PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`85381760
`
`LAW OFFICE 117
`
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85381760
`
`WEDDING ENTERTAINMENT DIRECTOR
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`Please see the actual argument text attached within the Evidence section.
`
`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)(7 pages)
`
`evi_1-6813194202-114459142_._85381760_-
`_Response_to_19_Nov._2011_Office_Action.pdf
`
`\\TICRS\EXPORT11\IMAGEOUT11\853\817\85381760\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\853\817\85381760\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\853\817\85381760\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\853\817\85381760\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\853\817\85381760\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\853\817\85381760\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT11\IMAGEOUT11\853\817\85381760\xml4\ROA0008.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`The argument section.
`
`GOODS AND/OR SERVICES SECTION (class deleted)
`
`GOODS AND/OR SERVICES SECTION (class added) Original Class (B)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`200
`
`Indicating membership in an organization of disc jockeys, band leaders, and masters of ceremony that evaluates the knowledge, skills, and
`abilities of others for the purpose of certification and re-certification in the field of entertainment services for weddings and special events
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 11/07/2001
`
`At least as early as 11/07/2001
`
`(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)
`

`

`ADDITIONAL STATEMENTS SECTION
`
`SECTION 2(f) Claim of Acquired Distinctiveness, based on Five
`or More Years' Use
`
`The mark has become distinctive of the goods/services through the applicant's
`substantially exclusive and continuous use in commerce that the U.S. Congress may
`lawfully regulate for at least the five years immediately before the date of this
`statement.
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`/Linda M. Quigley/
`
`Linda M. Quigley
`
`Attorney of record, Virginia State Bar member
`
`(888) 405-3153
`
`01/20/2012
`
`/Linda M. Quigley/
`
`Linda M. Quigley
`
`Attorney of record, Virginia State bar member
`
`(888) 405-3153
`
`01/20/2012
`
`YES
`
`Fri Jan 20 12:08:25 EST 2012
`
`USPTO/ROA-XX.XX.XXX.XXX-2
`0120120120825378285-85381
`760-490bc4dc8cb3aa91e1c3c
`cf43fd82c76e-N/A-N/A-2012
`0120114459142858
`
`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. 85381760(cid:160)WEDDING ENTERTAINMENT DIRECTOR(Standard Characters, see
`http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85381760) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE
`Evidence in the nature of The argument section. has been attached.
`Original PDF file:
`evi_1-6813194202-114459142_._85381760_-_Response_to_19_Nov._2011_Office_Action.pdf
`Converted PDF file(s) ( 7 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`
`

`

`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant hereby deletes the following class of goods/services from the application.
`Class B for Indicating membership in an organization of disc jockeys, band leaders, and masters of ceremony that evaluates the knowledge,
`skills, and abilities of others for the purpose of certification and re-certification in the field of entertainment services for weddings and special
`events
`
`Applicant hereby adds the following class of goods/services to the application:
`New: Class 200 (Original Class: B ) for Indicating membership in an organization of disc jockeys, band leaders, and masters of ceremony that
`evaluates the knowledge, skills, and abilities of others for the purpose of certification and re-certification in the field of entertainment services for
`weddings and special events
`Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 11/07/2001 and first used in commerce at least as
`early as 11/07/2001 , and is now in use in such commerce.
`
`ADDITIONAL STATEMENTS
`SECTION 2(f) Claim of Acquired Distinctiveness, based on Five or More Years' Use
`The mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce that the
`U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
`
`SIGNATURE(S)
`Declaration Signature
`If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to
`use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or
`services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona
`fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking
`registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed
`in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the
`applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being
`hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001,
`and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly
`authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark
`sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such
`mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in
`commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the
`goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted
`unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all
`statements in the original application and this submission made on information and belief are believed to be true.
`
`Signature: /Linda M. Quigley/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/20/2012
`Signatory's Name: Linda M. Quigley
`Signatory's Position: Attorney of record, Virginia State Bar member
`Signatory's Phone Number: (888) 405-3153
`
`Response Signature
`Signature: /Linda M. Quigley/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/20/2012
`Signatory's Name: Linda M. Quigley
`Signatory's Position: Attorney of record, Virginia State bar member
`
`Signatory's Phone Number: (888) 405-3153
`
`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: 85381760
`Internet Transmission Date: Fri Jan 20 12:08:25 EST 2012
`TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2012012012082537
`8285-85381760-490bc4dc8cb3aa91e1c3ccf43f
`d82c76e-N/A-N/A-20120120114459142858
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Owner:
`
`WED Guild, LLC
`
`Serial No.:
`
`85381760
`
`Filed: January 20, 2012
`
`Trademark Atty:
`
`Paula M. Mahoney
`
`Word Mark:
`
`WEDDING ENTERTAINMENT DIRECTOR
`
`Response to November 19, 2011, Office Action
`
`This Response is filed in reply to the Office Action mailed on November 19, 2011. The
`
`Applicant respectfully submits the following response to consider along with the earlier
`
`submitted specimens. Applicant submits that the above-identified trademark application for
`
`WEDDING ENTERTAINMENT DIRECTOR is in condition for allowance.
`
`Applicant responds as follows:
`
`Potential Section 2(e)(1) Refusal — Merely Descriptive
`
`Applicant submits a preliminary response to the potential section 2(e)(1) refusal.
`
`Applicant reserves all rights, however, to provide a detailed and more descriptive response with
`
`supporting materials, if Examining Attorney Paula Mahoney raises a Section 2(e)(1) refusal in a
`
`subsequent Office Action.
`
`Preliminary Response with Reservation of Rights
`
`Attorney Mahoney asserts that WEDDING ENTERTAINMENT DIRECTOR “merely
`
`describes the features and purpose of app1icant’s services.” The determination that Applicant’s
`
`mark is merely descriptive arises from a fundamental misunderstanding of Applicant’s
`
`certification. As noted by Attorney Mahoney, “[t]he determination of whether a mark is merely
`
`descriptive is considered in relation to the identified good and/or services, not in the abstract.”
`
`

