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ESTTA Tracking number:
`
`ESTTA1319497
`
`Filing date:
`
`11/01/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex Parte Appeal -
`Serial No.
`
`90232782
`
`Appellant
`
`Southern Audio Services, Inc.
`
`Applied for mark
`
`PARTY BAR
`
`Correspondence
`address
`
`Submission
`
`Attachments
`
`Appealed class
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`R BENNETT FORD
`ROY KIESEL FORD DOODY & NORTH APLC
`POST OFFICE BOX 15928
`BATON ROUGE, LA 70895
`UNITED STATES
`Primary email: rbf@roykiesel.com
`Secondary email(s): blp@roykiesel.com, info@roykiesel.com
`225-927-9908
`
`Appeal brief
`
`Appeal Brief final.pdf(357817 bytes )
`
`Class 009. First Use: Jan 28, 2016 First Use In Commerce: Jan 28, 2016
`All goods and services in the class are appealed, namely: Loudspeakers; Audio
`speakers; Bass speakers; Loudspeaker systems
`
`R. BENNETT FORD
`
`rbf@roykiesel.com, blp@roykiesel.com, info@roykiesel.com
`
`/R. BENNETT FORD/
`
`11/01/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`IN RE APPLICATION OF:
`
`Southern Audio Services, Inc.
`
`MARK:
`
`PARTY BAR LAW OFFICE: 104
`
`APPLICATION NO.:
`
`90/232,782
`
`FILING DATE:
`
`October 2, 2020
`
`ATTORNEY DOCKET NO.:
`
`7721.175
`
`EXAMINING
`ATTORNEY:
`
`MacFarlane, James
`
`BOX RESPONSES
`NO FEE
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Applicant’s Appellate Brief
`
`Dear Sir:
`
`This is in response to the Final Office Action, dated January 18, 2023. Applicant filed a
`
`timely Request for Reconsideration on July 18, 2023. The examiner refused the request for
`
`reconsideration. Accordingly, the appeal was resumed on September 11, 2023, and the deadline for
`
`filing this Brief was set for sixty days after the resumption. This Brief is believed to be timely filed.
`
`However, if any extension is required, please consider this a petition for the same. The fee for filing
`
`an ex parte appeal brief is submitted herewith. No additional fee is believed to be required with this
`
`response; however, if any is due, the Commissioner is hereby authorized and requested to charge the
`
`same to deposit account number 18-2210.
`
`1
`
`

`

`I.
`
`Issue on Appeal
`
`Whether Applicant must disclaim BAR from its mark, PARTY BAR.
`
`II.
`
`Overview of Question Presented
`
`The examiner has required that Applicant disclaim BAR because BAR is descriptive of
`
`Applicant’s goods, namely “loudspeakers; audio speakers; bass speakers; loudspeaker systems” in
`
`class 009. Applicant agrees that BAR is descriptive of loudspeakers. However, Applicant contends
`
`that a disclaimer is inappropriate because PARTY BAR is unitary.
`
`III.
`
`Legal Standard
`
`Unitary marks are not subject to disclaimer. TMEP § 1213.05. Thus, the only issue in this
`
`case is whether PARTY BAR is unitary or, in the alternative, whether the examiner has carried his
`
`burden that a disclaimer is required.
`
`A.
`
`Burden of Proof
`
`Where a mark falls on the distinctiveness continuum is a question of fact. In re Dial-A-
`
`Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001). It is well established that the
`
`examiner has the burden of proving that a mark lacks inherent distinctiveness. In re Pacer Tech., 338
`
`F.3d 1348, 1350 (Fed. Cir. 2003); In re Bayer Aktiengesellschaft, 488 F.3d 960, 964 (Fed. Cir.
`
`2007).
`
`The burden of proof encompasses two concepts: burden of production and burden of
`
`persuasion. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d
`
`1063, 1078 (Fed. Cir. 2012). “The burden of persuasion specifies ‘which party loses if the evidence
`
`is balanced,’ while the burden of production specifies ‘which party must come forward with evidence
`
`at various stages.’” Id., at 1078; In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir.
`
`2
`
`

