Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (12 pages)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (14 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`87232761
`
`LAW OFFICE 113
`
`https://tmng-al.uspto.gov/resting2/api/img/87232761/large
`
`EMPLOYEECHANNEL
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_19822100222-20180828215614171908_._ROA_141073466_1.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0002.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0003.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0004.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0005.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0006.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0007.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0008.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0009.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0010.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0011.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0012.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0013.JPG
`
`evi_19822100222-20180828215614171908_._Ex_A.PDF
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0014.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0015.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0016.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0017.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0018.JPG
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`       ORIGINAL PDF FILE
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`       CONVERTED PDF FILE(S)
`       (7 pages)
`
`       ORIGINAL PDF FILE
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`       CONVERTED PDF FILE(S)
`       (47 pages)
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0019.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0020.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0021.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0022.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0023.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0024.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0025.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0026.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0027.JPG
`
`evi_19822100222-20180828215614171908_._Ex_B.PDF
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0028.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0029.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0030.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0031.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0032.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0033.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0034.JPG
`
`evi_19822100222-20180828215614171908_._Ex_C.PDF
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0035.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0036.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0037.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0038.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0039.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0040.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0041.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0042.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0043.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0044.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0045.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0046.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0047.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0048.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0049.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0050.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0051.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0052.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0053.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0054.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0055.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0056.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0057.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0058.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0059.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0060.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0061.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0062.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0063.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0064.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0065.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0066.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0067.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0068.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0069.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0070.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0071.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0072.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0073.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0074.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0075.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0076.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0077.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0078.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0079.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0080.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232761\xml16\RFR0081.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`argument and exhibits
`
`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`BRITT L. ANDERSON
`K&L GATES LLP
`630 HANSEN WAY
`PALO ALTO
`California
`US
`94304
`
`       
`       
`       
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`

`

`NAME
`
`FIRM NAME
`
`DOCKET/REFERENCE NUMBER
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`FAX
`
`EMAIL
`
`Britt L. Anderson
`
`Perkins Coie LLP
`
`131602-4004
`
`3150 Porter Dr
`
`Palo Alto
`
`California
`
`94304
`
`United States
`
`650-838-4300
`
`650-838-4350
`
`pctrademarks@perkinscoie.com;BAnderson@perkinscoie.com;
`aichang@perkinscoie.com; kthompson@perkinscoie.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`/Ai-Tang Chang/
`
`Ai-Tang Chang
`
`Associate Attorney of Record, California Bar Member
`
`6508384388
`
`08/28/2018
`
`YES
`
`YES
`
`Tue Aug 28 22:20:21 EDT 2018
`
`USPTO/RFR-XXX.XX.XXX.222-
`20180828222021197588-8723
`2761-610ef3ea913247c46ce2
`3440d7fd4039331961cae96d6
`88bdca5f0d991365ee27d-N/A
`-N/A-20180828215614171908
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 87232761 EMPLOYEECHANNEL(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/87232761/large)
`has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of argument and exhibits has been attached.
`Original PDF file:
`
`

`

`evi_19822100222-20180828215614171908_._ROA_141073466_1.pdf
`Converted PDF file(s) ( 12 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Original PDF file:
`evi_19822100222-20180828215614171908_._Ex_A.PDF
`Converted PDF file(s) ( 14 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Original PDF file:
`evi_19822100222-20180828215614171908_._Ex_B.PDF
`Converted PDF file(s) ( 7 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Original PDF file:
`evi_19822100222-20180828215614171908_._Ex_C.PDF
`Converted PDF file(s) ( 47 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`
`

