Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA471199
`ESTTA Tracking number:
`05/07/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77956069
`Craigslist, Inc.
`GRACE HAN STANTON
`PERKINS COIE LLP
`1201 3RD AVE , STE 4800
`SEATTLE, WA 98101-3099
`UNITED STATES
`pctrademarks@perkinscoie.com, asander@perkinscoie.com
`Appeal Brief
`Brief - Class 36.PDF ( 24 pages )(1137514 bytes )
`Exhibit A_Part1.pdf ( 30 pages )(2068982 bytes )
`Exhibit A_Part2.pdf ( 30 pages )(1932916 bytes )
`Exhibit A_Part3.pdf ( 30 pages )(2423967 bytes )
`Exhibit A_Part4.pdf ( 4 pages )(288670 bytes )
`Exhibit B.pdf ( 12 pages )(725852 bytes )
`Exhibit C_Part1.pdf ( 17 pages )(1000444 bytes )
`Exhibit C_Part2.pdf ( 17 pages )(1147027 bytes )
`Exhibit D.pdf ( 31 pages )(1899669 bytes )
`Exhibit E.pdf ( 4 pages )(183640 bytes )
`Exhibit F.pdf ( 34 pages )(1800684 bytes )
`Exhibit G - Class 36_Part1.pdf ( 31 pages )(2438074 bytes )
`Exhibit G - Class 36_Part2.pdf ( 31 pages )(1810670 bytes )
`Andrea M. Sander for Grace Han Stanton
`pctrademarks@perkinscoie.com, asander@perkinscoie.com
`/Andrea M. Sander/ for Grace Han Stanton
`05/07/2012
`
`Proceeding
`Applicant
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re
`
`craigslist, Inc.
`
`Serial No.:
`
`77956069
`
`Filed:
`
`March 10, 2010
`
`Mark:
`
`Class:
`
`36
`
`Examiner:
`
`Marc J. Leipzig (L0 115)
`
`
`
`APPLICANT'S BRIEF ON FINAL HEARING
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`40753-4000/LEGAL23373564.1
`40753-4000/LEGAL23579534.1
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`0
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`

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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`THE RECORD ................................................................................................................... ..3
`
`II.
`
`PROCEDURAL HISTORY ............................................................................................... ..3
`
`III.
`
`SUMMARY OF ERRORS IN EXAMINER’S ANALYSIS .............................................. ..7
`
`IV. ARGUMENT ...................................................................................................................... ..8
`
`1.
`
`First Office Action: Failure to Function Refusal was
`
`Inappropriate and Unsupported by Insufficient Evidence ....................... ..8
`
`2.
`
`Second Office Action: Examiner Mischaracterized Refusal
`
`and Did Not Provide Sufficient Weight to Arguments and
`Evidence Submitted by Applicant ......................................................... .. ll
`
`3.
`
`Final Office Action: Examiner Continues to Mischaracterize
`
`Refusal and Fails to Raise New or Compelling Arguments for
`Maintaining Refusal ............................................................................... .. 14
`
`4.
`
`Request for Reconsideration: Applicant Raised Two, New
`Issues Which Required Issuance of a New, Non-Final Office
`Action and also Provided Sufficient Evidence of Acquired
`Distinctiveness to Overcome Refusal .................................................... .. 1 5
`
`5.
`
`Reconsideration Letter: Issuance of Reconsideration Letter
`
`was Erroneous Because (1) New Issues Raised by Applicant;
`and (2) Appropriate Evidence of Acquired Distinctiveness
`Provided by Applicant ........................................................................... ..l6
`
`a. New Issues Raised in Request for Reconsideration .................. .. l 6
`
`b. Evidence of Acquired Distinctiveness was
`Appropriate and Sufficient..................................................................... ..18
`
`V.
`
`CONCLUSION ................................................................................................................. ..21
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`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`
`Apple Growers Association v. Pelletti Fruit Company, Inc., 115 USPQ 169 (N .D. Cal.
