Examining Attorney: MILTONPRISCILLA
`Serial Number: 76/110885
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK EXAMINING OPERATION
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`B882-008
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`'_ ________________________________ __x
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`In Re the Application of
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`JOHN DICKINSON STATIONERY LIMITED
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`To Register the Mark
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`Miscellaneous Design (Book)
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`Serial No. 76/110885
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`Filed: August 15, 2000
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`Trademark Examining
`Attorney:
`Priscilla Milton
`Law Office 1 10
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`330 Madison Avenue
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`New York, New York 10017
`July 9, 2002
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`Assistant Commissioner for Trademarks
`BOX RESPONSES NO FEE
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`2900 Crystal Drive
`Arlington, Virginia 22202-3 513
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`Sir:
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`This is in response to the office action mailed July 5, 2002.
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`AMENDMENTS
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`The application should be amended as follows:
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`(1) Delete the drawing and substitute for it the enclosed drawing.
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`(2) Delete the description of the mark and insert — Applicant’s mark consists of the
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`combination of the colors red and black as used on its products, the side of the product appearing
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`in the color red, the front of the product appearing in the color black with the words BLACK N’
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`RED displayed in red on the lower right corner and the back of the product appearing in the color
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`

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`black with a logo consisting of a black letter “J” superimposed on a red letter “D” displayed on
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`the lower left corner. The broken lines are intended to show placement ofthe mark on the goods
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`and are not part of the mark. —
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`REMARKS
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`Applicant has made ofrecord the amendments to the drawing and description of the mark
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`requested by the Trademark Attorney. Applicant acknowledges that the application will be
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`suspended pending disposition of Cancellation No. 32,252.
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`The Trademark Attorney has also requested a disclaimer of exclusive rights to the words
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`“BLACK AND RED” on the ground that they describe a feature of the goods. For the reasons
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`set forth below, applicant respectfully requests reconsideration of the requested disclaimer.
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`Applicant submits that a disclaimer of “BLACK AND RED” is not necessary when the
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`words are viewed within the context of its mark. While disclaimer of unregistrable words from
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`an otherwise registrable mark may be required as a matter of discretion, Lanham Act, Section
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`6(a), 15 U.S.C. §l056(a); TMEP §904.01(a), this discretion must be based on an examination of
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`applicant's mark in its entirety as used in connection with applicant's products. As the Board
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`stated in In re Hampsl/2ire—Desigrzers, Inc, 199 USPQ 383, 384 (TTAB 1978):
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`[A]pplicant is seeking to register the term 'DESIGNERS PLUS+',
`and not the term ‘DESIGNERS’, per se, and our determination must
`therefore necessarily turn on whether the term DESIGNERS’
`possesses or projects a merely descriptive significance when so
`used. The term undoubtedly is a well—known word of the English
`language that has a definite meaning and appeal to purchasers and
`prospective purchasers of wearing apparel. Like other terms with
`well-understood meanings, the use thereof in certain contexts
`would immediately convey its meaning in the normal sense of the
`term and possibly bestow upon the entire phrase a descriptive
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`'DESIGNER‘S ORIGINAL’ would fall within this
`significance.
`category of terms because it unmistakably conveys or falsely
`conveys the idea that the goods so designated are the original work
`of a designer. However, some of these same dictionary words may
`be used in association with words or terms so as to create a
`notation which, as a whole, serves to suggest the well—known
`significance ofthe term rather than describe with any degree of
`particularity some quality or characteristic of the goods in
`connection with which it is used. ‘DESIGNERS PLUS+' is such a
`notation. It suggests that applicant's sweaters possess something
`more than a designer quality or characteristic, but what that is must
`necessarily rest with the imagination of the beholder. It is a unitary
`phrase, it has a unitary connotation, and it must be considered as
`such in determining its registrability. Under these circumstances
`and considering that the registration of ’DESIGNERS PLUS+' and
`the presumptions afforded that registration under Section 7(b)
`would pertain to the mark as a whole rather than to its components,
`per se, and that the registration thereof cannot serve to preclude
`other manufacturers or retailers of apparel from making fair use of
`the term 'DESIGNER' or ‘DESIGNERS’ in describing their goods,
`the requirement for a disclaimer of ‘DESIGNERS’ is believed
`unnecessary."
