Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA765905
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`Filing date:
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`08/22/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`86534471
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`Apex Development, LLC
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`Applied for Mark
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`RENTAWEEK
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`Correspondence
`Address
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`Submission
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`Attachments
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`MATTHEW H SWYERS
`THE TRADEMARK COMPANY PLLC
`344 MAPLE AVE WEST, PMB 151
`VIENNA, VA 22180
`UNITED STATES
`mswyers@thetrademarkcompany.com
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`Appeal Brief
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`Brief of the Appellant.pdf(393939 bytes )
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`Matthew Swyers
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`mswyers@thetrademarkcompany.com
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`/Matthew H. Swyers/
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`08/22/2016
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Application of Apex Development, LLC
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`Serial No.
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`Trademark:
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`Filing Date:
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`86534471
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`RENTAWEEK
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`February 13, 2015
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`BRIEF OF THE APPLICANT
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`TABLE OF CONTENTS
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`Page Nos.:
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`Table of Authorities …………………………………………………………………….. 3
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`I.
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`II.
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`III.
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`IV.
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`Introduction……………………………………………………………………… 4
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`Statement of the Case……………………………………………………………. 4
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`Argument…………………………………………………………………………. 4
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`Conclusion……………………………………………………………………..…. 13
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`TABLE OF AUTHORITIES
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`CASES:
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`Page Nos.:
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`In re Abcor Development Corp., 588 F.2d 811, 813, 200 USPQ 215, 217
`(C.C.P.A. 1978)……………………………………………………………………… 5, 6
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`In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986)…… 5
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`In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979)……………………………….. 5
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`In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)……………………… 5
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`In re MetPath Inc., 223 USPQ 88 (TTAB 1984)………………………………...……. 5
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`Railroad Salvage of Connecticut, Inc. v. Railroad Salvage, Inc., 561 Fed.,
`1014 (D.C.R.I. 1983). ………………………………………………………………… 11
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`OTHER AUTHORITIES:
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`TMEP § 1209.01(b)……………………………………………………………………. 5
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`15 U.S.C. §1052(e)(1)………………………………………………………………… 5
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`3
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`I.
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`INTRODUCTION
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`COMES NOW the Applicant Apex Development, LLC (hereinafter “Applicant”) and
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`through counsel The Trademark Company, PLLC, and provides this Brief of the Applicant in
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`support of its appeal of the examining attorney’s refusal to register the instant mark.
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`II.
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`STATEMENT OF THE CASE
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`On or about February 13, 2015 Applicant filed the instant trademark with the U.S. Patent
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`and Trademark Office seeking to register the same on in connection with the following services:
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`"[v]acation real estate timeshare services and hotel services" as well as "[m]aking hotel
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`reservations for others; resort hotel services".
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`On or about May 20, 2015 the Examining Attorney refused registration of the Applicant’s
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`trademark on the grounds that it is merely descriptive under Section 2(e)(1) of the Trademark Act
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`of 1946 when used on or in connection with Applicant’s services.
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`On or about June 1, 2015 Applicant filed a response to the Office Action dated May 20,
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`2015 arguing in support of registration. However, ultimately Applicant’s argument was not
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`deemed persuasive by the Examining Attorney and, accordingly, on or about April 4, 2016 the
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`Examining Attorney made the refusal final.
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`The instant appeal now timely follows.
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`III. ARGUMENT
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`The Examining Attorney refused registration based upon a finding that the mark is merely
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`descriptive of the Applicant’s services. Insofar as Applicant’s proposed mark is not merely
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`descriptive of the services identified in the application, Applicant respectfully submits that there
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`is no basis to maintain the instant refusal and that registration of the Applicant’s trademark is
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`appropriate.
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`4
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`Matter that "merely describes" the goods or services on or in connection with which it is
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`used is not registrable on the Principal Register. TMEP § 1209. As noted in In re Abcor
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`Development Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (CCPA 1978):
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`The major reasons for not protecting such marks are: (1) to prevent the owner of a
`mark from inhibiting competition in the sale of particular goods; and (2) to maintain
`freedom of the public to use the language involved, thus avoiding the possibility of
`harassing infringement suits by the registrant against others who use the mark when
`advertising or describing their own products.