`

`Evidence-15
`Evidence-16
`Evidence-17
`Evidence-18
`Evidence-19
`Evidence-20
`Evidence-21
`Evidence-22
`Evidence-23
`Evidence-24
`Evidence-25
`Evidence-26
`Evidence-27
`Evidence-28
`Evidence-29
`Evidence-30
`Evidence-31
`Evidence-32
`Evidence-33
`Evidence-34
`Evidence-35
`Evidence-36
`Evidence-37
`Evidence-38
`Evidence-39
`Evidence-40
`Evidence-41
`Evidence-42
`Evidence-43
`Evidence-44
`Evidence-45
`Evidence-46
`Evidence-47
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`BRITT L. ANDERSON
`K&L GATES LLP
`630 HANSEN WAY
`PALO ALTO
`California
`US
`94304
`
`Proposed:
`Britt L. Anderson of Perkins Coie LLP, having an address of
`3150 Porter Dr Palo Alto, California 94304
`United States
`pctrademarks@perkinscoie.com;BAnderson@perkinscoie.com; aichang@perkinscoie.com; kthompson@perkinscoie.com
`650-838-4300
`650-838-4350
`The docket/reference number is 131602-4004 .
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Ai-Tang Chang/     Date: 08/28/2018
`
`

`

`Signatory's Name: Ai-Tang Chang
`Signatory's Position: Associate Attorney of Record, California Bar Member
`
`Signatory's Phone Number: 6508384388
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney
`or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Mailing Address:    Britt L. Anderson
`   Perkins Coie LLP
`   3150 Porter Dr
`   Palo Alto, California 94304
`
`Serial Number: 87232761
`Internet Transmission Date: Tue Aug 28 22:20:21 EDT 2018
`TEAS Stamp: USPTO/RFR-XXX.XX.XXX.222-201808282220211
`97588-87232761-610ef3ea913247c46ce23440d
`7fd4039331961cae96d688bdca5f0d991365ee27
`d-N/A-N/A-20180828215614171908
`
`        
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Employee Channel, Inc.
`
`Serial No. :
`
`87/232,761
`
`Mark:
`
`Class:
`
`EMPLOYEECHANNEL
`
`9
`
`Office Action Date: February 28, 2018
`
`Examiner:
`
`Ahsen Khan (L.O. 113)
`
`REQUEST FOR
`RECONSIDERATION
`
`This Request for Reconsideration ("Response") to the office action issued on February 28,
`2018 ("Final Office Action") regarding the application by Employee Channel, Inc. ("Applicant")
`for registration of the mark EMPLOYEECHANNEL ("Mark") in Class 9 ("Application")
`addressed the issues raised by the Examining Attorney, namely:
`
`The Examining Attorney's allegation that the Mark is merely descriptive under
`Section 2(e) of the Trademark Act.
`
`Based on responses to the above referenced issue in this Response, Applicant respectfully
`requests that the Examining Attorney approve the Application to proceed to publication on the
`Principal Register.
`
`I.
`
`APPLICANT'S MARK DOES NOT MERELY DESCRIBE THE FEATURE OF
`APPLICANT'S GOODS.
`
`The Examining Attorney has refused registration on the grounds that the Mark is merely
`descriptive. Applicant respectfully disagrees for at least the following reasons discussed below.
`
`A.
`
`The Mark is Suggestive Rather Than Merely Descriptive.
`
`Section 1209.0l(b) of the Trademark Manual of Examining Procedure ("TMEP") provides
`that "to be refused registration on the Principal Register under§ 2(e)(1) of the Trademark Act, 15
`U.S.C. § 1052(e)(l), a mark must be merely descriptive or deceptively misdescriptive of the goods
`or services to which it relates." TMEP § 1209.01 (b ). It is well established that a mark is "merely
`descriptive" under Section 2(e)(1) of the Trademark Act where, as applied to the goods or services
`in question, the mark immediately describes an ingredient, quality, characteristic, function, feature,
`composition, purpose, attribute, use of such goods or services. See Henry Siegel Co. v. M&R Int '!
`Mfg. Co., 4 U.S.P.Q.2d 1154, 1159 (T.T.A.B. 1987); Jn re Engineering Systems Corp., 2
`U.S.P.Q.2d 1075 (T.T.A.B. 1986). To be "merely" descriptive, the term must be "only"
`descriptive, i.e., the term serves no purpose other than to describe the goods or services. See
`
`141073466. l
`
`