`1957) ........................................................................................................................................... .. 20
`
`Guess? Inc. v. Nationwide Time Inc., 16 USPQ2d 1804 (TTAB 1990) ..................................... .. 20
`
`In re N. I/. Organon, 79 USPQ2d 1639 (TTAB 2006) ................................................................ .. 19
`
`In re ROD’S FOOD PRODUCTS, INC. 125 USPQ 495 (TTAB 1960) ..................................... .. 19
`
`Michael S. Sachs Inc. v. Cordon Art B. V, 56 USPQ2d 1132 (TTAB 2000) .............................. .. 10
`
`Roux Laboratories, Inc. v. Clairol Incorporated, 427 F.2d 823(C.C.P.A. 1970) ....................... .. 19
`
`Wal-mart Stores, Inc. v. Loufirani and Franklin Loufrani v. Wal—Mart Stores, Inc.
`(Consolidated Opposition Nos. 91150278, 91154632, and 91152145) (TTAB 2009) ......... .. 11, 20
`
`TMEP Rules
`
`TMEP Section 714.05(a) ..................................................................................................... .. 16, 17
`
`TMEP Section 714.06 ................................................................................................................. .. 18
`
`TMEP Section 715.04(b) ........................................................................................................... .. 16
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`TMEP Section 807.14(e)(i) ........................................................................................................ .. 16
`
`TMEP Section 904.07(b) ........................................................................................................... .. 10
`
`TMEP Section 1202 .................................................................................................................... .. 10
`
`TMEP Section 1202.03(a) ................................................................................... .. 9, 11, 12, 14, 18
`
`TMEP Section 1202.03(c) ......................................................................................................... .. 12
`
`TMEP Section 1202.05 ............................................................................................................... .. 19
`
`TMEP Section 1202.07(a)(ii) ..................................................................................................... .. 19
`
`TMEP Section 1202.16 .............
`
`.......................................................................................... .. 19, 20
`
`TMEP Section 1212.02 .............................................................................................................. .. 19
`
`TMEP Section 1301.02(a) ......................................................................................................... .. 10
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`40753-4000/LEGAL23373564.1
`40753-4000/LEGAL23579534.1
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`I. THE RECORD
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`The record in this appeal consists of the following documents and evidence:
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`0
`
`File history for Application Serial No. 77956069, including:
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`0
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`Internet references to the peace symbol as a recognized symbol, attached to
`
`the Examiner's May 30, 2010, December 27, 2010 and August 7, 2011 Office
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`Actions and March 4, 2012 Reconsideration Letter (Exhibit A);
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`0
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`Internet articles defining a "favicon," attached to Applicant's November 23,
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`2010 Office Action Response (Exhibit B);
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`o TARR records and specimens for representative registrations for favicons,
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`attached to Applicant's November 23, 2010 Office Action Response (Exhibit
`
`C);
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`0
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`Internet articles and references demonstrating that the public recognizes the
`
`Peace Logo as included in the application as an identifier for Applicant's
`
`services, attached to Applicant's November 23, 2010 Office Action Response
`
`(Exhibit D);
`
`0 Evidence of Applicant's registration for the Peace Logo in Class 9, attached to
`
`Applicant's November 23, 2010 Office Action Response (Exhibit E);
`
`o TARR and TESS records identifying third-party registrations for peace
`
`symbol and smiley face marks, attached to Applicant's November 23, 2010
`
`and June 27, 2011 Office Action Responses and February 7, 2012 Request for
`
`Reconsideration (Exhibit F);
`
`o Applicant's evidence of 2(f) acquired distinctiveness, attached to Applicant's
`
`February 7, 2012 Request for Reconsideration (Exhibit G).
`
`II. PROCEDURAL HISTORY
`
`On March 10, 2010, Applicant filed the present application, claiming first use and first
`
`use in commerce on August 18, 2004 (the "Application"), seeking to register the design mark
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`40753-4000/LEGAL23 579534.1
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`shown at right (the "Mark") in connection with services identified as "providing
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`on-line computer databases and on-line searchable databases featuring
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`information, classified listings and announcements about housing, apartments,
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`condominiums, town homes, real estate, commercial real estate, roommate-wanted, and rental
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`and leasing and for sale advertisements for the forgoing" ("Applicant's Services").
