PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
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`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
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`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`Please see attached argument in .pdf
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(9 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`86534471
`
`LAW OFFICE 114
`
`http://tsdr.uspto.gov/img/86534471/large
`
`RENTAWEEK
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_9767147154-20150601162025685196_._OA_Response_-_RENTAWEEK.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\344\86534471\xml6\ROA0010.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`.pdf of Argument in Support of Registration
`
`GOODS AND/OR SERVICES SECTION (036)(class deleted)
`
`GOODS AND/OR SERVICES SECTION (042)(class added)Original Class (036)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`042
`
`Computer services, namely, creating an on-line community for registered users to list for sale or to rent their time share interests,
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (043)(class deleted)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`SIGNATURE SECTION
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`RESPONSE SIGNATURE
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`SIGNATORY'S NAME
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`SIGNATORY'S POSITION
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`/Matthew H. Swyers/
`
`Matthew H. Swyers
`
`Attorney of Record, Member of the Virginia State Bar
`
`SIGNATORY'S PHONE NUMBER
`
`(800) 906-8626 x100
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`06/01/2015
`
`YES
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Mon Jun 01 16:23:18 EDT 2015
`
`USPTO/ROA-XX.XX.XXX.XXX-2
`0150601162318439389-86534
`471-530c1e92840bbc0ceeaa2
`64b8b80d9e35836cea5d16de8
`aed7a1c0246c93889-N/A-N/A
`-20150601162025685196
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86534471(cid:160)RENTAWEEK(Standard Characters, see http://tsdr.uspto.gov/img/86534471/large) has been amended as
`follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Please see attached argument in .pdf
`
`EVIDENCE
`Evidence in the nature of .pdf of Argument in Support of Registration has been attached.
`Original PDF file:
`evi_9767147154-20150601162025685196_._OA_Response_-_RENTAWEEK.pdf
`Converted PDF file(s) ( 9 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant hereby deletes the following class of goods/services from the application.
`Class 036 for Real estate time-sharing; Vacation real estate time share exchange services; Vacation real estate timeshare services
`
`Applicant hereby deletes the following class of goods/services from the application.
`Class 043 for Hotel services; Making hotel reservations for others; Resort hotel services
`
`

`

`Applicant hereby adds the following class of goods/services to the application:
`New: Class 042 (Original Class: 036 ) for Computer services, namely, creating an on-line community for registered users to list for sale or to rent
`their time share interests,
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`SIGNATURE(S)
`Response Signature
`Signature: /Matthew H. Swyers/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 06/01/2015
`Signatory's Name: Matthew H. Swyers
`Signatory's Position: Attorney of Record, Member of the Virginia State Bar
`
`Signatory's Phone Number: (800) 906-8626 x100
`
`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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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.
`
`Serial Number: 86534471
`Internet Transmission Date: Mon Jun 01 16:23:18 EDT 2015
`TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2015060116231843
`9389-86534471-530c1e92840bbc0ceeaa264b8b
`80d9e35836cea5d16de8aed7a1c0246c93889-N/
`A-N/A-20150601162025685196
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of Apex Development, LLC
`
`Serial No.
`
`86534471
`
`Trademark:
`
`RENTAWEEK
`
`Filing Date:
`
`Feb. 13, 2015
`
`RESPONSE TO OFFICE ACTION
`
`COMES NOW, the Applicant Apex Development, LLC (hereinafter “Applicant”) by
`
`Counsel Matthew H. Swyers, Esq. of The Trademark Company, PLLC, and respectfully requests
`
`the Examining Attorney to reconsider the refusal of the instant application on the grounds of Trademark
`
`Act Section 2(e)(l), 15 U.S.C. §1052(e)(l); 37 CFR. §2.64(a), stating as follows:
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`ARGUMENT IN SUPPORT OF REGISTRATION
`
`Refusal under Section 2(e)(1) of the Trademark Act of 1946
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`The Examining Attorney refused registration based upon a finding that the mark is merely
`
`descriptive of the Applicant’s services. Insofar as Applicant’s proposed mark is not merely descriptive of
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`the services as amended, Applicant respectfully submits that there is no basis to maintain the instant
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`refilsal and that registration of the Applicant’s trademark is appropriate.
`
`Matter that "merely describes" the goods or services on or in connection with which it is used is
`
`not registrable on the Principal Register. TMEP § 1209. As noted in In re Abcor Development Corp., 588
`
`F.2d 811, 813, 200 USPQ 215, 217 (CCPA 1978):
`
`The major reasons for not protecting such marks are: (1) to prevent the owner of a mark
`from inhibiting competition in the sale of particular goods; and (2) to maintain freedom
`of the public to use the language involved, thus avoiding the possibility of harassing
`infringement suits by the registrant against others who use the mark when advertising or
`describing their own products.
`
`To be refused registration on the Principal Register under §2(e)(l) of the Trademark Act
`
`(hereinafter “the Act”), 15 USC. §l052(e)(l), a mark must be merely descriptive or deceptively
`
`