`

`Application of Quik-Print Copy Shops, Inc., 616 F.2d 523 (C.C.P.A. 1980). As such, marks
`containing multiple meanings, or where such tern1s are vague or indetenninate, including when
`considered as a whole, are not descriptive because they serve more purposes other than simply to
`describe the goods or services.
`
`It is also well-established that a mark that is suggestive is registrable. See Minnesota Min.
`& Mfg. Co. v. Johnson & Johnson, 454 F.2d 11 79 (C.C.P.A. 1972). Suggestive marks require
`some imagination, thought, or perception to reach a conclusion as to the nature of the goods or
`services. TMEP § 1209.0l(a). " If a consumer must use imagination or any type of multistage
`reasoning to understand the mark's significance, then the mark does not describe the product's
`features, but suggests them." Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d
`1042, 104 7 (9th Cir. 1998).
`In particular, "incongruity is a strong indication that a mark is
`suggestive rather than merely descriptive." TMEP § 1209.0l(a). Incongrnity in a mark was
`described as "one of the accepted guideposts in the evolved set of legal principles for
`discriminating the suggestive from the descriptive mark," and the concept of mere descriptiveness
`"should not penalize coinage of hitherto unused and somewhat incongruous word combinations
`whose import would not be grasped without some measure of imagination and ' mental pause. "'
`Jn re Shutts, 217 U.S.P.Q. 363, 364- 5 (T.T.A.B. 1983) (SNO-RAKE held not merely descriptive
`of a snow-removal hand tool); see also Jn re Vienna Sausage Mfg. Co., 156 U.S.P.Q. 155, 156
`(T.T.A.B. 1967).
`
`Applying the above rnles, regulations and case law, Applicant submits that the Mark is not
`merely descriptive when used in connection with Applicant's goods for the following reasons.
`
`Ffrst, the Examining Attorney's refusal of the Mark on the basis that it "merely describes
`a feature of applicant's goods" is improper, because the Examining Attorney never clarifies what
`the "feature" is that is described by the Mark. At the very begi1ming of the Final Office Action,
`the Examining Attorney states that the Mark is refused because "the applied-for mark merely
`describes ,a feature of applicant's goods." [Emphasis added.] Thereafter, it is abundantly clear
`that the Examining Attorney's conclusion about the descriptiveness of the "entire mark
`EMPLOYEECHANNEL" is based on a speculative derived meaning that combines the definitions
`In fact, the Examining Attorney emphasizes the attenuated
`of EMPLOYEE and CHANNEL.
`nature of this reasoning process by claiming that "Applicant's marketing materials reinforce this
`interpretation." In fact, the Examining Attorney's reasoning first excerpts a single definition out
`of many in standard sources for "CHANNEL" and then analyzes Applicant's business information
`before reaching an "inte1pretation" that the term CHANNEL when combined with EMPLOYEE
`is merely descriptive. This multistage reasoning process simply highlights that the imagination
`test supports that EMPLOYEECHANNEL is suggestive, and not descriptive, in regard to the
`relevant goods and services.
`
`Other aspects of well-established trademark law also support a finding of suggestiveness.
`As indicated earlier, a term is "merely" descriptive when it serves no purpose other than to
`describe the goods . See Application of Quik-Print Copy Shops, Inc. , 616 F.2d 523 (C.C.P.A.
`1980). Arguments presented in the August 1 7, 2017 response to office action, as well as elsewhere
`in this Response clearly show that the term EMPLOYEECHANNEL has multiple meanings. The
`Oxford English Dictionary meaning the Examining Attorney provided in connection with the Final
`
`141073466. l
`
`2
`
`

