Request for Reconsideration after Final Action
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`Page 1 of 12
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`PTO Form 1960 (Rev 9/2007)
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`OMB No. xxxx-xxxx (Exp. xlxxxx)
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`Request for Reconsideration after Final Action
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`The table below presents the data as entered.
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`SERIAL NUMBER
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`LAW OFFICE ASSIGNED
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`77140083
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`LAW OFFICE 113
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`1'11"“ Field i
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`MARK SECTION (no change)
`ARGUMENT(S)
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`A
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`This is in response to the Office Action which issued in connection with the application.
`REMARKS
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`The Examining Attorney has refused registration on the basis that the mark is merely descriptive
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`of the goods. Applicant
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`respectfully requests reconsideration in the following remarks which
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`demonstrate that its mark "GAMMATAG" is not merely descriptive, but is at most suggestive of its
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`goods, and therefore entitled to registration on the Principal Register.
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`A. Applicant's Mark Should Not Be Dissected
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`Applicant respectfully submits again that the mark must be tested for descriptiveness by
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`examining it as a whole rather than dissecting it into component parts. Estate of P. D. Beckwiii, Inc. v.
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`Commissioner of Patents 252 U.S. 538, 545-46, 64 L. Ed. 705, 40 S. Ct. 414 (1920) ("The commercial
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`impression of a trademark is derived from it as a whole, not from its elements separated and considered
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`in detail. For this reason it should be considered in its entirety."); In re Shutts 217 USPQ 363
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`(T.T.A.B.) (SNO-RAKE held not to be merely descriptive of snow hand removal tool); In re Colonial
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`Stores Inc
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`157 USPQ 381 (CCPA 1968) (SUGAR & SPICE held not merely descriptive of bakery
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`products); California Cooler, Inc. v. Loretto Wineg, Ltd., 774 F.2d 1451, 1455, 227 USPQ 808, 810
`(9th Cir. 1985); Self-Realization Fellowship Church V. Ananda Church of Self-Realization, 59 F.3d
`902, 35 USPQ2d 1342, 1351 (9th Cir. 1995).
`The necessity of such an analysis is recognized in the
`TMEP which states:
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`However, a mark comprising a combination of merely descriptive components is
`registrable if the combination of terms creates a unitary mark with a unique,
`nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as
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`applied to the goods. See In re Colonial Stores Inc. 394 F.2d 549, 157 USPQ 382
`(C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery products); Q
`re Shutts, 217 USPQ 363 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a
`snow removal hand tool).
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`Request for Reconsideration after Final Action
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`Page 2 of 12
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`TMEP §1209. 03 (d)(emphasis added).
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`The mere combination of "GAMMA" and "TAG" does not convey the exact nature of the
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`goods. Although Applicant's mark is comprised of ordinary words, the combination of words renders
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`Applicant's mark unique since the combination of the two words does not result in a designation that
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`has a plain and readily understood meaning for any of the goods.
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`In re Disc Jockeys, Inc., 23 USPQ2d
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`1715, 1716 (TTAB 1992), c_iti_ng, In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982).
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`For example, in the Trademark Trial and Appeals Board's (Board) decision in In re Mobile Ray,
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`lg, 224 U.S.P.Q. (BNA) 247 (T.T.A.B. 1984), the Board found the mark " MOBILE RAY" for "
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`providing x-ray examinations and other radiological services." The mark was found not to be
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`descriptive, with the Board stating:
`We find applicant's mark only suggestive of its services. We have no
`doubt that those who would avail themselves of applicant's services
`would, upon seeing the mark "MOBILE RAY", understand that the
`"MOBILE" portion of the mark suggests the fact that the services are
`rendered from a mobile unit or van and that the "RAY" portion of the
`mark suggests that X-ray examinations are included among the services
`offered. That applicant's mark, when viewed in conjunction with its
`services, would suggest these things to the ordinary user ofthe services
`does not, in itself, render applicant's mark merely descriptive.
`Applicant's "GAMMATAG" mark is not a direct description of the goods. GAMMATAG
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`creates a unitary mark that is at most suggestive of Applicant's goods. Therefore, the trademark
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`"GAMMATAG" in its entirety is not descriptive.