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`To be refused registration on the Principal Register under §2(e)(1) of the Trademark Act
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`(hereinafter “the Act”), 15 U.S.C. §1052(e)(1), a mark must be merely descriptive or deceptively
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`misdescriptive of the goods or services to which it relates. TMEP § 1209.01(b). A mark is
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`considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature,
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`purpose or use of the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
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`1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast
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`Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held
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`merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB
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`1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing
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`services for detecting and monitoring prostatic cancer); In re Bright-Crest, Ltd., 204 USPQ 591
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`(TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct
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`mailing).
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`The determination of whether or not a mark is merely descriptive must be made in relation
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`to the goods or services for which registration is sought, not in the abstract. TMEP §
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`1209.01(b)(emphasis added). This requires consideration of the context in which the mark is used
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`or intended to be used in connection with those goods or services, and the possible significance
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`that the mark would have to the average purchaser of the goods or services in the marketplace. Id.
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`See also In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
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`Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending
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`Associates, 226 USPQ 285 (TTAB 1985).
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`It is not necessary that a term describe all of the purposes, functions, characteristics or
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`features of a product to be considered merely descriptive; it is enough if the term describes one
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`significant function, attribute or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71
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`USPQ2d1370, 1371 (Fed. Cir. 2004) ("A mark may be merely descriptive even if it does not
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`describe the 'full scope and extent' of the applicant's goods or services," citing In re Dial-A-
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`Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re
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`Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010.
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`However, use of a descriptive term in conjunction with other distinguishing elements does
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`not render the entire mark “merely descriptive”. Instead, to be characterized as “descriptive,” a
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`mark must immediately convey knowledge of the ingredients, qualities or characteristics of the
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`goods or services. In re Quik-Print Copy Shops Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA
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`1980) (emphasis added). In the context of the Act, “merely” descriptive means “only” descriptive.
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`Id. at n. 7. Moreover, the mark must give some reasonably accurate or tolerably distinct knowledge
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`of the essence of the service. If the information conveyed by the mark is indirect or vague, the
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`mark is being used in a suggestive rather than a descriptive manner. See J. Thomas McCarthy,
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`McCarthy on Trademarks and Unfair Competition, §11:19 ( Ed. 2000); The Money Store v. Harris
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`Corp. Finance, Inc. 216 USPQ 11, 18 ( Cir. 1982) (“‘THE MONEY STORE’ conveys the idea of
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`a commercial establishment whose service involves supplying money. The term does not,
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`however, necessarily convey ‘the essence of the business, money lending.... Some imagination and
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`perception are therefore required to identify the precise nature of the services . . . .“); In re Ralston
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`Purina Company, 191 USPQ 237, 238 (TTAB 1976) (The term SUPER is not used to describe
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`any real or specific item or characteristic or quality, but merely to connote a vague desirable
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`characteristic or quality and therefore it need not be disclaimed from RALSTON SUPER SLUSH).
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`In determining whether a particular mark is merely descriptive of a product, a reviewing
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`court is tasked with considering the mark in its entirety, with a view toward “what the purchasing
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`public would think when confronted with the mark as a whole.” In re Hutchinson Technology Inc.
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`852 F,2d 552, 552-54 (Fed. Cir. 1988). To the extent that there may be doubt as to whether
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`applicant’s mark is merely descriptive or suggestive of its goods, it is commonly accepted practice
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`to resolve any doubt in the applicant’s favor and publish the mark for opposition. In re Morton-
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`Norwich Products, Inc. 209 USPQ 791 (TTAB 1981); In re Gourmet Bakers Inc., 173 USPQ 565
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`(TTAB 1972).
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`Applicant respectfully submits that the instant mark is suggestive of the Applicant’s
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`services and not merely descriptive as contended by the Examining Attorney.
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`If a consumer has to exercise “mature thought or follow a multi-stage reasoning process”
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`to determine the characteristics of a product or service, then the mark is suggestive, not descriptive.