`

`Office Action provides at least seven meanings for the word "channel" alone. See Final Office
`Action. At minimum, the Mark should not be rejected merely because "one of the meanings" may
`suggest the applied-for goods.
`
`Second, the Examining Attorney improperly relies on certain dictum in In re Am. Greetings
`Corp., 224 U.S.P.Q. 265 (T.T.A.B. 1985), which involved a different trademark, not consisting of
`multiple terms and where the applicant at issue was attempting to advance different arguments.
`The Examining Attorney has heavily relied on Jn re Am. Greetings Corp. throughout prosecution.
`In the February 17, 2017 office action and the Final Office Action, the Examining Attorney used
`this case to support the theory that "whether consumers could guess what the product [or services]
`is from consideration of the mark alone is not the test." Final Office Action. As a dictum, it was
`a statement unnecessary to the decision in the case, and should not be accorded with precedential
`weight. See Co-Steel Raritan, Inc. v. Int'! Trade Comm 'n, 357 F.3d 1294, 1307 (Fed. Cir. 2004);
`see also National Am. Ins. Co. v. U.S. , 498 F.3d 1301, 1306 (Fed. Cir. 2007). In In re Am.
`Greetings Corp. , the aforementioned dictum was used to elaborate a general doctrine that the
`descriptiveness should be analyzed in connection with the recitation of goods/services, and it
`should not be applied to other cases out-of-context in a broad stroke as the Examining Attorney
`has done here.
`
`Additionally, the factual issues regarding the mark and product at issue in Jn re Am.
`Greetings C01p. make it inapplicable to the case at hand. In Jn re Am. Greetings C01p., the mark
`APRICOT was used to refer to dolls that smelled like apricots, a key feature of the applicant's
`good. The Trademark Trial and Appeal Board ("TTAB") found that because the term APRICOT
`identified a major feature of the goods, the term was descriptive. Unlike In re Am. Greetings
`Corp., here, the term EMPLOYEECHANNEL cannot be described as a feature of goods.
`
`Considering the context of Jn re Am. Greetings Corp., where the TT AB stated that:
`
`Applicant's argument that the dictionary definition of the word "APRICOT" does
`not refer to the scent of the apricot fruit is not p ersuasive of the proposition that
`purchasers would not recognize the term as referring to the scent of the dolls. As
`noted above, the issue of descriptiveness can only be determined by considering the
`term as it is used in connection with the goods. Whether consumers could guess
`what the product isfrom consideration of the mark alone is not the test. When dolls
`are known to be the goods, and the fact that the goods are apricot scented is
`promoted as a feature or characteristic of the goods by applicant, "APRICOT" will
`be immediately recognized as describing that feature.
`
`Jn re Am. Greetings C01p, 224 U.S.P.Q. 265, 266.
`
`Here, unlike Jn re Am. Greetings Corp. , Applicant does not argue that the plain language
`of the dictionary definitions for the tern1s "EMPLOYEE" and "CHANNEL" do not relate to
`Applicant's goods or services. On the contrary, Applicant's position is that the term
`EMPLOYEECHANNEL, when viewed as a whole, has multiple meanings when it is used in
`connection with the applied-for goods.
`
`141073466. l
`
`3
`
`

`

`Based on the foregoing, the dictum in Jn re Am. Greetings Corp. was inappropriately
`applied during prosecution.
`
`Thfrd, the Examining Attorney improperly dissected the Mark during prosecution. The
`"anti-dissection rule" holds that a mark must be examined as a whole, and the words are not to be
`taken apart or analyzed separately. See Estate of P.D. Bed"With, Inc. v. Comm 'r of Patents, 252
`U.S. 538, 545-46 (1920). In addition, the TTAB has stated that even though a mark may in part
`inform advertisers and users about the nature of an applicant's goods, so long as it does not
`immediately describe any specific feature, quality or characteristic of those goods and/or services,
`it is not merely descriptive. See US West, Inc. v. Bell South Corp. , 18 U.S.P.Q.2d 1307, 1312
`(T.T.A.B. 1990) (finding that THE REAL YELLOW PAGES is not descriptive for applicant's
`telephone "yellow pages" directory because the term "real" has a number of meanings and does
`not convey any immediate or precise significance with respect to applicant's goods and the phrase
`as a whole is suggestive). Nothing in any of the analysis by the Examining Attorney, or the
`evidentiary attachments, suggests that the mark EMPLOYEECHANNEL was ever considered in
`its entirety, as it should have been. 1
`
`Further, in the February 17, 2017 office action, the Examining Attorney presented the
`marks BROADWAY CHANNEL, OLYMPIC CHANNEL and BEACH CHANNEL and stated
`that: " [ w ]hen combined with the term EMPLOYEE the mark in its entirety describes the subject
`matter and type of goods/services being offered. As such, the mark must be refused for being
`merely descriptive under Section 2(e)(l) of the Trademark Act." Office action, dated February
`17, 2017 (emphasis added.) Other than concluding separately that EMPLOYEE "in its entirety
`describes the subject matter" and CHANNEL, for its part, describes "type of goods/services," no
`reasoning has been provided as to how and why the combined tern1 ofEMPLOYEECHANNEL is
`descriptive when used in connection with the applied-for goods as a whole.
`
`Moreover, in the Final Office Action, after discussing the issue of descriptiveness for
`EMPLOYEE and CHANNEL separately, the Examining Attorney concludes, with little reasoning
`other than the Examining Attorney's "interpretation," that " [t]aken together, the entire mark
`EMPLOYEECHANNEL therefore describes the intended user of the goods/services and the
`function or purpose of the goods/services." Final Office Action. Applicant respectively notes, as
`also indicated in the response to office action submitted on August 17, 2017, and this Response,
`that the burden of proof for descriptiveness rests on the Examining Attorney.
`
`Fourth, applying the proper standard, the te1111 EMPLOYEECHANNEL is too vague and
`indefinite to be considered merely descriptive in regard to Applicant's goods and services because
`the relevant consumers are not likely to immediately understand Applicant's goods and services
`based upon Applicant's Mark. Applicant emphasizes that the relevant consumers and "purchasers"
`for the goods are business owners, employers, etc., rather than employees. In fact, Applicant's
`goods and services in the co-pending applications clearly set forth that the software, business
`services, and non-downloadable software are all "on behalf of employers." Recognizing that the
`
`1 In fact, in the XSearch Summa1y dated Febrnary 16, 2017, the Examiner conducted searches based on the word
`EMPLOYEE (Search String: *employ*[bi,ti] not dead[ld]) and CHANNEL (Search String: *{"sczx"}han{v}l*[bi,ti]
`not dead[ld] *{"sczx"} hann{v}l*[bi,ti] not dead[ld]). The records do not reveal any searches conducted for the
`Mark as a whole.
`
`141073466. 1
`
`4
`
`