`B. Mark Which Is Deemed "Merely Descriptive" Must Immediately Convey An Idea
`About The Applicant's Goods or Services
`Applicant's mark GAMMATAG and Design does not
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`immediately convey an idea of the
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`qualities or characteristics of Applicant's services as applied to those goods. As the Examining
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`Attorney recognizes, Applicant mark is used in conjunction with RFID tags that are sterilizeable by
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`gamma radiation. However, as the defmition submitted and relied upon by the Examining Attorney
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`indicated, the terms GAMMA and TAG have numerous other meanings and connotations. See also
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`Exhibits A and B. For example, the use of "gamma" without also using "ray" or "radiation" tells the
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`consumer little about the product since "gamma" has many different meanings.
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`As such mature thought and imagination are required in order to determine what features or
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`characteristics Applicant's mark possesses. When these two unrelated terms are combined one does not
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`immediately know the precise nature of Applicant's goods. Therefore, it can in no way be said that
`Applicant's mark immediately conveys any idea about Applicant's services, as is required for the mark
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`to be deemed "merely descriptive."
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`This case is highly analogous to In re Hamilton Watch Co. 158 USPQ 300 (TTAB 1968).
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`In
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`the Board in reversing an examiner's refusal to register the trademark "PRECISION
`that case,
`METALS" stated:
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`[A]s applied to ‘special metal alloys,‘ ‘PRECISION METALS’ suggests the high
`quality and care involved in the production of the goods; but it does not immediately or
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`Request for Reconsideration afier Final Action
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`Page 3 of 12
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`with any degree of particularity describe their function, characteristics or use.
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`I_d_. at 301. The above-quoted language of Hamilton Watch is clearly apposite here as well.
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`"GAMMATAG" like "PRECISION METALS",
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`is suggestive and not descriptive of Applicant's
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`services, as it fails to convey any definite information about them. Significantly, the fact that the term
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`"metals" clearly described a characteristic of the goods ("special metal alloys") in In re Hamilton could
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`not stand as a basis for refiising registration of the unitary mark "PRECISION METALS". See also,
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`Bose Corp. v. International Jensen Inc., 22 USPQ2d 1704 (CAFC 1992) ("ACOUSTIC RESEARCH"
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`held suggestive for stereo speakers and turntables); In re Morton-Norwich Products Inc. 209 USPQ
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`791, 792 (TTAB 1981) (The mark "COLOR CARE" for bleach "intimates or suggests a characteristic
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`of the product rather than being merely descriptive thereof’); In re TMS Corp. of the Americas, 200
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`USPQ 57, 59 (TTAB 1978) ("THE MONEY SERVICE" suggestive of financial services).
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`C.
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`Applicant's Mark Is Suggestive
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`To be refused registration under 2(e)(1) of the Act, a mark must be merely descriptive or
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`generic of the goods or services. The statutory language imposes a stringent burden since the term
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`"merely" is to be taken in its ordinary meaning of "only" or "solely" -that is, when considered with the
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`particular goods or services, the mark, because of its meaning, does nothing but describe them. As is
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`well recognized, to be regarded as "merely descriptive," a mark must have no significance other than as
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`a descriptive term. Blisscrafi of Hollywood v. United Plastics Co., 131 USPQ 55, 60-61 (2d Cir.
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`1961)
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`A suggestive mark, on the other hand,
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`is one which "requires imagination, thought and
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`perception to reach a conclusion as to the nature of the goods." Stix Products Inc. V. United Merchants
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`& Manufacturers Inc. 160 USPQ 777, 785 (S.D.N.Y. 1968). Accord The Comic Strip, Inc. v. Fox
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`Television Stations
`Inc.
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`10 USPQ2d 1608, 1611 (SDNY 1989) (holding the service mark "T11-IE
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`COMIC STRIP" for comedy clubs suggestive and thus inherently distinctive). A mark that is "merely
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`suggestive of a possible desirable end result" and does not describe the goods with which it is used,
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`cannot be denied registration on the Principal Register. In re Frank J. Curran Co., 189 USPQ 560
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`(TTAB 1975) ("CLOTHES FRESH" for clothes and shoe deodorant held to be suggestive).