`

`2016)(addressing burden of proof, burden of production, and burden of persuasion); Stockton E.
`
`Water Dist. v. United States, 583 F.3d 1344, 1360 (Fed. Cir. 2009), on reh'g in part, 638 F.3d 781
`
`(Fed. Cir. 2011)(distinguishing burden of persuasion from burden of production).
`
`In practice, the examiner has the initial burden to make a prima facie showing that a mark
`
`is descriptive. In Re Box Sols. Corp., 79 U.S.P.Q.2d 1953 (T.T.A.B. 2006). A prima facie showing
`
`merely creates a rebuttable presumption of the issue in question. Crash Dummy Movie, LLC v.
`
`Mattel, Inc., 601 F.3d 1387, 1391 (Fed. Cir. 2010)(abandonment); Cold War Museum, Inc. v. Cold
`
`War Air Museum, Inc., 586 F.3d 1352, 1358 (Fed. Cir. 2009)(acquired distinctiveness). When the
`
`predicate evidence necessary to trigger the presumption is introduced, the presumption is established.
`
`Id. That places the burden on the opposing party to offer evidence to the contrary. Id. This switches
`
`the burden of production; it does not change the burden of persuasion.
`
`However, presumptions are not evidence. Routen v. West, 142 F.3d 1434, 1440 (Fed. Cir.
`
`1998). When the party against whom a prima facie presumption applies introduces evidence
`
`sufficient to raise a genuine question as to the issue, the presumption vanishes entirely. A.C.
`
`Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1037 (Fed. Cir. 1992)(en banc), abrogated
`
`by SCA Hygiene Prod. Aktiebolag v. First Quality Baby Prod., LLC, 137 S. Ct. 954, 197 L. Ed. 2d
`
`292 (2017)1; Texas Dep't of Cmty. Affairs v. Burdine, 450 U.S. 248, 255, 101 S. Ct. 1089, 1094, 67
`
`L. Ed. 2d 207 (1981); Fed. R. Evid. 301.
`
`A presumption does not alter the burden of persuasion. That remains on the party who had
`
`it originally. St. Mary's Honor Ctr. v. Hicks, 509 U.S. 502, 507, 113 S. Ct. 2742, 2747, 125 L. Ed.
`
`SCA Hygiene overruled the holding of AC Aukerman regarding the effect of laches on
`1
`patent infringement claims. It did not address or refute Auckerman’s approach to prima facie
`presumptions and their rebuttal.
`
`3
`
`

`

`2d 407 (1993)(Title VII presumption “operates like all presumptions”)(emphasis added); Aqua
`
`Prod.,
`
`Inc. v. Matal, 872 F.3d 1290, 1305
`
`(Fed. Cir. 2017)(“if
`
`the
`
`underlying burden of persuasion rests with the other party, that underlying burden never shifts”);
`
`Fed. R. Evid. 301.
`
`The burden of persuasion with respect to descriptiveness lies with the examiner. In re Bayer
`
`Aktiengesellschaft, 488 F.3d 960, 964 (Fed. Cir. 2007)(“The examining attorney has the burden to
`
`establish that a mark is merely descriptive”)(emphasis added); In Re Transcorp, Inc., No. 85537171,
`
`2014 WL 4896400, at *7 (TTAB Sept. 18, 2014)(non-precedential)(“the examining attorney bears
`
`the burden of coming forward with evidence to support his refusal, and bears the
`
`ultimate burden of persuasion on the issue of descriptiveness”).
`
`Here, the examiner made a prima facie showing that BAR is descriptive. This switched the
`
`burden of production to the Applicant to rebut the prima facie showing of the examiner. In re Pacer
`
`Tech., 338 F.3d 1348, 1350 (Fed. Cir. 2003). Applicant has done so by submitting evidence that
`
`PARTY BAR is unitary.2 Applicant contends that the phrase PARTY BAR has a commonly
`
`understood meaning that is not descriptive of Applicant’s services and, therefore, PARTY BAR is
`
`not merely descriptive of Applicant’s services.3
`
`Faced with a prima facie showing that BAR is descriptive of Applicant’s services, the
`
`Applicant’s burden was to present evidence sufficient to raise a genuine question regarding the
`
`2
`
`See, discussion starting on page 6, below.
`
`3
`
`Applicant is making an argument under §2(e) of the Lanham Act, not an argument under
`§2(f). The difference is important. Under §2(f) the Applicant has the burden of proof (production
`and persuasion). In re Louisiana Fish Fry Prod., Ltd., 797 F.3d 1332, 1335 (Fed. Cir. 2015). In a
`rejection under § 2(e), the examiner has the burden of proof. In re Bayer Aktiengesellschaft,
`supra.
`
`4
`
`