`

`test for descriptiveness requires that the mark be analyzed (1) as a whole, (2) in view of the relevant
`consuming public, and (3) taking into account the recitation of goods, Applicant provides the
`analysis below, noting again, that it is the Examining Attorney's burden to show that the Mark is
`descriptive.
`
`term EMPLOYEECHANNEL, relevant consumers (i.e.,
`the
`When encountering
`employers) are highly unlikely to immediately understand that Applicant's goods consist of
`"computer software and downloadable mobile application software for the provision of
`information on behalf of employers for communication, education and guidance to their
`employees; Computer software for use in the field of employee communications for the provision
`of information on behalf of employers for communication, education and guidance to their
`employees; Computer software in the fields of employee benefits and human resources for the
`provision of information on behalf of employers for communication, education and guidance to
`their employees; Downloadable computer software permitting employers to provide company
`communications to employees on matters related to their employment and responsibilities;
`computer software for use by employers in the field of employee benefits, human resources,
`reporting of employee personal information, and permitting access to employee health and
`financial wellness data." For example, the relevant consumers might conclude that the Mark is
`for use by employees only, or even that EMPLOYEECHANNEL is a television channel for
`employees, while the applied-for goods are for employer-to-employee communication. In this
`regard, the commercial impression of the Mark creates an incongmity due to the mismatch of the
`term EMPLOYEE in the mark and actual relevant consumers for the applied-for goods. See Jn re
`Getz Found., 227 U.S.P.Q. 571, 572 (T.T.A.B. 1985) (MOUSE HOUSE held fanciful for museum
`services featuring mice figurines made up to appear as human beings, TT AB finding that the only
`conceivable meaning of "mouse house," i.e., a building at a zoo in which live and/or stuffed mice
`are displayed, is incongruous).
`
`Another incongruity occurs when consumers consider the term CHANNEL as a verb.
`Exhibit A to this Response provides a dictionary definition for the term "channel" as found in the
`Merriam-Webster Dictiona1y . Using this definition, when relevant consumers think of
`CHANNEL as a verb for "directing through a passage," consumers might conclude that the
`software pennits employees to "channel" or direct some activity using the software. However, the
`recitation of goods provides that, to the contrary, employees are not active participants of
`disseminating information or directing the passages, but merely passive receivers. In this sense,
`the Mark is congmous with respect to Applicant's goods. As the TMEP clearly states, incongmity
`is a strong indication that a mark is suggestive rather than merely descriptive. TMEP § 1209.0l(a).
`While the Examining Attorney has attempted to dissect the mark, and isolate a meaning for
`"CHANNEL," this case is a clear example where consumers of the recited goods cannot
`immediately associate the Mark with the goods due to a dissonance or incongmity between
`different components of a mark.
`
`Furthermore, employer consumers may think of the term EMPLOYEECHANNEL as
`referring to a video channel for the employees, or a band of frequencies (such as radio) where
`employees receive information. These additional impressions reinforce that the Mark is vague for
`the recited goods.
`
`141073466. l
`
`5
`
`