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`On May 30, 2010, the Examiner assigned to the Application issued an Office Action
`
`refusing registration of the Mark for failure to function as a service mark based on the argument
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`that (1) the use of the mark on the specimen of record is merely a customized browser icon that
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`does not distinguish Applicant's Services from the services of other parties; and (2) the mark is a
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`universally recognized symbol and, as such, consumers would not associate the Mark with the
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`Applicant. In support of its argument, the Examiner cited generally to Trademark Act Sections
`
`1, 2, 3, and 45, 15 U.S.C. Sections 1051-1053, 1127, In re Moody's Investors Serv., Inc., 13
`
`USPQ2d 2043 (TTAB 1989); In re The Signal C0s., 228 USPQ 956 (TTAB 1986), In re Hughes
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`Aircraft Co., 222 USPQ 263 (TTAB 1984), and TMEP Sections 904.07(b), 1302. The Examiner
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`requested that Applicant submit a substitute specimen or amend the application to an intent-to-
`
`use basis.
`
`On November 23, 2010, Applicant timely responded to the Office Action with arguments
`
`that use of the Mark as a browser icon functions as a mark because (1) there is a close
`
`association between a favicon logo and the provider of a service; (2) the Trademark Office has’
`
`recognized the protectability of such icons; (3) the same logo has already been registered in
`
`Class 9 to the Applicant; and (4) there is direct evidence that consumers associate the Mark with
`
`the Applicant. In support of its arguments, Applicant submitted representative registrations
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`where use of a mark as a favicon has been accepted as specimen of use, Applicant's Class 9
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`40753-4000/LEGAL23 579534. 1
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`registration for the Mark, evidence that the Mark is associated by the public with Applicant's
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`Services, and representative third-party peace symbol registrations. See Exhibits B-F.
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`On December 27, 2010, the Examiner issued a second Office Action refusing registration
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`for failure to function as a service mark. The Examiner did not explicitly concede that a favicon
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`can function as a service mark but did not provide additional arguments against the argument.
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`Instead, the Examiner focused on the argument that the applied-for-mark, as shown on the
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`specimen of record, does not function as a service mark because (1) it is a universally recognized
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`symbol; and (2) previously registered favicons are more distinctive than the Mark. The
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`Examiner again requested that Applicant submit a substitute specimen or amend the application
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`to an intent-to-use basis. Additionally, while Applicant did not raise an acquired distinctiveness
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`claim in the prior Office Action response, the Examiner addressed the acquired distinctiveness of
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`Applicant's Mark as a basis for overcoming the refusal. The Examiner advised that Applicant's
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`registration for the Mark was insufficient to demonstrate secondary source. Additionally, the
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`Examiner provided information regarding types of evidence that would be required to support a
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`claim of acquired distinctiveness.
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`On June 27, 2011, Applicant submitted a second Office Action Response arguing that the
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`peace symbol is capable of functioning as a mark, including representative third-party
`
`registrations, and arguments that Applicant's Mark is no less distinctive than other registered
`
`favicons, specifically registrations for basic geometric shapes. Applicant reserved the right to
`
`enter a claim of acquired distinctiveness and/or undertaking other options for resolving the
`
`refusal. Applicant had not yet amended the Application to assert a claim of acquired
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`distinctiveness. See Exhibit C.
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`40753-4000/LEGAL23579534.1
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`
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`On August 7, 201 l, the Examiner issued an Office Action making final the refusal based
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`upon a failure to function as a service mark. The Examiner provided additional evidence of the
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`allegedly ubiquitous nature of the peace symbol and compared it to the allegedly similar
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`ubiquitous nature of a smiley-face design. The Examiner did not address Applicant's offer to
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`enter a claim of acquired distinctiveness and evidence in support.
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`On February 7, 2012, Applicant filed a Request for Reconsideration again arguing that
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`the Mark is capable of functioning as a service mark, including evidence of third-party smiley-
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`face registrations in response to the Examiner's comparison of the Mark to these designs.
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`Applicant also submitted a claim of acquired distinctiveness. Applicant advised that, if the
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`arguments and evidence of acquired distinctiveness were not accepted, Applicant was willing to
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`amend the Mark from a black-and-white special form to one claiming purple as a color feature of
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`the Mark. See Exhibit G.