`

`presumption arising from the examiner’s prima facie showing. See, A.C. Aukerman, supra. If the
`
`Applicant does so, the presumption vanishes. The burden of production and persuasion remains with
`
`the examiner.
`
`Finally, where doubt exists regarding descriptiveness, it should be resolved in the applicant’s
`
`favor. In Re Box Sols. Corp., 79 U.S.P.Q.2d 1953 (T.T.A.B. 2006). This is precisely because the
`
`burden of proving § 2(e) rejections lies with the examiner. Thus, if the Applicant has presented
`
`sufficient evidence to create a genuine question regarding the unitary nature of PARTY BAR, any
`
`doubt should be resolved in Applicant’s favor and in favor of publication for opposition.
`
`B.
`
`Unitary Standard
`
`A mark or portion of a mark is considered “unitary” when it creates a commercial impression
`
`separate and apart from any unregistrable component. TMEP § 1213.05(c). A subset of unitary marks
`
`are marks with a “double entendre.” A double entendre is a word or expression capable of more than
`
`one interpretation. Marks that have multiple meanings, one or more of which are not descriptive, are
`
`not merely descriptive. See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 552 (C.C.P.A. 1968).
`
`A mark that comprises a “double entendre” should not be refused registration as being merely
`
`descriptive if one of its meanings is not merely descriptive relative to the goods or services. TMEP
`
`§ 1213.05(c). A mark that evokes a double entendre is unitary by definition, and should not be
`
`broken up via disclaimer. TMEP § 1213.05(c).
`
`The test for unitariness asks whether the elements of a mark are so integrated or merged
`
`together that they cannot be regarded as separable. See, In re EBS Data Processing, 212 USPQ 964,
`
`966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). The inquiry focuses on “how
`
`the average purchaser would encounter the mark under normal marketing of such goods and also .
`
`5
`
`

`

`. . what the reaction of the average purchaser would be to this display of the mark.” Dena Corp. v.
`
`Belvedere Int’l, Inc., 950 F.2d 1555, 1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991)(quoting In re
`
`Magic Muffler Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)); TMEP § 1213.05(c). The Court of
`
`Appeals for the Federal Circuit has set forth the elements of a unitary mark:
`
`A unitary mark has certain observable characteristics. Specifically, its elements are
`inseparable. In a unitary mark, these observable characteristics must combine to show that
`the mark has a distinct meaning of its own independent of the meaning of its constituent
`elements. In other words, a unitary mark must create a single and distinct commercial
`impression.
`
`Dena Corp., 950 F.2d at 1561, 21 USPQ2d at 1052.
`
`IV.
`
`Argument: PARTY BAR is Unitary
`
`A.
`
`PARTY BAR has an Independent Meaning
`
`Applicant’s mark, PARTY BAR, is unitary because the phrase, party bar, has a distinct
`
`meaning independent of the meaning of its constituent elements that is well known to consumers in
`
`general and to Applicant’s consumers in particular. A party bar is a type of nightclub known for
`
`large, high energy crowds; loud music; dancing; and often, the consumption of copious amounts of
`
`alcohol. The precise boundaries of what exactly does or does not qualify as a party bar can be
`
`ambiguous, but on the nightclub spectrum, a party bar is on the opposite end of the continuum from
`
`jazz clubs and cigar bars.
`
`The foregoing sense of party bar is well understood. Numerous extracts from a variety of
`
`publications, together with citations were introduced in the record below.4 These illustrate the phrase,
`
`party bar, being used to refer to the type of nightclub referenced above:
`
`4
`
`See, Exhibit A to the Request for Reconsideration, July 18, 2023, pp. 1-8.
`
`6
`
`

`

`It doesn’t get much wilder than Squid Roe . . . considered by many to be the ultimate party
`bar.
`
`A hip, long standing favourite that never seems to lose its street cred, this party bar is as
`wild as the party gets in Saas Fee.
`
`Jason had suggested meeting at Joe Bananas in Wan Chai. It was a bit of a hard drinking
`party bar and good fun if you were in the mood to have a wild night.
`
`It’s not a party bar . . . don’t come here if you want to go wild.5
`
`As the foregoing examples illustrate, party bar is a phrase well known to consumers.
`
`Applicant’s goods are loudspeakers, bass speakers, and the like. Thus, Applicant’s intended
`
`customers are consumers of music. Such consumers may not all be within the target demographics
`
`of most party bars, but there is certainly a substantial overlap. No small portion of Applicant’s
`
`consumers will be the same consumers who frequent party bars. Moreover, even bar patrons more
`
`likely to attend a piano bar generally know what a party bar is. Thus, the phrase party bar and its
`
`meaning will be well understood by Applicant’s consumers or, at the very least, a large subset of
`
`those consumers. The nightclub meaning of PARTY BAR is not descriptive of Applicant’s
`
`loudspeaker products.
`
`B.
`
`Applicant’s Advertisements
`
`How the mark is used in the normal marketing of the goods or services and how consumers
`
`would react to such displays of the mark are directly relevant to whether a mark is unitary. Dena
`
`Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1561 (Fed. Cir. 1991).
`
`Applicant has run several different ads on its website, www.bazooka.com; on Amazon; on
`
`5
`
`See, Exhibit A to the Request for Reconsideration, July 18, 2023, pp. 5-7 (emphases
`
`added).
`
`7
`
`