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`In re Tennis in the Round, Inc. 199 USPQ 496, 498 (TTAB 1978) (“This association of applicant’s
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`mark with the phrase ‘theater-in-the-round’ creates an incongruity...,” thus TENNIS IN THE
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`ROUND is not merely descriptive of tennis facilities.). See also, Blisscraft of Hollywood v. United
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`Plastics Co. 294 F.2d. 694, 131 USPQ 55 (2d. Cir. 1961) (POLY PITCHER not merely descriptive
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`of polyethylene pitchers; suggestive of Molly Pitcher of Revolutionary time); In re Colonial
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`Stores, Inc. 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE not merely descriptive
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`of bakery products; suggestive of nursery rhyme); Douglas Laboratories Corp. v. Copper Tan,
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`Inc. 210 F.2d 453, 100 USPQ 237 (2d Cir. 1954), cert. denied 347 U.S. 968, 101 USPQ 505 (1954)
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`(finding COPPERTONE for sun tan oil suggestive, not descriptive); In re Realistic Co. 440 F.2d
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`1393, 169 USPQ 610 (CCPA 1971) (finding CURV for permanent wave solution suggestive, not
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`descriptive); and, Colgate-Palmolive Co. v. House for Men, Inc. 143 USPQ 159 (TTAB 1964)
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`(finding RAP1D- SHAVE for shaving cream suggestive, not descriptive).
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`In Equine Technologies Inc. v. Equitechnology Inc. 68 F.3d 542 (1st Cir. 1995), the court
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`was required to determine whether the mark EQUINE TECHNOLOGIES was descriptive or
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`suggestive when used in connection with high-tech hoof pads for horses. The court cited authorities
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`indicating that the hallmark of the descriptive term is a specific identification of the marked good.
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`Id. at 544. In holding the mark EQUINE TECHNOLOGIES to be correctly characterized as
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`suggestive rather than descriptive, the court noted that while there is no dispute that the term
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`“equine” is descriptive of horses, the question is whether the mark, in its entirety, is merely
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`descriptive of the plaintiff’s product — hoof pads for horses. Id. at 545. In this case, the court
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`found that the mark itself does not convey information about the plaintiff’s products or its intended
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`consumers. Rather, it requires imagination to connect the term “Equine Technologies” to hoof care
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`products in general, and to the plaintiff’s product in particular.
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`In Ex Parte Club Aluminum Products Co. 105 USPQ 44 (Commissioner 1955), the mark
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`COOK-N-LOOK was held registrable for transparent glass covers for cooking utensils. The mark
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`was somewhat suggestive of a property the goods might have, but like Applicant’s mark, did not
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`describe the goods per se:
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`The mark is a compound word mark which describes what one who uses the covers can do,
`i.e. look into the utensil to see the cooking process, but this does not make the mark
`descriptive of the covers. The necessity for analysis removes it form the category of mere
`descriptiveness.
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`Id
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`In Independent Nail & Packing Co. v. Stronghold Screw Products, Inc. 205 F.2d 921, 925
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`( Cir. 1953), cert. denied 346 U.S. 491 (1953), the court held that STRONGHOLD as applied to
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`ribbed nails was not descriptive, stating that:
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`Although the world ‘stronghold’ is suggestive of one of the attributes of plaintiff’s nail
`with the annular thread, it is not descriptive of a nail, let alone that type of nail. A person
`unaware of the particular product of the manufacturer, upon seeing or hearing the name
`‘stronghold’ would find it virtually impossible to identify the product to which it might
`have been applied.
`Id.
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`In Worthington Foods, Inc. v. Kellogg Co. 732 F. Supp. 1417, 1435 (S.D. Ohio 1990), the
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`court found that a multi-stage reasoning process was necessary before a consumer could
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`understand the message conveyed by the mark HEARTWISE, that is, food which is healthful for
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`the heart. The court also noted that assuming HEARTWISE meant “wise for one’s heart,” it might
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`refer to a large number of goods or services such as running shoes, a treadmill, a calorie counter,
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`or an Ann Landers newspaper column. The court held that HEARTWISE was a suggestive rather
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`than descriptive mark as the consumer could not directly cull a message concerning the healthful
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`characteristics of the goods simply from looking at the mark.