`

`In re Abcor Dev. Corp, 588 F.2d 811, 814, 200 U.S.P.Q. 215, 218 (C.C.P.A. 1978); TMEP
`
`§1209.01(b); see eg., In re Polo Int’l Inc., 51 USPQd 1061 (T.T.A.B. 1999)(finding DOC in
`
`DOC-Control would be understood to refer to the “documents” managed by applicant’s software,
`
`not “doctor” as shown in dictionary definition); In re Digital Research Inc, 4 USQP2d 1242
`
`(T.T.A.B. 1987) (finding CONCURRENT PC—DOS merely descriptive of “computer programs
`
`recorded on disk” Where relevant trade used the denomination “concurrent” as a descriptor of a
`
`particular type of operating system). Additionally, Whether a trademark is merely descriptive is
`
`determined by
`
`the context in which it is being used on or in connection with the services, and the
`possible significance that the term would have to the average purchaser of the
`services because of the manner of its use; that a term may have other meanings in
`different contexts is not controlling.
`
`In re Bright-Cresr, Ltd, 204 USPQ 591, 593 (TTAB 1979).
`
`The determination of whether WEDDING ENTERTAINMENT DIRECTOR is merely
`
`descriptive, therefore, must be considered in relation to the Applicant’s identified services and
`
`Within the context it is being used. The Applicant’s services are “[t]o indicate membership in an
`
`organization of disc jockeys, band leaders, and masters of ceremony that evaluates the
`
`knowledge, skills, and abilities of others for the purpose of certification and re-certification in the
`
`field of entertainment services for weddings and special events.” Attorney Mahoney provides
`
`that the definitions of the component parts of Applicant’s mark are as follows: “A DIRECTOR is
`
`on(sic) that supervises, controls or manages. The term ENTERTAINMENT refers to something
`
`that amuses or pleases. The term WEDDING is defined as a ceremony or celebration of a
`
`marriage.”
`
`Although these definitions suggest a characteristic of services offered under the mark,
`
`they do not immediately describe the nature of the services performed under the mark
`
`

