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
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`87232778
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 113
`
`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)
`
`https://tmng-al.uspto.gov/resting2/api/img/87232778/large
`
`EMPLOYEECHANNEL
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style, size or
`color.
`
`evi_19822100222-20180828222904786979_._Cl._35_and_41_EMPLOYEE_CHANNEL_-
`_FINAL.pdf
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0002.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0003.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0004.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0005.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0006.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0007.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0008.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0009.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0010.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0011.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0012.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0013.JPG
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`evi_19822100222-20180828222904786979_._Ex_A.pdf
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0014.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0015.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0016.JPG
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`       ORIGINAL PDF FILE
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`       CONVERTED PDF FILE(S)
`       (7 pages)
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`       ORIGINAL PDF FILE
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`       CONVERTED PDF FILE(S)
`       (47 pages)
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0018.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0019.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0020.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0021.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0022.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0023.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0024.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0025.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0026.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0027.JPG
`
`evi_19822100222-20180828222904786979_._Ex_B.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0028.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0029.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0030.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0031.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0032.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0033.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0034.JPG
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`evi_19822100222-20180828222904786979_._Ex_C.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0035.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0036.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0037.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0038.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0039.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0040.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0041.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0042.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0043.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0044.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0045.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0046.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0047.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0048.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0049.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0050.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0052.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0053.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0054.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0055.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0056.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0057.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0058.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0059.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0060.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0061.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0062.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0063.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0064.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0065.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0066.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0067.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0068.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0069.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0070.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0071.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0072.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0073.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0074.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0075.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0076.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0077.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0078.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0079.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0080.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\872\327\87232778\xml16\RFR0081.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Arguments; Exhibit A; Exhibit B; Exhibit C
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`/Ai Tang Chang/
`
`Ai-Tang Chang
`
`Associate Attorney of Record, California bar member
`
`SIGNATORY'S PHONE NUMBER
`
`6508384300
`
`DATE SIGNED
`
`       
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`

`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`08/28/2018
`
`YES
`
`YES
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Tue Aug 28 22:36:24 EDT 2018
`
`USPTO/RFR-XXX.XX.XXX.XXX-
`20180828223624213082-8723
`2778-610db898d8db971f637c
`7ed8ca3fd4f4b84950f3d63b8
`3d1056e54827bee3df8c-N/A-
`N/A-20180828222904786979
`
`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. 87232778 EMPLOYEECHANNEL(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/87232778/large)
`has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of Arguments; Exhibit A; Exhibit B; Exhibit C has been attached.
`Original PDF file:
`evi_19822100222-20180828222904786979_._Cl._35_and_41_EMPLOYEE_CHANNEL_-_FINAL.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_19822100222-20180828222904786979_._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_19822100222-20180828222904786979_._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_19822100222-20180828222904786979_._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
`
`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: 6508384300
`
`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.
`
`Serial Number: 87232778
`Internet Transmission Date: Tue Aug 28 22:36:24 EDT 2018
`TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XXX-201808282236242
`13082-87232778-610db898d8db971f637c7ed8c
`a3fd4f4b84950f3d63b83d1056e54827bee3df8c
`-N/A-N/A-20180828222904786979
`
`        
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Employee Channel, Inc.
`
`Serial No.:
`
`87/232,778
`
`Mark:
`
`Class:
`
`EMPLOYEECHANNEL
`
`35,41
`
`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")
`in Classes 35 and 41
`for registration of the mark EMPLOYEECHANNEL ("Mark")
`("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 SERVICES.
`
`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 1209.01 (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 )(1 ), a mark must be merely descriptive or deceptively misdescriptive of the goods
`or services to which it relates." TMEP §1209.0l(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); In 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
`
`141073602.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 tem1s 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 1179 (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
`In particular, "incongruity is a strong indication that a mark is
`1042, 104 7 (9th Cir. 1998).
`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 incongrnous 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 rules, 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 refosal of the Mark on the basis that it "merely describes
`a feature of applicant's services" 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 refosed because "the applied-for mark merely
`describes 1!. feature of applicant's goods." [Emphasis added.] Applicant assumes the Examining
`Attorney meant "services" in this sentence. 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 of EMPLOYEE and
`CHANNEL. In fact, the Examining Attorney emphasizes the attenuated 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
`"interpretation" 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 te1m 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 17, 2017 response to office action, as well as elsewhere
`in this Response clearly show that the term EMPLOYEECHANNEL has multiple meanings. The
`
`141073602. l
`
`2
`
`