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`On March 4, 2012, the Examiner denied Applicant's request for reconsideration
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`maintaining the failure to function refusal and advised that the Request for Reconsideration did
`
`not raise a new issue. The Examiner rejected Applicant's evidence of acquired distinctiveness
`
`first arguing that evidence of acquired distinctiveness was inappropriate because the refusal was
`
`based on failure to function rather than descriptiveness or genericness. The Examiner also
`
`argued that, if the mark did function as a service mark, the evidence of acquired distinctiveness
`
`was insufficient. The Examiner did not address Applicant's offer to amend the Mark to claim
`
`purpose as a color feature of the Mark.
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`On February 7, 2012, Applicant filed a timely Notice of Appeal with the Trademark Trial
`
`and Appeal Board (the "Board").
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`
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`III.
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`SUMMARY OF ERRORS IN EXAMINER'S ANALYSIS
`
`As discussed in more detail in the Arguments section below, several errors were made by
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`the Examiner in the Office Actions and Reconsideration Letter issued for the Mark. Specifically,
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`Applicant alleges the following errors on the part of the Examiner:
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`Applicant's evidence that use of a mark as a favicon was sufficient to overcome
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`Examiner's initial refusal of use of the mark as a customized browser icon, but the
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`Examiner failed to appropriately withdraw this basis for refilsal;
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`The Examiner's refusal based on the ubiquitous nature of the Mark was inappropriately
`
`categorized as a "failure to function" refusal by the Examiner. The evidence and support
`
`provided by the Examiner indicates the intended refusal was one based on lack of
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`distinctiveness. Because the refusal was not appropriately articulated by the Examiner,
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`Applicant was unable to fully respond to the Examiner's argument;
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`The Examiner's argument that evidence of acquired distinctiveness was inappropriate to
`
`overcome the refusal is incorrect given that the crux of Examiner's argument was the lack
`
`of distinctiveness of the mark, as well as additional evidence that indicates evidence of
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`acquired distinctiveness is generally acceptable to overcome various "failure to function"
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`refusals;
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`The evidence of acquired distinctiveness submitted by Applicant was sufficient to
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`overcome the Examiner's refusal; and
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`Applicant raised two new issues in its request for reconsideration (a claim of acquired
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`distinctiveness and a request to amend the drawing of the Mark), both of which required
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`
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`issuance of a new, non-final Office Action and an opportunity to submit additional
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`evidence and arguments in support of the acquired distinctiveness of the mark.
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`In the argument section below, Applicant discusses each of the above errors and provides
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`supporting legal arguments for its position. The Conclusion section details the Applicant's
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`requests from the Board.
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`IV.
`
`ARGUMENT
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`1.
`
`First Office Action: Failure to Function Refusal was Inappropriate
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`and Unsupported by Insufficient Evidence
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`In the First Office Action, the Examiner refused registration of the mark, arguing that the
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`applied-for mark did not function as a service mark because (1) the specimen showed the mark
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`used merely as a customized browser icon; and (2) the mark is a universally recognized symbol
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`which consumers would not associate with the applicant. In support of the refusal, the Examiner
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`provided Google search results showing use of the peace symbol by third-parties, a Wikipedia
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`entry discussing the peace symbol, and four articles discussing the origin of the peace symbol.
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`Applicant responded to the Office Action explaining that Applicant's specimen showed
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`use of the mark as a "favicon," which is a small logo that identifies the source of a website.
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`Applicant provided relevant articles and definitions detailing favicons and their role in branding.
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`Applicant also submitted representative, third-party registrations for favicons, as well as TARR
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`records and favicon specimens for third-party applications that would be registered imminently.
`
`See Exhibit C. Applicant's arguments and submitted evidence clearly demonstrated that there is
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`a close association between a favicon logo and the provider of a service, which creates precisely
`
`the sort of connection that the trademark law is designed to recognize and protect. As such, use
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`of Applicant's Mark as a favicon should be considered sufficient to overcome the "failure to
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`function refusal." If the Examiner had concerns beyond the specimen of record, these should
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`have been raised in any subsequent Office Action.