`

`WEDDING ENTERTAINMENT DIRECTOR. Additionally, the connection becomes even
`
`more tenuous when viewed in the context the mark is being used, as a certification of special
`
`knowledge, skills, and ability. It takes some additional perception to understand the nature of the
`
`services.
`
`In evaluating the mark MARGARITA COMPANY, the Trademark Trial and Appeal
`
`Board (TTAB) held that the mark “as used in connection with restaurant and/or bar services,
`
`does not readily and immediately evoke an impression and understanding of restaurant or bar
`
`services. ” In re Fazzari Restaurant Group LLC, Serial No. 77109197 (TTAB 2010). In the case
`
`at hand, first, the services provided under the mark clearly include all special events and are not
`
`limited to weddings. Second, the services relate to more than merely providing entertainment.
`
`The certification requires a member who uses the mark to provide services with the requisite
`
`skill, knowledge, and ability. Finally, the description of services does not mention the direction
`
`of anything. The use of DIRECTOR in the mark is fanciful and suggestive, but does not
`
`describe what the members do. “[I]f a mark is not merely descriptive, because some
`
`imagination, thought, and perception are required to arrive at the qualities or characteristics of
`
`the goods, it may still qualify for registration.” In re Steelbuildingcom, 415 F.3d 1293, 1297
`
`(Fed. Cir. 2005). See In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed. Cir. 2001).
`
`Even if each individual word is descriptive of Applicant’s services, which Applicant
`
`argues they are not, the Examining Attorney fails to note that the three words can become
`
`something more when used in conjunction with each other. Common words may be descriptive
`
`when standing alone, but when used together in a composite mark, they may become a valid
`
`trademark. See Concurrent Technologies Inc. V. Concurrent Technologies Corp, 12 USPQ2d
`
`1054, 1057 (TTAB 1989). Moreover, “[w]hen two or more merely descriptive terms are
`
`

`

`combined, the determination of whether the composite mark also has a merely descriptive
`
`significance turns on the question of whether the combination of terms evokes a new and unique
`
`commercial impression.” In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008); In re Sears
`
`Brands, LLC, Serial No. 77558337 (TTAB 2010).
`
`In reviewing the Examining Attomey’s 2(e) refusal of the mark MEGA—SAMPLER, the
`
`Trademark Trial and Appeal Board found that MEGA-SAMPLER does not immediately convey
`
`knowledge about a significant characteristic of the identified goods, and hence, must be held
`
`registrable.” In re Cigars International, Inc, Serial No. 77262426. Although not precedential,
`
`this case is persuasive. The TTAB in this case found that it “agree[d] with applicant that this
`
`combined term seems too ambiguous to cause consumers to associate immediately that phrase
`
`with a feature or characteristic of appellant’s cigars.” Id. Moreover, the Board found that “[t]he
`
`Trademark Examining Attorney has failed to provide probative evidence that applicant’s
`
`competitors need to use this term in order to compete with applicant.” Id.
`
`In another persuasive but non—precedential opinion, the Trademark Trial and Appeal
`
`Board overturned an Examining Attorney’s refiisal to register MARGIN PROBE as merely
`
`descriptive of cancer detection using a portable probe. The TTAB found that:
`
`While the composite term suggests the function and characteristics of applicant’s medical
`device, we are also struck by the vagueness or incompleteness of the combined term.
`That is, knowing well the descriptive meanings of each of the words in the context of
`these goods, it has understandably proven challenging for the Trademark Examining
`Attorney to create congruity between the bare juxtaposition of these two words and the
`function or characteristics of the involved goods. .
`.
`. But we find that given the syntax of
`the combination of these two words, the term does not directly tell consumers a
`characteristic or function of the goods—that is, ‘it possesses redeeming features which
`raise doubt’ about refusing it registration under the terms of Section 2(e)(1).
`
`In re Dune Medical Devices Ltd, Serial No. 77377330 (TTAB 2010).
`
`

`

`Like MEGA SAMPLER and MARGIN PROBE, Applicant’s mark does not immediately
`
`convey knowledge about a significant characteristic of the identified services, because the phrase
`
`WEDDING ENTERTAINMENT DIRECTOR can create various meanings in the minds of
`
`consumers. None of those meanings immediately tell consumers what Applicant’s services are
`
`or that Applicant’s services include special knowledge, skill, and ability. Moreover, the
`
`Examining Attorney has not noted any need Applicant’s competitors have to use WEDDING
`
`ENTERTAINMENT DIRECTOR to compete.
`
`Finally, Examining Attorney Mahoney included multiple registrations that disclaimed the
`
`individual words within Applicant’s mark. As stated previously, a combination of terms can
`
`evoke a new and unique commercial impression, and disclaimers of the individual words are
`
`irrelevant. Also, whether other applicants chose to disclaim, or under very specific
`
`circumstances other examining attorneys required a disclaimer, is unique to the circumstances of
`
`those registrations and should not be binding on Applicant. “It is well established that we must
`
`determine each case on its own record and prior decisions by examining attorneys are not
`
`binding on the Board.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
`
`2001).
`
`Doubt Should Be Resolved in Favor of the Applicant
`
`Questions of descriptiveness are better decided in an opposition proceeding, and doubts
`
`should be resolved in favor of the Applicant. In re Merrill Lynch, Pierce, Fenner and Smith,
`
`Inc., 4 U.S.P.Q.2d 1141, 1144 (Fed. Cir. 1987); In re Distribution Codes, Inc., 199 U.S.P.Q. 508,
`
`511 (T.T.A.B. 1978). In this case, WEDDING ENTERTAINMENT DIRECTOR is at least
`
`potentially suggestive, so the mark should be allowed to proceed to publication where any
`
`