`

`misdescriptive of the goods or services to which it relates. TMEP § 1209.01(b). A mark is considered
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`merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of
`
`the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
`
`(APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229
`
`USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging
`
`reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely
`
`descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic
`
`cancer); In re Bright-Crest, Ltd, 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely
`
`descriptive of a coaster suitable for direct mailing).
`
`The determination of whether or not a mark is merely descriptive must be made in relation to the
`
`goods or services for which registration is sought, not in the abstract. TMEP § 1209.01(b)(emphasis
`
`added). This requires consideration of the context in which the mark is used or intended to be used in
`
`connection with those goods or services, and the possible significance that the mark would have to the
`
`average purchaser of the goods or services in the marketplace. Id. See also In re Omaha National Corp.,
`
`819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200
`
`USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
`
`It is not necessary that a term describe all of the purposes, functions, characteristics or features of
`
`a product to be considered merely descriptive; it is enough if the term describes one significant function,
`
`attribute or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d1370, 1371 (Fed.
`
`Cir. 2004) ("A mark may be merely descriptive even if it does not describe the 'full scope and extent‘ of
`
`the applicant's goods or services," citing In re Dial-A- Mattress Operating Corp., 240 F.3d 1341, 1346, 57
`
`USPQ2d 1807, 1812 (Fed. Cir. 2001))§ In re Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010.
`
`However, use of a descriptive term in conjunction with other distinguishing elements does not
`
`render the entire mark “merely descriptive”.
`
`Instead, to be characterized as “descriptive,” a mark must
`
`immediately convey knowledge of the ingredients, qualities or characteristics of the goods or services. In
`
`re Quik—Print Copy Shops Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980) (emphasis added). In the
`
`2
`
`

`

`context of the Act, “merely” descriptive means “only” descriptive. Id. at n. 7. Moreover, the mark must
`
`give some reasonably accurate or tolerably distinct knowledge of the essence of the service. If the
`
`information conveyed by the mark is indirect or vague, the mark is being used in a suggestive rather than
`
`a descriptive manner. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
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`§ll:19 ( Ed. 2000); The Money Store v. Harris Corp. Finance, Inc. 216 USPQ 11, 18 (Cir. 1982) (“‘THE
`
`MONEY STORE’ conveys the idea of a commercial establishment whose service involves supplying
`
`money. The term does not, however, necessarily convey ‘the essence of the business, money lending....
`
`Some imagination and perception are therefore required to identify the precise nature of the services .
`
`.
`
`.
`
`.“); In re Ralston Purina Company, 191 USPQ 237, 238 (TTAB 1976) (The term SUPER is not used to
`
`describe any real or specific item or characteristic or quality, but merely to connote a vague desirable
`
`characteristic or quality and therefore it need not be disclaimed from RALSTON SUPER SLUSH).
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`In determining whether a particular mark is merely descriptive of a product, a reviewing court is
`
`tasked with considering the mark in its entirety, with a View toward “what the purchasing public would
`
`think when confronted with the mark as a whole.” In re Hutchinson Technology Inc. 852 F,2d 552, 552-
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`54 (Fed. Cir. 1988). To the extent that there may be doubt as to whether applicant’s mark is merely
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`descriptive or suggestive of its goods, it is commonly accepted practice to resolve any doubt in the
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`applicant’s favor and publish the mark for opposition. In re Morton—N0.rwich Products, Inc. 209 USPQ
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`791 (TTAB 1981); In re Gourmet Bakers Inc., 173 USPQ 565 (TTAB 1972).
`
`Applicant respectfully submits that the instant mark is suggestive of the Applicant’s services and
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`not merely descriptive as contended by the Examining Attorney.
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`If a consumer has to exercise “mature thought or follow a multi-stage reasoning process” to
`
`determine the characteristics of a product or service, then the mark is suggestive, not descriptive. In re
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`Tennis in the Round, Inc. 199 USPQ 496, 498 (TTAB 1978) (“This association of applicant’s mark with
`
`the phrase ‘theater-in-the-round’ creates an incongruity...,” thus TENNIS IN THE ROUND is not merely
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`descriptive of tennis facilities.). See also, Blisscraft of Holh/wood v. United Plastics Co. 294 F.2d. 694,
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`131 USPQ 55 (2d. Cir. 1961) (POLY PITCHER not merely descriptive of polyethylene pitchers;
`
`3
`
`

