Alexandria. VA 22313-1451
`
`Dear Sir:
`
`APPELLANT’S APPEAL BRIEF UNDER 37 CFR 1.192
`
`In an action dated January 19. 2006, the present application was finally refused registration
`
`MWWWWWWMMW
`
`02-06-2006
`b.S. Patent & TMOfcITM Mail Rep! D1. #26
`
`
`
`Trademark Law Office 108
`
`Ser. No. 76/636,336
`SETTLE MY CLAIM
`
`on the principal register under the Trademark Act §2(e)(1, 15 U.SC. §l052(e)(1), because the
`
`subjeccd matter for which registration is being sought was determined to be merely descriptive of
`
`the identified services.
`
`To be refused registration on the Principal Register under §2(e)(1) ofthe Trademark Act, 15
`
`U.S.C. §1()52(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods
`
`or services to which it relates. A mark is considered merely descriptive if it describes an ingredient,
`
`quality, characteristic, function, feature, purpose or use of the specified goods or services. See Ini
`
`Q$u_lay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of
`
`potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED &
`
`BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath
`
`Q, 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical
`
`pathological immunoassay testing services for detecting and monitoring prostatic cancer); In re
`
`Bri ht—Crest, Lt_cL, 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of
`
`a coaster suitable for direct mailing).
`
`The examiner relies upon the conclusion that the mark, SETTLE MY CLAIM, clearly
`
`indicates that the services pertain to legal cases. However, this is not the same as “merely
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`descriptive”.
`
`In the present case, a proper rejection for being merely descriptive would exist if the
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`requested mark were LEGAL SERVICES or ATTORNEY or PERSONAL INJURY ATTORNEY;
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`however, such are not the case.
`
`
`
`Trademark Law Office 108
`
`Ser. No. 76/636,336
`SETTLE MY CLAIM
`
`The determination of whether or not a mark is merely descriptive must be made not in the
`
`abstract but, rather, in relation to the goods or services for which registration is sought; the context
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`in which the mark is used, or intended to be used, in connection with those goods or services; and
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`the possible significance which the mark would have, because of that context, to the average
`
`purchaser of the goods or services in the market place. See In re Omaha National Cog}. 819 F.2d
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`1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp, 588 F.2d 811, 200 USPQ
`
`215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Again, the
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`present mark is being used for LEGAL SERVICES; absent the context that the applicant is
`
`providing, the words SETTLE MY CLAIM can have numerous, contradictory or ambiguous
`
`meaning.
`
`Additio:nally, there currently exists third-party registrations that are arguablyjust as indicative
`
`as pertaining to legal cases as the present application. Currently registered are FASTSETTLE (Reg.
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`No. 2404297, principal register), WHY SETTLE FOR LESS? (Reg. No. 2851024), SETTLEMENT
`
`ON LINE (Reg. No. 2523663). Although the existence of FASTSETTLE on the principal register
`
`is not conclusive on the question of descriptiveness, it is an indication that such is not the case in the
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`present instance.
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`Further, combinations of merely descriptive components have been found registruble if the
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`juxtaposition ofthe words is inventive or evokes a unique commercial impression. See In re Colonial
`
` _., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE held not merely
`
`descriptive of bakery products); In re TBG Inc., 229 USPQ 759 (TTAB 1986) (SHOWROOM
`
`
`
`Trademark Law Office 108
`
`Ser. No. 76/636,336
`SETTLE MY CLAIM
`
`ONLINE held not merely descriptive of computerized interior furnishings product information
`
`service); h;iSh_u§, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a
`
`snow removal hand tool). Currently, commercial searchers on the world wide web will find the
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`applicant’s services unique if looking for www.settlemycase.net. The issue is whether the mark
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`considered in its entirety possesses a merely descriptive significance as applied to the goods in
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`question, i.e., whether it conveys a readily understood meaning to the average purchaser of such
`
`goods. See E: Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979)
`
`The fact that a term may have meanings must be considered as evidence that in this particular
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`application, the present term is not merely descriptive in relation to the goods or services for which
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`registration is sought. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). and cases
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`cited therein.
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`Accordingly, the reversal of the Examiner by the honorable Board ofAppeals is respectfully
`
`solicited.
`
`
`
`137 South Main Street
`
`Akron, OH 44308
`
`(330) 253-5678
`
`Facsimile (330) 253-6658
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