`

`member of the public who considers himself injured by registration of this mark will have an
`
`opportunity to come forward.
`
`Mark Has Acquired Distinctiveness
`
`Although Applicant disputes that the mark is merely descriptive under section 2(e)(1),
`
`even if it was, Applicant argues in the alternative that WEDDING ENTERTAINMENT
`
`DIRECTOR has acquired distinctiveness. Section 2(f) provides that an Applicant may establish
`
`that the mark is entitled to registration by showing the mark has acquired distinctiveness. 15
`
`U.S.C. §1052 (f). See Two Pesos, Inc. 12. Taco Cabana, Inc., 505 U.S. 763, 769, 120 L. Ed. 2d
`
`615, 112 S. Ct. 2753 (1992); In re Steelbuildingcom, 415 F.3d 1293, 1297 (Fed. Cir. 2005). An
`
`argument in the alternative is not a concession on the issue of merely descriptive. In re E S
`
`Robbins Corp, 30 USPQ2d 1540 (TTAB 1992); In re Professional Learning Centers, Inc., 230
`
`USPQ 70, 71 n2 (TTAB 1986). Section 2(f) also provides that “proof of substantially and
`
`continuous use .
`
`.
`
`. as a mark by the Applicant in commerce for the five years before the date on
`
`which the claim of distinctiveness is made” may be considered prima facie evidence that the
`
`mark has become distinctive. 15 U.S.C. §1052
`
`Applicant has made longstanding,
`
`substantially exclusive, and continuous use of the mark WEDDING ENTERTAINMENT
`
`DIRECTOR as a certification of only those professionals who provide services according to the
`
`certification criteria submitted with the application. Such use has been for more than the five (5)
`
`years necessary for a prima facie case of acquired distinctiveness.
`
`WEDDING ENTERTAINMENT DIRECTOR has been used in commerce for more than
`
`five years as exhibited by specimens from Applicanfs Website. The attached specimens in
`
`Appendix A include web pages from the Internet Archive Wayback Machine dated May 4, 2006,
`
`March 14, 2007, August 7, 2007, July 2, 2008, April 23, 2009, January 16, 2010, and February 7,
`
`

`

`2011, and the home page from the current page dated January 16, 2012. Note that Applicant
`
`used “TM” to indicate it was claiming trademark rights in the mark as far back as May 4, 2006.
`
`All of these examples clearly show the mark WEDDING ENTERTAINMENT DIRECTOR
`
`being used in commerce to certify special knowledge, skills, and abilities of others in the field of
`
`entertainment services for weddings and special events, and the dates demonstrate that use has
`
`been continuous and for more than five years.
`
`Other Considerations
`
`Applicant respectfully notes that its adoption of WEDDING ENTERTAINMENT
`
`DIRECTOR as a certification mark is for the protection of the public. Applicant is trying to
`
`ensure that consumers who are choosing professionals to work at their special events meet a
`
`minimum standard of competence and knowledge.
`
`Classification
`
`Applicant amends its application to classify the services in International Class 200 as
`
`requested by the Examining Attorney.
`
`CONCLUSION
`
`Applicant respectfully submits in good faith that all refusals, rejections, and/or objections
`
`have been overcome and that the applied for mark is in condition for allowance.
`
`Respectfully Submitted,
`
`;‘2_.\%{-J TL
`Linda M. Quigley
`The Matthews Law Group, P.L.L.C.
`4508 South Laburnum Ave., Suite 100
`Richmond, VA 23231
`Office: (888) 405-3153
`Fax: (888) 520-5304
`Email:
`linda@mlglawyers.com
`
`