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`For example, in Healing the Children Inc. v. Heal the Children Inc., 22 USPQ2d 1690 (W.D.Pa.
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`1992), the court considered whether the service mark "HEALING THE CHILDREN" was descriptive
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`of organization whose activities included medical services for children.
`the court stated:
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`In finding the mark suggestive,
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`In this case, "Healing the Children," does suggest an organization which benefits
`children is a salutory, curative, beneficial, or remedial way. But
`it
`is only with
`imagination that the consumer can determine that the organization's activities include
`coordinating medical
`teams which visit foreign countries to train local medical
`personnel and to provide acute care and diagnostic services for local children, and
`organizing transportation, visas, medical care, and foster care for children referred to
`plaintifi' by cooperating foreign governments and private agencies.
`[Citation omitted.]
`We must therefore conclude that "Healing the Children" is a suggestive mark
`Li. at 1693; Similarly, in In re TMS Corp. of America, 200 USPQ 57 (TTAB 1978), the Board
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`Request for Reconsideration afier Final Action
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`Page 4 of 12
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`reversed the examining attorney's refusal to register "THE MONEY STORE" for financial
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`services. The reasoning behind the Board's holding was that, although the mark "THE MONEY
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`STORE" is composed of commonly used words of the English language, "its suggests a number of
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`things, but yet falls short of describing applicant's services in any one degree of particularity." Q at
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`59. See also Game Power Headquarters Inc. v. Owens, 37 USPQ2d 1427, 1431 (E.D.Pa. 1995)
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`("GAME POWER HEADQUARTERS" for video game sales and rental stores is suggestive, since term
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`requires imagination, thought or perception to reach conclusion as to nature of services.
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`As Applicant noted in its previous response, there are a number of registrations on the Principal
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`Register that include the term "Gamma" that were registered with out a finding of secondary meaning.
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`See Registration Nos. 3,148,283 for GAMMA-CHECK; No. 3,091,205 for GAMMA-HOL SPRAY;
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`N0. 3,316,467 for GAMMA-SHRED, and No. 2,861,011 for GAMMA-CLEAR. Likewise, a number
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`‘ of registrations have issued for marks that include the term "TAG" for RFID goods or related goods.
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`These include the following:
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`PROOFTAG, No.: 3,451,064, for Smart card, plastic card and encoded label readers‘,
`1.
`optical card and encoded label readers; data-processing units; recorded media programs, namely,
`software for use in game software, recorded computer programs, sofiware packages, recorded programs
`and downloadable electronic publications, for use in access cards or tickets to computer databases or to
`physical locations, payment cards, identity cards, election cards, health cards; magnetically encoded
`identification cards; magnetically encoded cards consisting of a random arrangement of matter making
`it possible to present volume information to a reader (Class 9);
`Non-magnetic encoded identification labels of plastic; non-magnetic encoded labels of plastic
`consisting of a random arrangement of matter making it possible to present volume information to a
`reader (Class 20);
`Providing computer sofiware design, quality control, and engineering services for others;
`surveying services; engineering consultancy services; technical project studies, in the field of
`installation of product identification systems for others, technical authentication of non-counterfeit
`products (Class 42)
`Product authentication services in the field of product identification and authentication, identity
`document security, data integrity and authenticity, storage and transport security (Class 45).
`2.
`CARBOTAG, Application No. 78/897,283, for tagged gas and oil well fracture
`stimulation proppants for use in gas and oil well diagnostics
`3.
`CELLTAG, No.: 3,240,512, for electronic tracking and monitoring device comprised of
`a cellular and satellite transmitter to be secured on a non-incarcerated criminal offender to monitor and
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`report location (Class 09).
`4.
`SPORT TAG & Design, No. 3,107,967, for scoring system for all types of racing events
`consisting primarily of tags/transponders, computer hardware, and computer sofiware for tracking
`finish time and performance statistics of race participants (Class 09).