`

`suggestive of Molly Pitcher of Revolutionary time); In re Colonial Stores, Inc. 394 F.2d 549, 157 USPQ
`
`382 (CCPA 1968) (SUGAR & SPICE not merely descriptive of bakery products; suggestive of nursery
`
`rhyme); Douglas Laboratories Corp. v. Copper Tan, Inc. 210 F.2d 453, 100 USPQ 237 (2d Cir. 1954),
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`cert. denied 347 U.S. 968, 101 USPQ 505 (1954) (finding COPPERTONE for sun tan oil suggestive, not
`
`descriptive); In re Realistic Co. 440 F.2d 1393, 169 USPQ 610 (CCPA 1971) (finding CURV for
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`permanent Wave solution suggestive, not descriptive); and, Colgate-Palmolive Co. v. House for Men, Inc.
`
`143 USPQ 159 (TTAB 1964) (finding RAP1D- SHAVE for shaving cream suggestive, not descriptive).
`
`In Equine Technologies Inc. v. Equitechnology Inc. 68 F.3d 542 (1st Cir. 1995), the court was
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`required to determine whether the mark EQUINE TECHNOLOGIES was descriptive or suggestive when
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`used in connection with high-tech hoof pads for horses. The court cited authorities indicating that the
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`hallmark of the descriptive term is a specific identification of the marked good. Id. at 544. In holding the
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`mark EQUINE TECHNOLOGIES to be correctly characterized as suggestive rather than descriptive, the
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`court noted that while there is no dispute that the term “equine” is descriptive of horses, the question is
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`whether the mark, in its entirety, is merely descriptive of the plaintiff’ s product — hoof pads for horses.
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`Id. at 545.
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`In this case, the court found that the mark itself does not convey information about the
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`plaintiff’s products or its intended consumers. Rather, it requires imagination to connect the term “Equine
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`Technologies” to hoof care products in general, and to the plaintiff’s product in particular.
`
`In Ex Parte Club Aluminum Products Co. 105 USPQ 44 (Commissioner 1955), the mark COOK-
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`N-LOOK was held registrable for transparent glass covers for cooking utensils. The mark was somewhat
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`suggestive of a property the goods might have, but like Applicant’s mark, did not describe the goods per
`
`se:
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`The mark is a compound word mark which describes what one who uses the covers can do, i.e.
`look into the utensil to see the cooking process, but this does not make the mark descriptive of the
`covers. The necessity for analysis removes it form the category of mere descriptiveness.
`
`

