From: Rappaport, Seth A.
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`Sent: 5/18/2016 3:47:51 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86672373 - PRO. - 24066 - EXAMINER BRIEF
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 86672373.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 86672373
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`MARK: PRO.
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`*86672373*
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`CORRESPONDENT ADDRESS:
` MATTHEW H SWYERS
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`GENERAL TRADEMARK INFORMATION:
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` THE TRADEMARK COMPANY PLLC
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`http://www.uspto.gov/trademarks/index.jsp
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` 344 MAPLE AVE W PMB 151
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` VIENNA, VA 22180-5612
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`APPLICANT: Pico Pro Inc.
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` 24066
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`CORRESPONDENT E-MAIL ADDRESS:
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` admin@thetrademarkcompany.com
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
`p
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`Applicant has appealed the trademark examining attorney’s final refusal to register the service
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`mark PRO. in stylized form. Registration was refused under Section 2(e)(1) of the Trademark Act, 15
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`U.S.C. Section 1052(e)(1), on the grounds that the mark is merely descriptive of the identified services.
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`FACTS
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`On June 24, 2015, the applicant, Pico Pro Inc., filed a use-based service mark application seeking
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`registration of the mark PRO. in stylized form for “Consulting services in the field of architectural
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`design.”
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`The examining attorney issued a non-final Office Action on October 7, 2015. The examining
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`attorney refused registration on the Principal Register under Trademark Act Section 2(e)(1) on the
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`grounds that the mark is merely descriptive of the identified services.
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`The applicant responded to the Office Action on January 20, 2016. In that response, the
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`applicant argued against the refusal under Section 2(e)(1).
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`On January 21, 2016, the examining attorney issued a final Office Action. The examining
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`attorney made final the refusal under Section 2(e)(1).
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`The applicant noted the instant appeal on February 2, 2016 and filed its appeal brief on April 4,
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`2016. The file was forwarded to the examining attorney for his statement on April 4, 2016.
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`ISSUE
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`Whether the applied-for mark PRO., when used in connection with the applicant’s services, is merely
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`descriptive of those services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP
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`§§1209.01(b), 1209.03 et seq.
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`ARGUMENT
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`THE APPLICANT’S MARK IS MERELY DESCRIPTIVE OF THE IDENTIFIED SERVICES UNDER SECTION 2(e)(1) OF
`THE TRADEMARK ACT.
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`The applicant seeks registration of PRO. in stylized form for “Consulting services in the field of
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`architectural design.”
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`A mark is merely descriptive if it describes an ingredient, quality, characteristic, function,
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`feature, purpose, or use of an applicant’s or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783
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`F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d
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`1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75
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`USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S.
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`538, 543 (1920)).
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`The determination of whether a mark is merely descriptive is made in relation to an applicant’s
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`services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254,
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`103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297,
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`1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51
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`USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents”
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`managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re
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`Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and
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`CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant
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`trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
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`“Whether consumers could guess what the product [or service] is from consideration of the mark alone
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`is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
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`In the non-final Office Action dated October 7, 2015, the examining attorney provided evidence
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`from The American Heritage Dictionary which shows that the wording PRO is short for “professional” or
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`is defined as “an expert in the field of endeavor.” (Office Action, 10/07/2015, TSDR pp. 2-4). In addition,
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`evidence provided from thefreedictionary.com bolsters this definition of PRO by showing entries that
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`define the term as “Engaging in a given activity as a source of livelihood or as a career,” “Having or
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`showing great skill; expert” or “A person following a profession, especially a learned profession.” (Final
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`Office Action, 01/21/2016, TSDR pp. 2-7).
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`Furthermore, in the final Office Action dated January 21, 2016, the examining attorney provided
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`Internet evidence consisting of various websites that show that the wording pro or the wording
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`professional is commonly used in connection with architectural design services to describe to consumers
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`that the services are professional level services that are provided by experts in the field. This evidence
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`includes the following examples:
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`• Moseley Architects provides comprehensive professional architectural, engineering, and
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`interior design solutions to clients. (Final Office Action, 01/21/2016, TSDR pp. 15-16)
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`• Aspect Architecture offers customized and professional architectural and design services
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`to meet the needs of their clients. (Final Office Action, 01/21/2016, TSDR p. 17)
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`• Reno Design Group provides professional architecture and planning services to
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`consumers. (Final Office Action, 01/21/2016, TSDR pp. 20-21)
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`• Eaton Architecture provides architecture services that are provided by three professional
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`licensed architects in the state of Utah. (Final Office Action, 01/21/2016, TSDR pp. 22-28)
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`• UIC provides professional services in the nature of architectural design services for
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`consumers. (Final Office Action, 01/21/2016, TSDR pp. 31-33)
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`Material obtained from the Internet is generally accepted as competent evidence. In re
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`Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008) (accepting Internet evidence to show descriptiveness);
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`In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (accepting Internet evidence to show genericness);
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`In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (accepting Internet evidence to show
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`geographic significance); In re Gregory, 70 USPQ2d 1792, 1793, 1795 (TTAB 2004) (accepting Internet
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`evidence to show surname significance); TBMP §1208.03; TMEP §710.01(b).