`5.
`SAFETAG, No. 3,094,054, for medical devices comprised of radio identification tags,
`scarmers, and software used to determine whether all of the medical apparatus, instruments and sponges
`have been removed from a patient afier surgery has been completed (Class 10).
`6.
`RADIOTAG, No. 3,016,206, for tracking services for retrieval of encoded products
`(Class 45).
`See. Exhibit B. Clearly, "GAMMATAG" is no more descriptive than any of the above-cited marks.
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`See also Cheng v. Thea Dispeker Inc., 35 USPQ2d 1493, 1496 (SDNY 1995) ("BRAVO
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`BROADWAY!" suggestive when used to identify musical entertainment services); Dial-A-Mattress
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`Request for Reconsideration after Final Action
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`Page 5 of 12
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`Qperating Corp. V. Mattress Madness Inc., 33 USPQ2d 1961 (EDNY 1994) ("DIAL-A-MATTRESS"
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`for services selling mattresses by telephone order is suggestive); Wynn Oil Co. v. Thomas, 5 USPQ2d
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`1944, 1950 (6th Cir. 1988) ("CLASSIC CAR WASH" suggestive as applied to car washing services).
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`D.
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`The Evidence Submitted by The Examiner is Not Dispositive
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`The Examining Attomey has submitted a intemet evidence to support
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`its claim that
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`GAMMATAG is descriptive. However, Applicant notes that this evidence is not dispositive because as
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`far as Applicant can ascertain, all of the cited references refer to Applicant or its AdvantaPure division.
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`There is no indication that third parties require GAMMATAG to refer to their products nor is the term
`found in any dictionaries.
`E.
`CONCLUSION
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`In view of the foregoing, Applicant respectfillly requests that the Examining Attomey pass this
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`application to publication and, in due course, registration
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`1
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` ORIGINAL
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`EVIDENCE SECTION
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`EVIDENCE FILE NA1V[E(S)
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`PDF FILE
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`tt://tgate/PDF/RFR/2008/07/30/20080730192622696861-
`77140083-003_001/evi_146145188126-
`191910015_._EXhibit_A_-_GAMMATAG.pdf
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`
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`\\TICRS\EXPORT2\IMAGEOUT2\77l\400\77140083\xml1
`ls \RFROO02.JPG
`.. —-———-———
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`\\TICRS\EXPOR'I‘2\IMAGEOUT2\77l\400\77140083\xml1
`\RFR0003.JPG
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`http://tgate/PDF/RFR/2008/07/30/20080730192622696861-
`77140083-003_002/evi_146145188126-
`191910015_._EXhibit_B_-_GAMMATAG.pdf
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`\\TICRS\EXPORT2\IMAGEOUT2\771\400\77140083\xml1
`\RFR0004.JPG
`—?—
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`\\TICRS\EXPORT2\IMAGEOUT2\771\400\77140083\xml1
`\RFR00O5.JPG
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`http://tgate/PDF/RFR/2008/07/30/20080730192622696861-
`77140083-003_003/evi_146145188126-
`1919100l5_._EXI-IIBIT - c - GAMMATAG.pdf
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`
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`IC,§1{§‘BYE]L1g§)D
`(2 pages)
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`ORIGINAL
`PDF FILE
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`§§§;EE’;T§D
`‘ ’
`(2 Pages)
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`ORIGINAL
`PDF FILE
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`\\TICRS\EXPORT2\IMAGEOUT2\771\400\77140083\xml1
`§ggfE]L1;T§D
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`(10 pages) T
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`\fiRooo7.JPG
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`\\TICRS\EXPORT2\1MAGEOUT2\771\400\77140083\xml1
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`Request for Reconsideration afier Final Action
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`Page 6 of 12
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`DESCRIPTION OF EVIDENCE FILE
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`\ Exhibit A and B are definitions of the terms gamma and tag.
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`2 Exhibit C consists of excerpts from teh USPTO TESS site
`1 taht show "TAG" marks that gave issued for related goods
`‘ without a showing of distinctivness.