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`Similarly, in In re Diamond Walnut Growers, Inc, 183 USPQ 63 (TTAB 1974),
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`the applicant had agreed to disclaim the word NUT in its trademark NUT CRUST BAKE for a
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`seasoned coating mix containing nuts used in the preparation of chicken, ti sh and pork, but
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`refused to disclaim the additional word CRUST. In reversing a refusal to register, the Board
`said:
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`Since all of the wording which comprises the mark describe a
`function, ingredient, and/or resultant use thereof, we are of the
`opinion that the descriptive nature of this unitary mark should be
`considered in its entirety rather than by requiring disclaimers of
`any portion thereof....In this regard, it would appear that the entire
`combination of words is not merely descriptive of applicant's
`goods. For the foregoing reasons, we conclude that a requirement
`for a disclaimer of the word ‘CRUST’ is improper. (183 USPQ at
`64.)
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`See, also, In re Autotune Centers 0fAmerica, 178 USPQ 245, 246 (TTAB 1973).
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`In the instant case, the words “BLACK N’ RED” are not merely descriptive when
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`considered under the standard set forth by the Trademark Trial and Appeal Board in In re
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`Universal Water Systems, Inc, 209 USPQ 165, 166 (TTAB 1980):
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`The question of whether a particular mark is merely
`descriptive must be determined not in the abstract, but in relation
`to the goods or services for which registration is sought, the
`context in which it is used, and the significance it is likely to have,
`because of its use, to the average purchaser as he encounters the
`goods or services in the marketplace....
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`It is well settled that a mark is merely descriptive within the
`meaning of the Lanharn Act, Section 2(e)(1), if it denotes or de-
`scribes a desirable characteristic of the goods, or services, or the
`ingredients, quality, composition, attribute, purpose, function or
`use for which the goods or services are to be used....
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`This tribunal and others have over the years offered a
`number of tests and criteria for determining whether a term is
`suggestive or merely descriptive, and it is believed that a consensus
`of such tests is pronounced in Stix Products, Inc. v. United Mer-
`chants & Manufacturers, Inc., 160 USPQ 777 (DC NY, 1968) as
`follows:
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`"A term is suggestive if it requires imagination,
`thought and perception to reach a conclusion as to
`the nature of the goods (or services). A term is
`descriptive if it forthwith conveys an immediate
`idea of ingredients, qualities, or characteristics of
`the goods (or services). The test is whether the term
`is so close and direct that it is apparently descriptive
`and generally useful in approximately that form to
`all merchants marketing such goods (or services), or
`is so remote and subtle that it is fanciful and not
`needed by other merchants of similar goods (or
`services)."
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`The Board concluded under this standard that the mark PURITY, while somewhat suggestive,
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`was not merely descriptive of the applicant's water filtering and softening units.
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`Similarly, in In re Morton-Norwich Products, Inc, 209 USPQ 791 (TTAB 1981), the
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`Board found that COLOR CARE was not merely descriptive of laundry bleach. The Board
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`reasoned as follows:
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`In the instant case the applicant maintains that at most the mark
`is suggestive while the Trademark Attorney contends that in the
`marketplace the term "COLOR CARE" immediately describes to a
`prospective purchaser that the laundry bleach carrying that term is
`a bleach designed to care for colored and synthetic fabrics. In
`support of that contention, the Trademark Attorney has submitted
`photoprints of the labelling taken from the containers of several
`brands of laundry bleach allegedly showing that the manufacturers
`thereof "advertise their ‘color care‘ bleaches as being safe for
`colored fabrics upon which one should not use a whitening
`chlorine bleach."
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`Two of the products were, in fact bleaches, the other a
`detergent booster containing a bleach. All indicated the absence of
`chlorine in the product and some recommendations on the labels
`were, for use on "all colorfast garments", "all washable fabrics",
`"all washable colors and fabrics" or, may be used "when dyes are
`color—fast and designed for repeated laundering". Each of the prod-
`uct labels contains instructions for testing the fabric for washability
`and colorfastness prior to its use.
