From: First, Vivian
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`Sent: 10/18/2016 9:24:48 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86534471 - RENTAWEEK - N/A - EXAMINER BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 23
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`Files: rent-1.jpg, rent-2.jpg, rent-3.jpg, rent-4.jpg, rent-5.jpg, rent-6.jpg, rent-7.jpg, rent-8.jpg, rent-
`9.jpg, week-1.jpg, week-2.jpg, week-3.jpg, week-4.jpg, week-5.jpg, week-6.jpg, week-7.jpg, time-share-
`1.jpg, time-share-2.jpg, time-share-3.jpg, time-shari-1.jpg, time-shari-2.jpg, time-shari-3.jpg,
`86534471.doc
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`Sent: 10/18/2016 9:24:48 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86534471 - RENTAWEEK - N/A - EXAMINER BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 23
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`Files: rent-1.jpg, rent-2.jpg, rent-3.jpg, rent-4.jpg, rent-5.jpg, rent-6.jpg, rent-7.jpg, rent-8.jpg, rent-
`9.jpg, week-1.jpg, week-2.jpg, week-3.jpg, week-4.jpg, week-5.jpg, week-6.jpg, week-7.jpg, time-share-
`1.jpg, time-share-2.jpg, time-share-3.jpg, time-shari-1.jpg, time-shari-2.jpg, time-shari-3.jpg,
`86534471.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 86534471
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`MARK: RENTAWEEK
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`CORRESPONDENT ADDRESS:
` MATTHEW H SWYERS
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` THE TRADEMARK COMPANY PLLC
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` 344 MAPLE AVE WEST PMB 151
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` VIENNA, VA 22180
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`APPLICANT: Apex Development, LLC.
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`*86534471*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
`p
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` N/A
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`CORRESPONDENT E-MAIL ADDRESS:
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` mswyers@thetrademarkcompany.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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` The applicant, Apex Development, LLC, has appealed the examining attorney’s final refusal to
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`register RENTAWEEK on the Principal Register for “Vacation real estate timeshare services” in Class 36,
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`and “Hotel services; Making hotel reservations for others; Resort hotel services” in Class 43, on the
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`ground that the matter is merely descriptive of the applicant’s services pursuant to Section 2(e)(1) of the
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`Trademark Act.
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`FACTS
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` On February 13, 2015, the applicant filed the instant application to register RENTAWEEK on the
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`Principal Register for “Real estate time-sharing; Vacation real estate time share exchange services;
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`Vacation real estate timeshare services” in Class 36, and “Hotel services; Making hotel reservations for
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`others; Resort hotel services” in Class 43. The application was based on an intention to use in
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`commerce.
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` On May 20, 2015, registration was refused based on descriptiveness pursuant to Section 2(e)(1) of
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`the Trademark Act because the mark was merely descriptive of the services. In addition, literature
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`describing the services was requested.
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` The applicant’s June 1, 2015 response to the initial refusal presented arguments relating to the
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`descriptiveness refusal, and on December 29, 2015 applicant amended the identification.
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` The Office action mailed on June 29, 2015 maintained and continued the descriptiveness refusal,
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`and indicated that the amendment of the identification of services is not acceptable.
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` The applicant amended the identification of services in a response received on March 29, 2016,
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`and that amendment was accepted. A final descriptiveness refusal mailed on April 4, 2016.
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` On May 25, 2016, applicant instituted an appeal of the descriptiveness refusal.
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` The sole issue on appeal is whether the applicant’s RENTAWEEK mark is merely descriptive of the
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`services (as amended), namely: “Real estate time-sharing; Vacation real estate time share exchange
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`services; Vacation real estate timeshare services” in Class 36, and “Hotel services; Making hotel
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`reservations for others; Resort hotel services” in Class 43.
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`ARGUMENT
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` A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature,
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`purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc.,
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`783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373
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`F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297,
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`75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S.
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`538, 543 (1920)).
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` The applicant applied to register RENTAWEEK for “Real estate time-sharing; Vacation real estate
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`time share exchange services; Vacation real estate timeshare services” in Class 36, and “Hotel services;
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`Making hotel reservations for others; Resort hotel services” in Class 43.