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`SIGNATURE SECTION
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`RESPONSE SIGNATURE
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`SIGNATORY'S NAIVIE
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`/Jo J. O'Mal1ey/
`
`John J. O’Ma1ley
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`SIGNATORY'S POSI'I'ION
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`Attorney of Record
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`DATE SIGNED
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`07/30/2008
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`CONCURRENT APPEAL NOTICE FILED YES
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`FILING INFORMATION SECTION
`I
`1 Wed Jul 30 19:26:22 EDT 2008
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`
`
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`
`
`USPTO/RFR-146.145.188.126
`-20080730192622696861-771
`40083-420bf’9ffa4451e53ac8
`e493 67855 1af'7a-N/A-N/A-20
`0807301919l0015287
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`
`
`TEAS STAMP
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`PTO Forrrl 1960 (Rev 9/2007)
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`OMB No. xxxx-xxxx (Exp. xlxxxx)
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`file://\\ticrs-ais-01\ticrsexp0rt\HtmlToTifiInput\RFR00012008_O8_06_l2_34_21_TTABO8...
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`8/6/2008
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`Request for Reconsideration alter Final Action
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`Page 7 of 12
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`Request for Reconsideration after Final Action
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`To the Commissioner for Trademarks:
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`Application serial no. 77140083 has been amended as follows:
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`ARGUMENT(S)
`In response to the substantive refusa1(s), please note the following:
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`This is in response to the Office Action which issued in connection with the application.
`REMARKS
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`The Examining Attorney has refused registration on the basis that the mark is merely descriptive
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`of the goods. Applicant
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`respectfully requests reconsideration in the following remarks which
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`demonstrate that its mark "GAMMATAG" is not merely descriptive, but is at most suggestive of its
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`goods, and therefore entitled to registration on the Principal Register.
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`A.
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`Applicant's Mark Should Not Be Dissected
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`Applicant respectfully submits again that the mark must be tested for descriptiveness by
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`examining it as a whole rather than dissecting it into component parts. Estate of P. D. Beckwith Inc. v.
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`Commissioner of Patents 252 U.S. 538, 545-46, 64 L. Ed. 705, 40 S. Ct. 414 (1920) ("The commercial
`
`impression of a trademark is derived from it as a whole, not from its elements separated and considered in
`
`detail. For this reason it should be considered in its entirety"); In re Shutts, 217 USPQ 363 (T.T.A.B.)
`
`(SNO-RAKE held not to be merely descriptive of snow hand removal tool); In re Colonial Stores Inc
`
`157 USPQ 381 (CCPA 1968) (SUGAR & SPICE held not merely descriptive of bakery products);
`
`California Cooler, Inc. v. Loretto Wing, Ltd., 774 F.2d 1451, 1455, 227 USPQ 808, 810 (9th Cir.
`
`1985); Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 35
`
`USPQ2d 1342, 1351 (9th Cir. 1995).
`which states:
`
`The necessity of such an analysis is recognized in the TMEP
`
`However, a mark comprising a combination of merely descriptive components is
`registrable if the combination of terms creates a unitary mark with a unique,
`nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as
`
`applied to the goods‘. See In re Colonial Stores Inc. 394 F.2d 549, 157 USPQ 382
`(C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery products); I_n_r_e
`Shutts, 217 USPQ 363 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive of a
`snow removal hand tool).
`
`TMEP §1209.03(d)(emphasis added).
`
`The mere combination of "GAMMA" and "TAG" does not convey the exact nature of the goods.
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`Although Applicant's mark is comprised of ordinary words, the combination of words renders Applicant's
`mark unique since the combination of the two words does not result in a designation that has a plain and
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`readily understood meaning for any of the goods.
`
`In re Disc Jockeys, Inc., 23 USPQ2d 1715, 1716
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`(TTAB 1992), flag, In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982).
`
`For example, in the Trademark Trial and Appeals Board's (Board) decision in In re Mobile Ray,
`I__n_c_., 224 U.S.P.Q. (BNA) 247 (T.T.A.B. 1984), the Board found the mark " MOBILE RAY" for "
`providing x-ray examinations and other radiological services." The mark was found not to be descriptive,
`
`file ://\\ticrs-ais-0 1\ticrsexport\HtmlToTiffInput\RFR000 1200 8_0 8_06_12_34_2 l_TTABO 8...