`

`Google; on Facebook; and on Instgram.6 An example of one of the ads run for Applicant’s PARTY
`
`BAR speakers is reproduced below:
`
`Exhibit 4 to Exhibit B in July 18, 2023, Request for Reconsideration.
`
`These advertisements expressly emphasize the nightclub connotation of PARTY BAR to the
`
`intended consumer. The message of the ads is that by purchasing the PARTY BAR product,
`
`6
`
`Exhibit B to the July 18, 2023, Request for Reconsideration is a declaration of
`Applicant’s president, Jon Jordan, pp.1-3. Exhibits 1-5 (unpaginated) to Exhibit B are
`reproductions of Applicant’s advertisements for its PARTY BAR speakers. Mr. Jordan’s
`declaration in Exhibit B provides, inter alia, details about where, when, and how often the
`advertisements in Exhibits 1-5 ran.
`
`8
`
`

`

`consumers can create the atmosphere of a party bar wherever the consumer may be.
`
`The advertisements in Exhibit B to the July 18, 2023, Request for Reconsideration,
`
`particularly the ones that ran on Amazon and www.bazooka.com, would have been presented to
`
`consumers at or near the time of purchase,7 making it more likely that actual consumers would make
`
`the association the mark seeks to evoke.
`
`Additionally, a major target demographic of party bars are 18-25 year olds. These consumers
`
`also comprise a significant subset of Applicant’s target consumers.8 The overlap between Applicant’s
`
`consumers and the primary patrons of party bars makes it even more likely that Applicant’s
`
`consumers will make the double entendre association the mark embodies.
`
`PARTY BAR has a meaning as a phrase, separate and apart from whatever descriptive
`
`meaning the BAR portion of Applicant’s mark may have. The evidence of record establishes what
`
`that meaning is - a high energy nightclub. The evidence of record also establishes that Applicant’s
`
`consumers encounter the mark in ways that will make it likely that those consumers will appreciate
`
`the unitary meaning of PARTY BAR. The demographics of Applicant’s consumers also make it
`
`more likely that they will recognize the non-descriptive nightclub meaning of PARTY BAR.
`
`C.
`
`Weighing the Evidence
`
`Applicant has submitted evidence sufficient to, at a minimum, create a genuine issue whether
`
`PARTY BAR is unitary. This is sufficient to overcome the presumption created by the examiner’s
`
`showing that BAR is descriptive of Applicant’s goods.
`
`With the presumption eliminated, the evidence regarding the unitary nature of Applicant’s
`
`7
`
`8
`
`See, Exhibit B to the July 18, 2023, Request for Reconsideration, p.2.
`
`See, Exhibit B to the July 18, 2023, Request for Reconsideration, p. 1.
`
`9
`
`

`

`mark must be weighed. There is uncontested evidence that PARTY BAR has a meaning as a phrase,
`
`namely as reference to a high energy nightclub. The nightclub meaning of PARTY BAR is not
`
`descriptive of Applicant’s goods.
`
`The evidence of record also shows that Applicant’s consumers are likely to be familiar with
`
`the non-descriptive, high energy nightclub meaning of PARTY BAR, and that the way the mark is
`
`used in commerce will evoke the non-descriptive, unitary meaning of PARTY BAR. On balance,
`
`the evidence of record makes it more likely than not that consumers of loudspeakers who encounter
`
`Applicant’s mark will recognize and appreciate the unitary, non-descriptive meaning of PARTY
`
`BAR.
`
`Finally, to the extent that there is any doubt, the burden of proof and persuasion lies with the
`
`examiner. Accordingly, any doubt should be resolved in favor of the Applicant and in favor or
`
`publication.
`
`10
`
`

`

`V.
`
`Conclusion
`
`For the foregoing reasons, the evidence of record establishes that PARTY BAR is unitary or,
`
`at a minimum, the evidence is sufficient that any conflict should be resolved in Applicant’s favor.
`
`“If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an
`
`element, whether descriptive, generic, or otherwise, is required.” TMEP § 1213.05(c). Accordingly,
`
`Applicant respectfully submits that PARTY BAR is unitary, that no disclaimer of BAR should be
`
`required, and that the application should be advanced for publication.
`
`Dated: November 1, 2023
`
`Respectfully submitted:
`
` /R. Bennett Ford, Jr./
`R. Bennett Ford, Jr.
`Bar Roll No. 39,193
`ROY, KIESEL, FORD, DOODY & NORTH
`9100 Bluebonnet Centre Blvd.
`Suite 100
`P.O. Box 15928
`Baton Rouge, LA 70895
`(225) 927-9908
`rbf@roykiesel.com
`
`11
`
`

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