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`A brief review of other suggestive marks helps clarify this dichotomy:
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`(1) SUGAR & SPICE for use on bakery products held to be suggestive not
`descriptive.
`In re Colonial Stores, Inc. 394 F.2d 549, 157 USPQ 382 (CCPA 1968).
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`(2) 100 YEAR NITE-LITE for light with life expectancy of 500 years held to be
`suggestive not descriptive. Donsky v. Bandwagon, Inc. 193 USPQ 336 (D. Mass.
`1976).
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`(3) TENNIS IN THE ROUND held not descriptive of tennis facilities. In re Tennis
`in the Round, Inc. 199 USPQ 496 (TTAB 1978).
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`(4) RAILROAD SALVAGE for sale of goods from bankruptcy liquidations and
`discontinued goods held to be suggestive. Railroad Salvage of Conn., Inc. v.
`Railroad Salvage, Inc. 561 F.Supp. 1014 (D.R.I. 1983).
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`(5) UNDERNEATH IT ALL for undergarment products held to be suggestive in
`Maidenform, Inc. v. Munsingwear, Inc. 195 USPQ 297 (SDNY 1977).
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`(6) CITIBANK for urban banking services held to be suggestive in Citibank, N.A.
`v. Citibanc Group, Inc. 724 F.2d 1540 (11th Cir. 1984).
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`(7) CHARRED KEG for bourbon whiskey held to be suggestive, even though
`bourbon is an American-type whiskey that is made in part by aging carried out in
`new charred oaken containers. In re Majestic Distilling Co., Inc. 164 USPQ 386
`(CCPA 1970).
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`(8) LONGTONG for barbecue tongs held to be suggestive in Ex parte Nixdorff
`Krein Mfg Co., 115 USPQ 362 (Comm. Pat. 1957).
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`(9) BRAKLEEN for a brake parts cleaner held to be suggestive and not descriptive
`in C.J. Webb, Inc. 182 USPQ 63 (TTAB 1974).
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`(10) DRI-FOOT held to be suggestive of foot deodorant in In re Pennwalt Corp.
`173 USPQ 317 (TTAB 1972).
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`(11) CHEW ‘N CLEAN was held not to be descriptive of tooth powder in In re
`Colgate-Palmolive Company 160 USPQ 733 (CCPA 1969).
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`(12) COPPERTONE was found not to be descriptive of a suntan preparation in
`Douglas Lab Corp. v. Copper Tan, Inc. 210 F.2d 453, 100 USPQ 237 (2d Cir.
`1954), cert denied 347 U.S. 968 (1954).
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`In the present case, the “mental link” between the trademark RENTAWEEK and the
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`Applicant’s services as identified in the application is neither immediate nor instantaneous.
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`Applicant’s Trademark is Suggestive Under the TTAB’s Three-Part Test
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`The Trademark Trial and Appeal Board has adopted a three-part test to help determine
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`whether a mark is descriptive or suggestive:
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`(1) The degree of imagination necessary to understand the product;
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`(2) A competitor’s need to use the same terms; and
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`(3) Competitors’ current use of the same or similar terms.
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`See No Nonsense Fashions, Inc. v. Consolidated Food Corp., 226 USPQ 502 (TTAB 1985).
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`(1) Degree of Imagination
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`Under the degree of imagination test, the greater the number of “imaginative steps”
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`required for a consumer to arrive at a tolerably accurate or direct description of the product or
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`service from the mark itself, the more likely the term is accurately characterized as “suggestive”
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`and not “merely descriptive”. See Railroad Salvage of Connecticut, Inc. v. Railroad Salvage, Inc.,
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`561 Fed. 1014 (DCRI 1983). Since there is no instantaneous connection as to the nature of the
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`services provided by the Applicant, it is far more likely that the trademark is correctly deemed
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`suggestive rather than descriptive. See Stix Products, Inc. v United Merchants and Manufacturers,
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`Inc., 295 Fed. Supp. 479 (SDNY 1968).