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`8/6/200 8
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`

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`Request for Reconsideration afier Final Action
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`Page 8 of 12
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`with the Board stating:
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`We find applicant's mark only suggestive of its services. We have no doubt
`that those who would avail themselves of applicant's services would, upon
`seeing the mark "MOBILE RAY", understand that the "MOBILE" portion
`of the mark suggests the fact that the services are rendered from a mobile
`unit or van and that the "RAY" portion of the mark suggests that x-ray
`examinations are included among the services offered. That applicant's
`mark, when viewed in conjunction with its services, would suggest these
`things to the ordinary user of the services does not, in itself, render
`applicant's mark merely descriptive.
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`Applicant's "GAMMATAG" mark is not a direct description of the goods. GAMMATAG creates
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`a unitary mark that is at most suggestive of Applicant's goods. Therefore, the trademark "GAMMATAG"
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`in its entirety is not descriptive.
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`B. Mark Which Is Deemed "Merely Descriptive" Must Immediately Convey An Idea
`About The Applicant's Goods or Services
`Applicant's mark GAMMATAG and Design does not immediately convey an idea of the qualities
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`or characteristics of Applicant's services as applied to those goods. As the Examining Attorney
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`recognizes, Applicant mark is used in conjunction with RFID tags that are sterilizeable by gamma
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`radiation. However, as the definition submitted and relied upon by the Examining Attorney indicated, the
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`terms GAMMA and TAG have numerous other meanings and connotations. See also Exhibits A and B.
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`For example, the use of "gamma" without also using "ray" or "radiation" tells the consumer little about
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`the product since "gamma" has many different meanings.
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`As such mature thought and imagination are required in order to determine what features or
`
`characteristics Applicant's mark possesses. When these two unrelated terms are combined one does not
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`immediately know the precise nature of Applicant's goods. Therefore, it can in no way be said that
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`Applicant's mark immediately conveys any idea about Applicant's services, as is required for the mark to
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`be deemed "merely descriptive."
`
`This case is highly analogous to In re Hamilton Watch Co., 158 USPQ 300 (TTAB 1968).
`
`In that
`
`case, the Board in reversing an examiner's refusal to register the trademark "PRECISION METALS"
`stated:
`
`[A]s applied to 'special metal alloys,‘ 'PRECISION METALS‘ suggests the high
`quality and care involved in the production of the goods; but it does not immediately or
`with any degree of particularity describe their function, characteristics or use.
`Id. at 301. The above-quoted language of Hamilton Watch is clearly apposite here as well.
`
`"GAMMATAG" like "PRECISION METALS", is suggestive and not descriptive of Applicant's services,
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`as it fails to convey any definite information about them. Significantly, the fact that the term "metals"
`
`clearly described a characteristic of the goods ("special metal alloys") in In re Hamilton could not stand
`
`as a basis for refiising registration of the unitary mark "PRECISION METALS". See also, Bose Com. V.
`
`International Jensen Inc., 22 USPQ2d 1704 (CAFC 1992) ("ACOUSTIC RESEARCH" held suggestive
`
`for stereo speakers and turntables); In re Morton—Norwich Products Inc. 209 USPQ 791, 792 (TTAB
`
`1981) (The mark "COLOR CARE" for bleach "intimates or suggests a characteristic ofthe product rather
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`than being merely descriptive thereof"); In re TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB
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`Request for Reconsideration alter Final Action
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`Page 9 of 12
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`1978) ("THE MONEY SERVICE" suggestive of financial services).
`
`C.
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`Applicant's Mark Is Suggestive
`
`To be refused registration under 2(e)(1) of the Act, a mark must be merely descriptive or generic
`
`of the goods or services. The statutory language imposes a stringent burden since the term "merely" is to
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`be taken in its ordinary meaning of "only" or "solely" -that is, when considered with the particular goods
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`or services, the mark, because of its meaning, does M but describe them. As is well recognized, to
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`be regarded as "merely descriptive," a mark must have no significance other than as a descriptive term.