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` The mark is merely descriptive because RENTAWEEK is a novel spelling of RENT A WEEK, and the
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`individual words RENT A WEEK describe the applicant’s services of renting lodging by the week to
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`others, and making reservations therefor, by providing properties that can be rented in weekly
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`increments. The dictionary definition of RENT is “to grant the possession and enjoyment of (property,
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`machinery, etc.) in return for the payment of rent from the tenant or lessee. (often followed by out)”
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`and WEEK means “a period of seven successive days that begins with or includes an indicated day.” See
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`attached definitions from www.dictionary.com online dictionary. 1
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` The applicant’s services are, in essence, real estate timeshares, hotel services, and making hotel
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`reservations for others. A timeshare is “to occupy (a vacation property) by time-sharing” and time-
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`sharing is “an ownership interest in a piece of property that entitles the owner to occupy it for a specific
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`period of time each year, or a lease or license agreement that grants a party use and occupancy of a
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`property for a specific time period each year.” See attached definitions from American Heritage online
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`dictionary at www.ahdictionary.com.2 The applicant’s services are weekly timeshare and hotel rentals,
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`and making hotel reservations therefor.
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`1 The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet
`Food Imports Co., 21 USPQ 594 (TTAB 1982), aff’d, 217 USPQ 505 (Fed. Cir. 1983).
`2 Id.
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` The novel spelling of the mark as a single word does not obviate the descriptiveness of the mark
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`because a novel spelling or an intentional misspelling that is the phonetic equivalent of a merely
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`descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as
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`the equivalent of the descriptive word or term. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ
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`355 (C.C.P.A. 1953) (holding “FASTIE,” phonetic spelling of “fast tie,” merely descriptive of tube sealing
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`machines); Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (C.C.P.A.
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`1947) (holding “KWIXTART,” phonetic spelling of “quick start,” merely descriptive of electric storage
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`batteries); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (holding “URBANHOUZING” phonetic spelling of
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`“urban” and “housing,” merely descriptive of real estate services); In re State Chem. Mfg. Co., 225 USPQ
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`687 (TTAB 1985) (holding “FOM,” phonetic spelling of “foam,” merely descriptive of foam rug shampoo);
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`TMEP §1209.03(j).
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` Applicant argues that the mark is not descriptive for various reasons, the salient ones being: (i) the
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`mark requires multi-stage reasoning and imagination for consumers to arrive at a tolerably accurate or
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`direct description of the product/services from the mark itself, (ii) competitors have numerous choices
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`in regard to alternative language to identify their respective services, (iii) evidence of competitors’ use
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`of the applicant’s mark shows unauthorized and potentially infringing use of the trademark, and (iv) the
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`combination of the components in the mark creates a unitary and suggestive mark. The undersigned is,
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`respectfully, not persuaded by these arguments.
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` The descriptiveness of a mark is determined in relation to the identified goods/services, not in
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`the abstract. Whether consumers could guess what the product and/or service is from
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`consideration of the mark alone is not the test. In re Omaha National Corp., 819 F.2d 1117, 2
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`USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A.
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`1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp.,
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`226 USPQ 365 (TTAB 1985). TMEP §1209.01(b).
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` In this case, the proper question is whether consumers familiar with the nature of the
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`applicant’s services would understand the mark RENTAWEEK to describe particular features of
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`those services. See In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002). When the instant mark is
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`used in connection with weekly timeshare rental, weekly hotel rentals, and making weekly hotel
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`reservations for others, consumers will directly understand that RENTAWEEK describes the weekly
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`rental feature of those services without multi-stage reasoning and imagination.
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` Applicant is correct that consideration must be given to a competitor’s need to use the mark and
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`the competitor’s use of the mark. It is applicant’s position that competitors can use alternative wording
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`such as LEASEFORSEVENDAYS or BUYAWEEK to identify their services. H o w e v e r , t he underlying
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`concern is whether businesses and competitors will have the freedom to use common descriptive
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`language when merely describing their own goods or services to the public in advertising and marketing
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`materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial
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`Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 24 F.2d 495,
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`114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In
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`re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000). The excerpted materials attached to the
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`Office action of May 20, 2015, from a search of the internet using the Google search engine,
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`demonstrate that competitors use RENTAWEEK (or its phonetically equivalent variations RENT-A-WEEK
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`and RENT A WEEK) to describe property and hotel room rentals available in weekly increments. This
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`information evidences that the mark comprises everyday descriptive language that is used by
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`competitors to describe their services.