`

`In short, by wrongfully applying the dictum in In re Am. Greetings Corp., the Examining
`Attorney failed to see whether when encountered by the term EMPLOYEECHANN EL, consumers
`and potential consumers for Applicant' s goods will immediately come to the conclusion that the
`term EMPLOYEECHANNEL "merely and only" describes the applied-for goods. As
`demonstrated in this Response, such conclusion cannot be drawn because the combination of
`EMPLOYEE and CHANNEL creates multiple incongruities and meanings in the Mark so that
`when potential consumers are faced with the Mark, they cannot deterniine the nature of the goods
`without investing in more efforts in examining the goods. Therefore, the Mark is suggestive, not
`descriptive.
`
`Fifth, the third-party internet references cited by the Examining Attorney are of little
`probative value because they do not show descriptive usage of the term EMPLOYEECHANNEL
`as applied to the goods/services at issue. None of the references uses "EMPLOYEECHANNEL"
`or even a closely similar term in a descriptive sense in regard to Applicant's communication goods
`and services and no reference expressly defines communication software as a "channel."
`Moreover, three out of five of the references do not concern the employment or human resources
`field, so they are inapplicable to Applicant' s express restriction to "on behalf of employers."
`
`Examining Attorney's Reference
`
`Comment
`
`htt12s://www.alertmedia.com/em12lo_y:ee-
`communications-soft\:vare/ (describing employee
`communication software used to create
`"communication channels" and "channels").
`
`htt12s ://smooch. io/ (discussing communications
`software used to "add more communications
`channels").
`
`htt12s ://www.kofax.com/Products/Customer-
`Communications/Customer-Communications-
`Manager/Overview (discussing communications
`software used to provide communications "across
`multiple channels").
`
`The article uses "channel" to refer to various
`methods of communication that might be used to
`convey messages to employees. Rather than
`software, the article states that "[m]obile phones
`and devices, email, and intranet sites are the most
`common communication channels." The article
`emphasizes the breadth and vagueness of the
`meaning of the term "channel" in regard to the
`relevant goods and services.
`
`This reference has nothing to do with employees
`or human resources, and thus has limited
`probative value in terms of how Applicant's
`relevant consumers, who are in the employment
`field, would perceive Applicant' s
`EMPLOYEECHANNEL mark in the context of
`Applicant' s communication software and services.
`
`This reference has nothing to do with employees
`or human resources, and thus has limited
`probative value in terms of how Applicant' s
`relevant consumers, who are in the employment
`field, would perceive Applicant' s
`EMPLOYEECHANNEL mark in the context of
`Applicant's communication software and services.
`
`141073466. l
`
`6
`
`

`

`Examining Attorney's Reference
`
`Comment
`
`httr;>s://www.r;>ilera.com/2017 /06/5-ways-
`communications-software-benefit-community-
`management.html (discussing communications
`software used to provide "channels for
`communications").
`
`httr;>s://INvvw.interact-intranet.com/blog/what-
`collaboration-tools-are-the-most-effective-
`workr;>lace-intranet/ (discussing communications
`software used to create "digital channels" that are
`accessible outside of the workplace).
`
`httr;>s://www.neor;>ost.co.uk/news-events/blogs/be-
`kit-smart-with-multi-channel-communications
`(describing communications software as
`consisting of "channels").
`
`This reference has nothing to do with employees
`or human resources, and thus has limited
`probative value in terms of how Applicant's
`relevant consumers, who are in the employment
`field, would perceive Applicant's
`EMPLOYEECHANNEL mark in the context of
`Applicant's communicat