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`Blisscrafi of Hollmood v. United Plastics Co., 131 USPQ 55, 60-61 (2d Cir. 1961).
`
`A suggestive mark, on the other hand, is one which "requires imagination, thought and perception
`
`to reach a conclusion as to the nature of the goods." Stix Products
`Inc. v. United Merchants &
`
`
`Manufacturers
`Inc., 160 USPQ 777, 785 (S.D.N.Y. 1968). Accord The Comic Strip, Inc. v. Fox
`
`Television Stations Inc. 10 USPQ2d 1608, 1611 (SDNY 1989) (holding the service mark "THE COMIC
`
`STRIP" for comedy clubs suggestive and thus inherently distinctive). A mark that is "merely suggestive
`
`of a possible desirable end result" and does not describe the goods with which it is used, cannot be denied
`
`In re Frank J. Curran Co.
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`registration on the Principal Register.
`
`189 USPQ 560 (TTAB 1975)
`
`("CLOTHES FRESH" for clothes and shoe deodorant held to be suggestive).
`
`For example, in Healing the Children Inc. v. Heal the Children Inc., 22 USPQ2d 1690 (W.D.Pa.
`
`1992), the court considered whether the service mark "HEALING THE CHILDREN" was descriptive of
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`organization whose activities included medical services for children.
`court stated:
`
`In finding the mark suggestive, the
`
`In this case, "Healing the Children," does suggest an organization which benefits
`children is a salutory, curative, beneficial, or remedial way. But
`it
`is only with
`imagination that the consumer can determine that the organization's activities include
`coordinating medical teams which visit foreign countries to train local medical personnel
`and to provide acute care and diagnostic services for local children, and organizing
`transportation, visas, medical care, and foster care for children referred to plaintiff by
`cooperating foreign governments and private agencies.
`[Citation ornitted.] We must
`therefore conclude that "Healing the Children" is a suggestive mark
`Q at 1693; Similarly, in In re TMS Corp. of America, 200 USPQ 57 (TTAB 1978), the Board
`
`reversed the examining attomey’s refusal to register "THE MONEY STORE" for financial services. The
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`reasoning behind the Board's holding was that, although the mark "THE MONEY STORE" is composed
`
`of commonly used words of the English language, "its suggests a number of things, but yet falls short of
`
`describing applicant's services in any one degree of particularity." Q at 59. See also Game Power
`
`Headquarters
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`Inc. V. Owens,
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`37 USPQ2d
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`1427,
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`1431
`
`(E.D.Pa.
`
`1995)
`
`("GAME POWER
`
`HEADQUARTERS" for video game sales and rental stores is suggestive,
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`since term requires
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`imagination, thought or perception to reach conclusion as to nature of services.
`
`As Applicant noted in its previous response, there are a number of registrations on the Principal
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`Register that include the term "Gamma" that were registered with out a finding of secondary meaning.
`
`See Registration Nos. 3,148,283 for GAMMA-CHECK; No. 3,091,205 for GAMMA—HOL SPRAY; N0.
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`3,316,467 for GAMMA-SHRED, and No. 2,861,011 for GAMMA-CLEAR. Likewise, a number of
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`Request for Reconsideration after Final Action
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`Page 10 of 12
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`registrations have issued for marks that include the term "TAG" for RFID goods or related goods.
`
`These include the following:
`
`PROOFTAG, No.: 3,451,064, for Smart card, plastic card and encoded label readers;
`1.
`optical card and encoded label readers; data-processing units; recorded media programs, namely, software
`for use in game software, recorded computer programs, software packages, recorded programs and
`downloadable electronic publications, for use in access cards or tickets to computer databases or to
`physical locations, payment cards, identity cards, election cards, health cards; magnetically encoded
`identification cards; magnetically encoded cards consisting of a random arrangement of matter making it
`possible to present volume infonnation to a reader (Class 9);
`Non-magnetic encoded identification labels of plastic; non-magnetic encoded labels of plastic
`consisting of a random arrangement of matter making it possible to present volume information to a
`reader (Class 20);
`Providing computer software design, quality control, and engineering services for others;
`surveying services; engineering consultancy services; technical project studies, in the field of installation
`of product identification systems for others, technical authentication of non-counterfeit products (Class
`42)
`
`Product authentication services in the field of product identification and authentication, identity
`document security, data integrity and authenticity, storage and transport security (Class 45).