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`Applicant also provided evidence that Applicant had already successfully registered the
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`Mark for related downloadable software and provided the relevant details of the registration
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`(Reg. No. 3856547). Given the Examiner's reference to the peace symbol as a universally
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`recognized symbol, similar to the discussion in connection to an ornamentation refusal in TMEP
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`Section l202.03(a), establishing the existence of such a registration should be sufficient to
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`demonstrate secondary source, and Applicant clearly made this connection the Office Action
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`Response. As such, this evidence alone should also have been found sufficient to overcome the
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`failure to function refusal. While existence of a U.S. registration is generally sufficient to
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`demonstrate secondary source, Applicant also provided direct evidence that the Mark serves to
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`identify Applicant's services, including the fact that the mark only appears when consumers visit
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`a genuine craigslist, Inc. website and third-party media and intemet references connecting the
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`Mark with Applicant's services.
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`Finally, Applicant provided examples of third-party registrations for the peace symbol as
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`evidence that the symbol is capable of functioning as a mark. Applicant also noted that
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`comparable symbols, such as the smiley face, have been registered by third-parties.
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`Applicant's response was clearly sufficient to overcome the refusal raised by the
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`Examiner in the Office Action. A service mark is defined as fly word, name, symbol, or device
`
`used by a party to identify and distinguish its services from that of another. 15 U.S.C. §l127
`
`(emphasis added). As such, no mark can be refused simply because it is composed of a
`
`particular symbol, word, or design. As such, a failure to function refusal is only appropriate
`
`when, as used on the specimen of record, the mark does not serve to identify and distinguish
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`40753-4000/LEGAL23579534.l
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`applicant's services from those of others and to indicate the source of applicant's services. See
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`TMEP Section 904.07(b).
`
`In order to function as a service mark, the mark must be used in a manner that would be
`
`perceived by purchasers as identifying and distinguishing the source of the services included in
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`the application. See TMEP 1301 .02(a). The issue of whether the mark fails to function is
`
`usually tied to use of the mark as evidenced by the specimen, rather than the appearance of the
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`mark itself. See TMEP Section 1202; see also Michael S. Sachs Inc. v. Cordon Art B. V, 56
`
`USPQ2d 1132 (TTAB 2000). Representative examples of specimens that may not reflect a mark
`
`functioning as a service mark include use (1) to convey advertising or promotional information;
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`(2) to identify a product, device, or instrument sold or used in the performance of a service rather
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`than to identify the service itself; (3) to identify a process, style, method, or system used in
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`rendering a service; (4) of a term to identify a menu item; (5) as the name or design of a
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`character or person; (6) use as a trade name; and (7) that is merely ornamental. See TMEP
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`Section 1301 .O2(a).
`
`It is clear that the Mark does not fall into any of uses for which a failure to function as a
`
`service mark is common. Additionally, the Examiner's refusal only connection to use of the
`
`Mark on the specimen-of-record is the argument that the mark is only used as a customized
`
`browser icon. The Examiner does not tie the fact that the Mark is a well-known symbol into
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`Applicant's use of the Mark on the specimen of record. For these reasons, the Examiner was
`
`incorrect in stating that the fact that the Mark is a universally recognized symbol was a basis for
`
`the failure to function refusal. As such, Applicant's arguments and evidence supporting a finding
`
`that a favicon is an acceptable specimen that creates the requisite link in consumers’ minds
`
`between the Mark and the services should have been acceptable to overcome the refusal.
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`40753-4000/LEGAL23579534.1
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`2.
`
`Second Office Action: Examiner Mischaracterized Refusal and Did Not
`
`Provide Sufficient Weight to Arguments and Evidence Submitted by Applicant
`
`The Examiner issued a second Office Action maintaining the failure to function refusal,
`
`citing to the same provisions included in the First Office Action. The Examiner did not
`
`specifically address whether one of the bases for maintaining the refusal was that the specimen
`
`shows the mark used as a favicon. The Examiner simply stated that the registered favicons relied
`
`upon by Applicant are more distinctive than the design sought to be registered by the Applicant.