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`The Internet has become integral to daily life in the United States, with Census Bureau data
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`showing approximately three-quarters of American households used the Internet in 2013 to engage in
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`personal communications, to obtain news, information, and entertainment, and to do banking and
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`shopping. See In re Nieves & Nieves LLC, 113 USPQ2d at 1642 (taking judicial notice of the following two
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`official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey
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`Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at
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`http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The
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`Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s
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`Emerging Online Experience (2013), available at
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`http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-
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`_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United
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`States suggests that Internet evidence may be probative of public perception in trademark examination.
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`The applicant is providing professional consulting services in the field of architectural design that
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`are provided by professionals in the field. Therefore, the applied-for mark is merely descriptive of the
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`identified services under Trademark Act Section 2(e)(1).
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`While the applicant has added a period to the descriptive wording PRO, adding punctuation
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`marks to a descriptive term will not ordinarily change the term into a non-descriptive one. In re Vanilla
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`Gorilla, L.P., 80 USPQ2d 1637, 1639 (TTAB 2006) (holding 3-0’S merely descriptive of car wheel rims); In
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`re Samuel Moore & Co., 195 USPQ 237, 240 (TTAB 1977) (holding SUPERHOSE! merely descriptive of
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`hydraulic hose); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253-54, 103
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`USPQ2d 1753, 1757-58 (Fed. Cir. 2012) (holding the Board failed to support findings that SNAP!, where
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`the exclamation point appeared broken in half, was not merely descriptive of medical syringes using
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`snap-off plungers); TMEP §1209.03(u).
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`The applicant argues that the applied-for mark is suggestive of the identified services and not
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`merely descriptive. A mark is suggestive if some imagination, thought, or perception is needed to
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`understand the nature of the services described in the mark; whereas a descriptive term immediately
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`and directly conveys some information about the services. See Stoncor Grp., Inc. v. Specialty Coatings,
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`Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v.
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`Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP
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`§1209.01(a). Here, the applied-for mark immediately conveys a characteristic or feature of the services
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`to the consumers, namely that the applicant is providing professional architectural design services to
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`consumers that are provided by professionals in that field. Furthermore, as noted above, the addition of
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`the period to the wording PRO does not change the commercial impression of the mark. Therefore, the
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`applied-for mark is merely descriptive of the identified services.
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`The applicant also argues that the stylization of the mark makes it so that a consumer would not
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`view the mark as merely descriptive of the identified services. However, the degree of stylization in this
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`case is not sufficiently striking, unique, or distinctive so as to create a commercial impression separate
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`and apart from the unregistrable components of the mark. See In re Sadoru Grp., Ltd., 105 USPQ2d
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`1484, 1490 (TTAB 2012); In re Guilford Mills, Inc., 33 USPQ2d 1042, 1044 (TTAB 1994).
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`Finally, the applicant argues that the mark is not descriptive because actual competitors do not
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`need to use this term to describe their services. The evidence provided by the examining attorney,
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`however, shows that the term pro or professional is commonly used in the applicant’s industry to
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`describe a characteristic or feature of the services. Competitors must have the ability to use the term
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`PRO in the architectural design field to describe to consumers that the services being provided are
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`professional level services that are being provided by professional in the field of architectural design.
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`Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a
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`descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly
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`infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d
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`811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free
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`to use descriptive language when describing their own services to the public in advertising and
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`marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
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`CONCLUSION
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`For the foregoing reasons, the refusal to register on the basis of Section 2(e)(1) of the Trademark
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`Act, 15 U.S.C. Section 1052(e)(1) on the grounds that the mark is merely descriptive of the identified
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`services should be affirmed.
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`Respectfully submitted,
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`/Seth A. Rappaport/
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`Seth A. Rappaport
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`Senior Trademark Attorney
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`Law Office 104
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`Phone: (571) 270-1508
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`Fax: (571) 270-2508
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`email: seth.rappaport@uspto.gov
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`Dayna Browne
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`Managing Attorney
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`Law Office 104