`

`Oxford English Dictionary meaning the Examining Attorney provided in connection with the Final
`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 services.
`
`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. Jnt'l 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 Jn re Am.
`Greetings C01p. , 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 In 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 te1111 APRICOT
`identified a major feature of the goods, the term was descriptive. Unlike Jn re Am. Greetings
`Corp., here, the tenn EMPLOYEECHANNEL cannot be described as a feature of goods.
`
`Considering the context of Jn re Am. Greetings Corp., where the TTAB stated that:
`
`Applicant's argument that the dictionary definition of the word "APRICOT" does
`not refer to the scent of the apricot ji-uit is not persuasive of the proposition that
`purchasers would not recognize the term as referring to the scent of the do11s. 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 isji-om consideration of the mark alone is not the test. Wh en 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 C01p., Applicant does not argue that the plain language
`of the dictionary definitions for the terms "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 services.
`
`141073602. 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. Beckwith, 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 services, 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 U.S. West, Inc. v. Bell South C01p., 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 services 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)(1) 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 term ofEMPLOYEECHANNEL is
`descriptive when used in connection with the applied-for services 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 1 7, 201 7, and this Response,
`that the burden of proof for descriptiveness rests on the Examining Attorney.
`
`Fourth, applying the proper standard, the tern1 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 services 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
`
`1 In fact, in the XSearch Summaiy dated Febrnary 18, 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[ Id] * {"sczx"} hann {v} l*[bi,ti] not dead[ld]). The records do not reveal any searches conducted for the
`Mark as a whole.
`
`141073602.1
`
`4
`
`

`

`services, and non-downloadable software are all "on behalf of employers." Recognizing that the
`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 services, 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.,
`When encountering the
`employers) are highly unlikely to immediately understand that Applicant's services consist of
`"business services, namely, providing reporting for business purposes on behalf of employers to
`employees of information regarding workplace operations, human resources, employee personal
`information, and employee health and financial wellness data, this information consisting
`.specifically of workplace safety documents and information, workplace regulatory documents,
`employee retirement plan information, employee salary and pay information, employee date of
`birth information, employee residence and address information, information on employee job title,
`posting, and position, and employee health care documents and options; providing a website for
`use by employees featuring human resources information and reporting as communicated by the
`employer; providing online human resources information on behalf of employers to employees
`about the workplace via a website, the information consisting .specifically of workplace safety
`documents and information, workplace regulatory documents, employee retirement plan
`information, employee salary and pay information, employee date of birth information, employee
`residence and address information, information on employee job title, posting, and position, and
`employee health care documents and options" in Class 35 and "providing educational and
`instructional content regarding employment-related matters for employees via a website, namely,
`providing training in the field of human resources" in Class 41. 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 services are
`for employer-to-employee communication. In this regard, the commercial impression of the Mark
`creates an incongruity due to the mismatch of the term EMPLOYEE in the mark and actual relevant
`consumers for the applied-for services. 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, TTAB 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 incongrnity 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 Dictionmy. Using this definition, when relevant consumers think of
`CHANNEL as a verb for "directing through a passage," consumers might conclude that the
`software pe1111its employees to "channel" or direct some activity using the software. However, the
`recitation of services 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 congruous with respect to Applicant's services. As the TMEP clearly states,
`incongruity 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 services
`cannot immediately associate the Mark with the services due to a dissonance or incongrnity
`between different components of a mark.
`
`141073602. l
`
`5
`
`

`

`Furthe1111ore, 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 services.
`
`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 EMPLOYEECHANNEL, consumers
`and potential consumers for Applicant's services will immediately come to the conclusion that the
`term EMPLOYEECHANNEL "merely and only" describes the applied-for services. 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 detennine the nature of the services
`without investing in more efforts in examining the services. 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 tenn 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/em12loyee-
`communications-software/ (describing employee
`communication software used to create
`"communication channels" and "channels").
`
`htt12s://smooch.io/ (discussing communications
`software used to "add more communications
`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 tenn "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.
`
`141073602.l
`
`6
`
`

`

`Examining Attorney's Reference
`
`Comment
`
`httr;>s ://www.kofax.com/Products/Cus tomer-
`Communications/Customer-Communications-
`Manager/Overview (discussing communications
`software used to provide communications "across
`multiple channels").
`
`httr;>s://www.r;>ilera.com/20 17 /06/5-way_s-
`communica tions-software-benefi t-communi!)'-
`management.html (discussing communications
`software used to provide "channels for
`communications").
`
`httr;>s://www.interact-intranet.com/blogiwhat-
`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-even ts/b lo gs/be-
`kit-smart-with-mu! ti-channel-communi cations
`(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 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.
`
`The article displays over 25 different "tools" for
`internal communications. As a result, the article
`emphasizes just how suggestive, and not
`descriptive, the term "channel" is to Applicant's
`relevant consumers in the employment field.
`Moreover, this ai1icle is about co