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`The Examiner then quoted TMEP Section 1202.03 (a), referenced previously in this brief, which
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`states that, when determining whether a mark is merely ornamental, the commercial impression
`
`should be analyzed, including whether the mark is a common expression or symbol, such as the
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`peace symbol. In support of its citation to TMEP Section 1202.03(a), the Examiner also cited to
`
`the TTAB decision in the consolidated cases of Wal-mart Stores, Inc. v. Loufrani and Franklin
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`and Loufrani v. Wal—Mart Stores, Inc. (Consolidated Opposition Nos. 91150278, 91 154632, and
`
`91152145) (TTAB 2009), which references the smiley-face logo as a ubiquitous, non-distinctive
`
`symbol. The Examiner's reliance on this case as support for the failure to function as a service
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`mark refusal, however, is misplaced. The issue in the Wal—Mart decision was whether Wal-
`
`Mart's smiley-face mark lacked distinctiveness, not whether it failed to function as a mark based
`
`on any specimen of record. The Board found that the "smiling face" is a common, non-
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`inherently distinctive design, but ultimately determined the mark had achieved acquired
`
`distinctiveness based on (1) Wal-Mart's extensive use and advertisement; and (2) the fact that
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`there was little evidence of any substantial use by other retail department stores of a similar
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`smiling face design. Id. at 16.
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`
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`While the stated refiisal in the second Office Action is failure to function as a service
`
`mark, the Examiner's arguments and documented support for the arguments indicate that the
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`refiisal is actually either, more specifically, an ornamental refusal, or simply that the mark lacks
`
`inherent distinctiveness. These arguments and evidence include (1) the Examiner's statement
`
`that other registered favicons are more distinctive than Applicant's Mark; (2) the Examiner's
`
`reliance on a portion of the TMEP related to ornamental refusals; and (3) citation to a case
`
`finding that the smiling face is not inherently distinctive.
`
`If the refusal was an ornamental refusal, the Examiner should have accepted Applicant's
`
`evidence of secondary source (in the form of its U.S. registration for the Mark in Class 9) as
`
`sufficient to overcome the refusal, and a second Office Action was not appropriate. One issue to
`
`consider in an ornamentation refusal is the commercial impression created by the proposed mark,
`
`including its significance and whether it is a common expression or symbol, including the peace
`
`symbol. See TMEP Section 1202.03(a). It is clearly established, however, that it is possible to
`
`overcome such an ornamentation refusal by showing secondary source, including by showing
`
`ownership of a U.S. registration on the Principal Register of the same mark for other goods based
`
`on use in commerce. See TMEP l202.03(c).
`
`If, alternatively, the refusal was simply lack of
`
`inherent distinctiveness, the Examiner should have properly identified the refusal.
`
`Finally, in the second Office Action, the Examiner delineates what evidence would be
`
`required from Applicant in order to support a claim of acquired distinctiveness. This is relevant
`
`because subsequently, in the Reconsideration Letter, the Examiner inconsistently argues that
`
`evidence of acquired distinctiveness is inappropriate in response to the failure to function refusal,
`
`which will be discussed in greater detail later in this Brief.
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`Applicant responded to the second Office Action by again addressing the failure to
`
`function as a service mark refusal (as the Examiner has not raised a lack of distinctiveness
`
`refusal) and arguing that the peace symbol is capable of functioning as a mark because, while the
`
`peace symbol is commonly associated with pacifism, consumers should not have difficultly
`
`distinguishing the peace symbol as an arbitrary source indicator for online services not related to
`
`pacifism, including additional evidence of registered peace symbol service marks. These third-
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`party registrations indicate that the Trademark Office has previously found that consumers are
`
`capable of distinguishing the peace symbol as a source indicator for a number of different goods
`
`and services offered by a number of different entities. Applicant also argued that Applicant's
`
`mark is no less distinctive than other registered favicons given that two of the registered favicons
`
`consisted solely of common, geometric figures. See Exhibit C.
`
`Applicant's response to the Second Office Action should have been found sufficient to
`
`overcome the failure to function as a service mark refusal. First, the Examiner cites to the TMEP
`
`section governing ornamental refiasals as support for the refusal. This section clearly states that
`
`evidence of secondary source, including a registration for the Mark covering different goods
`
`owned by the Applicant, is sufficient to overcome such a refusal. Applicant submitted exactly
`
`this type of evidence. Additionally, Examiner provides no support for the refusal that the
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`ubiquitous nature of the mark is an appropriate basis for a failure to function refusal, aside from
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`the statement that consumers will not view the Mark as a source indicator for Applicant's
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`Services. Applicant's evidence of third-party registrations, however, clearly establishes
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`Trademark Office precedent that consumers are capable of viewing the Mark as a source
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`indicator for a wide number of goods and services offered by different entities.