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`(2) Competitor’s Need to Use Applicant’s Trademark
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`Next, we consider Applicant’s competitor’s need to use Applicant’s Trademark. Provided that
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`alternative wording exists this part of the test favors registration of the Applicant’s trademark. In the instant
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`case, it is clear that Applicant’s competitors have numerous choices in regard to alternative language that
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`can be used to identify their own respective services.
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`Specifically, Applicant’s competitors could use the following: LEASEFORSEVENDAYS or
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`BUYAWEEK. Accordingly, in consideration of this second factor, it is again far more likely that the
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`trademark is accurately categorized as suggestive rather than descriptive.
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`(3) Competitor’s Current Use of Applicant’s Trademark
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`Finally, we consider Applicant’s actual competitor’s current use of the trademark at issue.
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`There is little evidence of such use. Moreover, the use, if any, that has been provided, should not
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`be deemed persuasive as those competitors are, in the Applicant’s view, making unauthorized use
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`and potentially infringing upon Applicant’s trademark and may soon have to answer to Applicant
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`for these transgressions.
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`That being said, it is requested that the evidence provided, limited in nature, and most likely
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`simply of infringing activity, should also not be considered to support a finding of descriptiveness.
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`Combined Descriptive Components Creating New Unitary Mark
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`A trademark comprised of a combination of merely descriptive components is registrable
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`if the combination of terms creates a unitary mark with a unique, nondescriptive meaning, or if the
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`composite has a bizarre or incongruous meaning as applied to the goods. See In re Colonial Stores
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`Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE held not merely descriptive
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`of bakery products); In re Shutts,217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely
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`descriptive of a snow removal hand tool).
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`In the instant case, Applicant’s Trademark RENTAWEEK combines the terms RENT, the
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`article A, and WEEK to create a new, unitary trademark. In that regard, when combined in this
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`manner, this new unitary trademark creates a new, non-descriptive meaning, namely a suggestive
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`term implying one could rent an actual week. However, the incongruity created by such a statement
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`is that one does not rent temporal elements. Rather, one rents some good or service not time itself.
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`Thus, the consumer is left with an impression, when viewing this service mark, that they rent,
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`lease, or buy time as opposed to renting something for a period of time. This incongruity is further
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`highlighted by the omission of the term "FOR" which would bring the overall impression more
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`into a descriptive light as the examiner contends but, in the absence thereof, leaves it in the
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`incongruity to move this mark in the direction of one that truly should be categorized as suggestive.
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`Wherefore, following from the above it is submitted that this new commercial impression
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`created by the combined terms is also strong evidence that the Applicant’s Trademark is correctly
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`characterized as suggestive and not merely descriptive as has been contended.
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`In the instant case, although the the first two prongs of this analysis may be satisfied, the
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`third prong cannot. Specifically, based upon AcronymFinder.com, the applied-for Trademark is
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`not a well-known or popular acronym for the specific wording at issue here. As such, under the
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`aforementioned test the acronym as applied for is not descriptive and, accordingly, the refusal
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`should be withdrawn.
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`IV. CONCLUSION
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`In sum, applying the Trademark Trial and Appeal Board’s tests and relevant standards to
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`the refusal at hand, the relevant consuming public would not form an immediate impression of the
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`features, functions, qualities or characteristics of the goods claimed by Applicant by mere sight of
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`the trademark at issue. In view of the above arguments, Applicant believes that the proposed mark
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`is entitled to registration on the Principal Register.
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`WHEREFORE the Applicant Apex Development, LLC, by Counsel respectfully requests
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`the Trademark Trial and Appeal Board to reverse the refusal under Section 2(e)(1) of the
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`Trademark Act of 1946 and allow the publication of RENTAWEEK on the Principal Register.
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`Respectfully submitted this 22nd day of August, 2016
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`The Trademark Company, PLLC
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`/Matthew H. Swyers/
`344 Maple Avenue West, PMB 151
`Vienna, VA 22180
`Tel. (800) 906-8626 x100
`Facsimile (270) 477-4574
`mswyers@thetrademarkcompany.com
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`13