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` The uses include:
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`1) www.rent-a-week.com: RENT A WEEK Take Me Away. Rent-A-Week Inc. brings together
`travelers looking for discount vacations in premiere travel destinations with vacation club
`owners who need to rent their units. …deal efficiently with timeshare owners seeking to rent
`their units while being sold.
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`2) www.grandmayan.net: Rent A Week If you would like to rent a vacation week from us please
`fill in the following and click submit.
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`3) www.unitedbeachvacations.com: Premier Property Lenora’s Cottage Rent a week and save
`10%.
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`4) www.facebook.com: Cascais House – Rent a Week
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`5) www.barringtonshores.com: Example 1: A) You rent a week B) Your family member/friend
`rents a week. C) 3rd Week – FREE!!
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` Further, even if one were to believe that competitors are not using the mark for similar services
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`(though evidence of record appears to contradict that), it has long been held that the fact that an
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`applicant may be the ‘first and sole user’ of a merely descriptive or generic designation does not justify
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`registration where the evidence shows that the term is merely descriptive of the identified goods and/or
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`services. In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic
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`imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983)
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`(SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for
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`conducting and arranging trade shows in the hunting, shooting and outdoor sports products field);
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`TMEP§1209.03(c).
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` Moreover, while it is true that a mark which combines descriptive terms may be registrable if the
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`composite creates a unitary mark with a separate, non-descriptive meaning, see In re Colonial Stores,
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`Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d1161,
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`1162-63 (TTAB 2013), a combination that does not result in such a unitary mark, remains descriptive.
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`In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); TMEP §1209.03(d); see, e.g., In re
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`Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015); In re King Koil Licensing Co., 79 USPQ2d 1048,
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`1052 (TTAB 2006); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988). Therefore,
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`where the combination of the descriptive words creates no incongruity, no ‘imagination’ is required to
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`understand the nature of the goods and/or services, and the mark is merely descriptive. E.g., In re
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`Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); Associated Theatre Clubs, 9 USPQ2d at 1662.
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` The following cases specifically deal with such ‘compounded’ marks being held as merely
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`descriptive. In re Driven Innovations, Inc., 115 USPQ2d 1261, 1262, 1267-68 (TTAB 2015) (holding
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`DOTBLOG merely descriptive of providing information for customers derived from blogs, shared online
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`journals, or related to blogs, via the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341
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`(TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that
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`involve battles and provides the player with the option to utilize various views of the battlefield); In re
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`Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications
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`featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE
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`ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding
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`
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`SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59
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`USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use
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`in developing and deploying application programs on a global computer network).
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` The applicant submits that RENTAWEEK is incongruous since temporal elements (i.e., a week)
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`cannot be rented. Applicant continues by stating that a descriptive mark in this context would be
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`created by incorporating the word FOR into the mark, as in RENT FOR A WEEK. The examining attorney
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`is not persuaded by this reasoning because timesharing entitles the owner to use or occupy a property
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`for a specific period of time each year. Thus, in the case of timeshares, a period of time is being rented.
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`The combination of RENT, A, and WEEK is not incongruous because consumers rent a week at a specified
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`property using the applicant’s services. The combination of RENT, A, and WEEK does not create a term
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`with a non-descriptive meaning because even in combination, the words merely describe the weekly
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`rental feature of applicant’s “Real estate time-sharing; Vacation real estate time share exchange
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`services; Vacation real estate timeshare services” and “Hotel services; Making hotel reservations for
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`others; Resort hotel services.”
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` Consequently, the Office maintains its position that the applicant’s mark is merely descriptive of
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`the applicant’s services and that the applicant may amend the application to seek registration on the
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`Supplemental Register upon use.
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`CONCLUSION
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` The applicant’s RENTAWEEK mark is merely descriptive of the function and purpose of the
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`applicant’s services, namely, “Real estate time-sharing; Vacation real estate time share exchange
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`services; Vacation real estate timeshare services” and “Hotel services; Making hotel reservations for
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`others; Resort hotel services.” Accordingly, it is respectfully requested that the Board affirm the refusal
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`to register the mark RENTAWEEK on the Principal Register under Trademark Act Section 2(e)(1).
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`Respectfully submitted,
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`/Vivian Micznik First/
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`Examing Attorney
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`Law Office 114
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`571-272-9159
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`vivian.first@uspto.gov
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`K. Margaret Le
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`Managing Attorney
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`Law Office 114
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