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`3.
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`Final Office Action: Examiner Continues to Mischaracterize Refusal and
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`Fails to Raise New or Compelling Arguments for Maintaining Refusal
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`On August 7, 2011, the Examiner issued an Office Action making its refusal to register
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`the mark for failure to function as a service mark final based on the ubiquitous nature of the
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`peace symbol. In the final Office Action, the Examiner failed to continue the refusal based on
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`the use of the mark as a favicon on the specimen of record. As such, this issue should not be
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`considered maintained and, assuming Applicant's mark is found to be sufficiently distinctive, the
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`specimen of record should be accepted.
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`The Examiner reiterated the arguments that the Mark fails to function as a service mark
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`because it is a universally-recognized symbol. As discussed above, Applicant believes this
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`refusal is inappropriate and is instead more appropriately classified as a refusal based on lack of
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`distinctiveness. In support of the refusal, the Examiner provided additional articles regarding
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`third-party recognition of the peace symbol and again cites to TMEP Section l202.03(a). The
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`Examiner, however, advised that the evidence of third-party registrations for the peace symbol
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`submitted by Applicant as evidence are not persuasive because they incorporate the symbol into
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`composite marks. A review of the third-party registrations submitted by Applicant, however,
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`clearly demonstrate that the majority of the registrations do not contain a word element and, at
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`most, incorporate a secondary, minimal design element. See Exhibit F. As such in each
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`registration, the peace symbol is the dominant portion of the mark and is the portion most likely
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`to be evaluated by a consumer when determining the source of the goods or services. As
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`discussed above, for these reasons, the third-party registrations are extremely relevant in
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`demonstrating that Trademark Office precedent recognizes and acknowledges that consumers are
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`in fact capable as viewing the peace symbol as a source indicator.
`Applicant reiterates its arguments that its prior submissions should have been found
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`sufficient to overcome this refusal.
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`4.
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`Request for Reconsideration: Applicant Raised Two, New Issues Which
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`Required Issuance of a New, Non-Final Office Action and also Provided Sufficient
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`Evidence of Acquired Distinctiveness to Overcome Refusal
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`In response to the Final Office Action, Applicant submitted a Request for
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`Reconsideration and filed a timely Notice of Appeal. In the Request for Reconsideration,
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`Applicant reiterated its arguments that the Mark functions as a service mark, including evidence
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`of third-party registrations for the peace symbol and its own registration for the Mark in Class 9.
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`See Exhibits E and F. Additionally, because the Examiner analogized the peace symbol to the
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`smiley face, Applicant submitted additional representative examples of third—party registrations
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`for the smiley-face which demonstrated that the Trademark Office has also found consumers
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`capable of viewing the smiley face as a source indicator. Id.
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`The Applicant also raised two new issues in the request for reconsideration. First,
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`Applicant amended the Application to add a 2(i) claim and submitted evidence of the acquired
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`distinctiveness of the mark, including evidence of (1) use of the mark for more than seven years;
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`(2) use of the mark with a mobile application; (3) specific direction to consumers to look for the
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`Mark as an indicator of genuine craigslist, Inc. services; (4) an extensive and widespread
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`consumer base; (5) extremely large numbers of consumers in the form unique visitors to the
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`craigslist.org website, website hits, and website rank; and (6) third-party media references
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`associating the Mark with Applicant's Services. See Exhibit G.
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`Second, Applicant offered to amend the Mark from a black-and white special form to one
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`claiming purple as a color feature of the Mark. Such an alteration is authorized because it is
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`viewed as a restriction or limitation on Applicant's rights in the Mark. Amendment of a black-
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`and-white special form drawing to one claiming a color as a feature of the mark generally does
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`not constitute a material alteration because it is considered a restriction or limitation of
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`applicant's rights. See TMEP 807.14(e)(i).
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`5.
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`Reconsideration Letter: Issuance of Reconsideration Letter was Erroneous
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`Because (1) New Issues Raised by Applicant; and (2) Appropriate Evidence of
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`Acquired Distinctiveness Provided by Applicant
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`The Examiner incorrectly issued a Reconsideration Letter in response to Applicant's
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`Request for Reconsideration. As