`

`In Independent Nail & Packing Co. v. Stronghold Screw Products, Inc. 205 F.2d 921, 925 ( Cir.
`
`1953), cert. denied 346 U.S. 491 (1953), the court held that STRONGHOLD as applied to ribbed nails
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`was not descriptive, stating that:
`
`Although the world ‘stronghold’ is suggestive of one of the attributes of plaintiff’ s nail with the
`annular thread, it is not descriptive of a nail, let alone that type of nail. A person unaware of the
`particular product of the manufacturer, upon seeing or hearing the name ‘stronghold’ would find
`it virtually impossible to identify the product to which it might have been applied.
`Id.
`
`In Worthington Foods, Inc. v. Kellogg Co. 732 F. Supp. 1417, 1435 (SD. Ohio 1990), the court
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`found that a multi-stage reasoning process was necessary before a consumer could understand the
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`message conveyed by the mark HEARTWISE, that is, food which is healthful for the heart. The court also
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`noted that assuming HEARTWISE meant “wise for one’s heart,” it might refer to a large number of goods
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`or services such as running shoes, a treadmill, a calorie counter, or an Ann Landers newspaper column.
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`The court held that HEARTWISE was a suggestive rather than descriptive mark as the consumer could
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`not directly cull a message concerning the healthful characteristics of the goods simply from looking at
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`the mark.
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`A brief review of other suggestive marks helps clarify this dichotomy:
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`(1) SUGAR & SPICE for use on bakery products held to be suggestive not descriptive.
`In re Colonial Stores, Inc. 394 F.2d 549, 157 USPQ 382 (CCPA 1968).
`
`(2) 100 YEAR NITE-LITE for light with life expectancy of 500 years held to be
`suggestive not descriptive. Donsky v. Bandwagon, Inc. 193 USPQ 336 (D. Mass. 1976).
`
`(3) TENNIS IN THE ROUND held not descriptive of tennis facilities. In re Tennis in the
`Round, Inc. 199 USPQ 496 (TTAB 1978).
`
`(4) RAILROAD SALVAGE for sale of goods from bankruptcy liquidations and
`discontinued goods held to be suggestive. Railroad Salvage of Conn., Inc. v. Railroad
`Salvage, Inc. 561 F.Supp. 1014 (D.R.I. 1983).
`
`(5) UNDERNEATH IT ALL for undergarment products held to be suggestive in
`Maidenform, Inc. v. Munsingwear, Inc. 195 USPQ 297 (SDNY 1977).
`
`(6) CITIBANK for urban banking services held to be suggestive in Citibank, N.A. v.
`Citibanc Group, Inc. 724 F.2d 1540 (11th Cir. 1984).
`
`

`

`(7) CHARRED KEG for bourbon whiskey held to be suggestive, even though bourbon is
`an American-type whiskey that is made in part by aging carried out in new charred oaken
`containers. In re Majestic Distilling Co., Inc. 164 USPQ 386 (CCPA 1970).
`
`(8) LONGTONG for barbecue tongs held to be suggestive in Ex parte Nixdorjj’Krein Mfg
`Co., 115 USPQ 362 (Comm. Pat. 1957).
`
`(9) BRAKLEEN for a brake parts cleaner held to be suggestive and not descriptive in
`C]. Webb, Inc. 182 USPQ 63 (TTAB 1974).
`
`(10) DRI-FOOT held to be suggestive of foot deodorant in In re Pennwalt Corp. 173
`USPQ 317 (TTAB 1972).
`
`(11) CHEW ‘N CLEAN was held not to be descriptive of tooth powder in In re Colgate-
`Palmolive Company 160 USPQ 733 (CCPA 1969).
`
`(12) COPPERTONE was found not to be descriptive of a suntan preparation in Douglas
`Lab Corp. v. Copper Tan, Inc. 210 F.2d 453, 100 USPQ 237 (2d Cir. 1954), cert denied
`347 US. 968 (1954).
`
`In the present case, the “mental link” between the trademark RENTAWEEK and the Applicant’s
`
`services as amended is neither immediate nor instantaneous.
`
`Applicant’s Trademark is Suggestive Under the TTAB ’s Three-Part Test
`
`The Trademark Trial and Appeal Board has adopted a three-part test to help determine whether a
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`mark is descriptive or suggestive:
`
`(1) The degree of imagination necessary to understand the product;
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`(2) A competitor’s need to use the same terms; and
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`(3) Competitors’ current use of the same or similar terms.
`
`See No Nonsense Fashions, Inc. 1/. Consolidated Food Corp., 226 USPQ 502 (TTAB 1985).
`
`(1) Degree ofImagination
`
`Under the degree of imagination test, the greater the number of “imaginative steps” required for
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`a consumer to arrive at a tolerably accurate or direct description of the product or service from the mark
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`itself, the more likely the term is accurately characterized as “suggestive” and not “merely descriptive”.
`
`See Railroad Salvage ofConnecticut, Inc. v. Railroad Salvage, Inc., 561 Fed. 1014 (DCRI 1983). Since
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`there is no instantaneous connection as to the nature of the services provided by the Applicant, it is far
`
`