`2.
`CARBOTAG, Application No. 78/897,283, for tagged gas and oil well fracture
`stimulation proppants for use in gas and oil well diagnostics
`3.
`CELLTAG, No.: 3,240,512, for electronic tracking and monitoring device comprised of a
`cellular and satellite transmitter to be secured on a non-incarcerated criminal offender to monitor and
`
`report location (Class 09).
`4.
`SPORT TAG & Design, No. 3,107,967, for scoring system for all types of racing events
`consisting primarily of tags/transponders, computer hardware, and computer software for tracking finish
`time and performance statistics of race participants (Class 09).
`5.
`SAFETAG, No. 3,094,054, for medical devices comprised of radio identification tags,
`scanners, and software used to determine whether all of the medical apparatus, instruments and sponges
`have been removed from a patient afier surgery has been completed (Class 10).
`6.
`RADIOTAG, No. 3,016,206, for tracking services for retrieval of encoded products (Class
`
`45).
`See. Exhibit B. Clearly, "GAMMATAG" is no more descriptive than any of the above-cited marks. See
`
`also Cheng v. Thea Dispeker Inc., 35 USPQ2d 1493, 1496 (SDNY 1995) ("BRAVO BROADWAY!"
`
`suggestive when used to identify musical entertainment services); Dial-A-Mattress Qperating Cog. v.
`
`Mattress Madness Inc. 33 USPQ2d 1961 (EDNY 1994) ("DIAL-A-MATTRESS" for services selling
`
`mattresses by telephone order is suggestive); Wynn Oil Co. v. Thomas, 5 USPQ2d 1944, 1950 (6th Cir.
`
`1988) ("CLASSIC CAR WASH" suggestive as applied to car washing services).
`
`D.
`
`The Evidence Submitted by The Examiner is Not Dispositive
`
`The Examining Attorney has
`
`submitted a intemet evidence to support
`
`its claim that
`
`GAMMATAG is descriptive. However, Applicant notes that this evidence is not dispositive because as
`
`far as Applicant can ascertain, all of the cited references refer to Applicant or its AdvantaPure division.
`
`There is no indication that third parties require GAMMATAG to refer to their products nor is the term
`
`found in any dictionaries.
`E.
`CONCLUSION
`
`In View of the foregoing, Applicant respectfully requests that the Examining Attorney pass this
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`Request for Reconsideration afier Final Action
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`Page 11 of 12
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`application to publication and, in due course, registration
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`EVIDENCE
`
`Evidence in the nature of Exhibit A and B are definitions of the terms gamma and tag. Exhibit C consists
`of excerpts from teh USPTO TESS site taht show "TAG" marks that gave issued for related goods
`without a showing of distinctivness. has been attached.
`Original PDF file:
`http://tgate/PDF/RFR/2008/07/30/20080730192622696861-77140083-O03_001/evi_l46l45188126-
`191910015_._Exhibit_A_-_GAMMATAG.pdf
`Converted PDF file(s) (2 pages)
`Evidence- 1
`Evidence-2
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/07/30/20080730192622696861-77140083-003_002/evi_l 46145188126-
`191910015_._Exhibit_B_-_GAMMATAG.pdf
`Converted PDF file(s) (2 pages)
`Evidence- 1
`Evidence-2
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/07/30/20080730192622696861-77140083-003_003/evi_l46145188126-
`19 1910015_._EXHIBIT_-_C_-_GAMMATAG.pdf
`Converted PDF file(s) (10 pages)
`Evidence- 1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence- 10
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /John J. O’Mal1ey/ Date: 07/30/2008
`Signatory's Name: John J. O'Malley
`Signatory's Position