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`The foregoing tells us that today's laundry bleaches, having
`eliminated chlorine from their formulas, may be used on colored
`garments which have been tested for colorfastness or which have
`been labelled colorfast by their manufacturers. Thus, a precise
`meaning attributable to the term "COLOR CARE" as used on a
`laundry bleach is somewhat nebulous. That is, none of the
`evidence indicates that these laundry bleaches will do anything for
`colored garments or linens that they will not do for non—colored or
`white. It therefor appears that the mark in question intimates or
`suggests a characteristic of the product rather than being merely
`descriptive thereof. (209 USPQ at 791-792.)
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`Applying these principles to the instant case, the words BLACK N’ RED in applicant's
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`mark, when viewed within the context ofthe mark in its entirety, are not merely descriptive of its
`products. Applicant will be using its mark in connection with stationery products such as note
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`books and note pads. The mark, which consists ofthe color combination ofred and black
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`together with the words RED N’ BLACK, does not convey an immediate idea of any ingredient,
`quality or characteristic that is apparently descriptive and therefore useful to all merchants
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`marketing such goods. Indeed, the words RED N’ BLACK are a verbalization ofthe color
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`combination in applicant’s mark. They in no way describe a feature of applicant’s products that
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`should remain available to competing merchants. Even assuming that a person viewing
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`applicant’s products will make a connection between the Words RED N’ BLACK and the colors
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`red and black, this does not render either the words or the color combination merely descriptive
`of a non-registrable feature of applicant’s products.
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`Moreover, applicant‘s mark, when viewed in its entirety, is not in general use to describe
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`stationery products of a similar nature, and registration of the mark would not deprive others of
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`words they could use to describe their own products. In finding that CODE & SYMBOL was not
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`merely descriptive of a magazine dealing with methods ofproduct identification, the Board in In
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`re Distribution Codes, Inc., 199 USPQ 508, 511 (TTAB 1978), said:
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`Our decision is assisted by the fact that we have no information
`that anyone will be damaged by the registration of the mark but
`that anyone who would be injured will have an opportunity to file a
`notice of opposition and to develop a factual record upon which
`any question of descriptiveness could be adjudicated with more
`confidence than it can be on the basis of a priori assumptions.
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`Indeed, the mark in Registration No. 143316 that was cited as the basis for the Section
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`2(d) refusal to register is described in the registration as consisting “of the words ‘Red & Black,’
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`together with the alternate longitudinal stripes of red and black indicated by the color—lines
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`shown in the drawing.” The registration does not contain a disclaimer of the words “Red &
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`Black” since they too describe only the color combination of red and black on the registranfs
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`pencils and not a functional feature of these pencils.
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`Similarly, applicant initially relied as a basis for registration on CTM Application No.
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`1057306, which issued to Registration No. 1057306 on November 28, 2000. The registration
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`claims the colors black and red as used in a three dimensional trademark in combination with the
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`words BLACK N’ RED. The application states that “the colours red and black are elements of
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`the mark as shown on the application form” and does not contain a disclaimer of the words
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`“BLACK AND RED.”
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`The foregoing discussion demonstrates that the words “RED N’ BLACK” in applicant's
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`mark are not merely descriptive of its products. At the very least, applicant has raised doubts as
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`to the descriptiveness of these words as used in its mark, which should be resolved in its favor.
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`See, e.g., In re Slro/1 Brewery Ca, 34 USPQ2d 1796 (TTAB 1995); In re Bliss & Laughlin
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`Industries, Inc., 198 USPQ 127, 128 (TTAB 1978), and In re Pennwalt Corporation, 173 USPQ
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`317, 319 (TTAB 1972).
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`In View of the foregoing, applicant respectfully requests that the Trademark Attorney
`Vvithdraw the requirement of a disclaimer.
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`E
`Respectfully submitted,
`if
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`,1,
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`,
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`Howard B. Barnaby
`Attorney for Applicant
`Tel. (212) 682—9640
`Fax (212) 682-9648
`Email hbarnaby@rbd-law.com
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`

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`Applicant: l
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`John Dickinson Stationery Limited
`Sawston
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`Cambridge CB2 4XD
`England
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`Manuscript books; casebound note books and casebound
`writing books; wirebound books; wirebound writing pads;
`wirebound note pads; refill pads for writing pads and note
`pads; memo pads; box files; clipboards; computer printout
`binders; fax rolls; flipcharts; ring and presentation binders;
`and artists portfolios
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`Black n‘ Red