`

`more likely that the trademark is correctly deemed suggestive rather than descriptive. See Stix Products,
`
`Inc. v United Merchants and Manufacturers, Inc., 295 Fed. Supp. 479 (SDNY 1968).
`
`Specifically, Applicant’s service mark is for RENTAWEEK in regard to “Computer services,
`
`namely, creating an on-line community for registered users to list for sale or to rent their time share
`
`interests.” In this regard, While the term RENT is descriptive, AWEEK is suggestive of the object of the
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`verb rent, namely, a time-share unit which are typically provided in Weekly rental unit increments.
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`Thus, when the average relevant consumer views the service mark at issue they will visualize it in
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`three distinct components: RENT, A, and WEEK. With the term RENT,
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`there is an immediate
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`association with the Applicant’s services. However, as set forth above, the average consumer will not
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`immediately associate the A WEEK portion of the mark with time-share services.
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`Rather, as he degree of imagination test suggests, once understanding the A WEEK portion it will
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`take another mental step to arrive at the revelation that the mark refers to time-share weekly rentals as a
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`whole.
`
`In this regard, it is suggested that this prong of the test favors registration of the Applicant’s
`
`trademark.
`
`(2) Competitor’s Need to Use Applic(mt’s Trademark
`
`Next, We consider App1icant’s c0mpetitor’s need to use Applicant’s Trademark. Provided that
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`alternative wording exists this part of the test favors registration of the Applicant’s trademark.
`
`In the
`
`instant case,
`
`it
`
`is clear that Applicant’s competitors have numerous choices in regard to alternative
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`language that can be used to identify their own respective services.
`
`Specifically, Applicant’s
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`competitors
`
`could
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`use
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`the
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`following:
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`PAYMENTWEEK,
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`ANNUITYDAYS, LEASEAMONTH, or PAYANHOUR. Accordingly, in consideration of this second
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`factor, it is again far more likely that the trademark is accurately categorized as suggestive rather than
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`descriptive.
`
`

`

`(3) Competitor ’s Current Use ofAppliccmfs Trademark
`
`Finally, we consider Applicant’s actual competitor’s current use of the trademark at issue. There
`
`is little evidence of such use. Moreover, the use, if any, that has been provided, should not be deemed
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`persuasive as those competitors are, in the Applicant’s view, making unauthorized use and potentially
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`infringing upon Applicant’s trademark and may soon have to answer
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`to Applicant
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`for
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`these
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`transgressions.
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`That being said, it is requested that the evidence provided, limited in nature, and most
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`likely simply of infringing activity, should also not be considered to support a finding of
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`descriptiveness.
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`In the instant case, although the Examining Attorney may find that the first two prongs of
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`this
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`analysis may be
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`satisfied,
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`the
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`third prong cannot.
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`Specifically, based upon
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`AcronymFinder.com, the applied-for Trademark is not a well-known or popular acronym for the
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`specific wording at issue here. As such, under the aforementioned test the acronym as applied
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`for is not descriptive and, accordingly, the refilsal should be Withdrawn.
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`CONCLUSION
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`In sum, applying the Trademark Trial and Appeal Board’s tests and relevant standards to
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`the refusal at hand, the relevant consuming public would not form an immediate impression of
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`the features, functions, qualities or characteristics of the goods claimed by Applicant by mere
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`sight of the trademark at issue.
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`In view of the above arguments, Applicant believes that the
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`proposed mark is entitled to registration on the Principal Register.
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`If, however, the Examining Attorney remains unsure, the Office is respectfully reminded
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`that because of the thin line between suggestive and descriptive marks, it is the practice of the
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`USPTO to resolve doubt in Applicant’s favor and publish the mark for opposition. See In re
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`

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`Morton—Norwz'ch Products, Inc. 209 USPQ 791 (TTAB 1981); and In re Grand Metropolitan
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`Foodservice Inc. 30 USPQ2d 1974, 1976 (TTAB 1994).
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`WHEREFORE the Applicant Apex Development, LLC, by Counsel respectfillly requests
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`the Examining Attorney to reconsider the refusal under Section 2(e)(1) of the Trademark Act of
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`1946 and allow the publication of RENTAWEEK on the Principal Register.
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`Respectfully submitted this 1st day of June, 2015
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`The Trademark Company, PLLC
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`/Matthew H. Syyers/
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`344 Maple Avenue West, PMB 151
`Vienna, VA 22180
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`Tel. (800) 906-8626 X100
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`Facsimile (270) 477-4574
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`Inswyers@thetrademarkc0mpany.com
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`