PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`86329569
`
`LAW OFFICE 107
`
`http://tsdr.uspto.gov/img/86329569/large
`
`TOT YEARS
`
`YES
`
`YES
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`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)(5 pages)
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095314-20150423152756169617_._TOT_YEARS_ROA_86329569.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\295\86329569\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\295\86329569\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\295\86329569\xml5\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\295\86329569\xml5\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\295\86329569\xml5\ROA0006.JPG
`
`No claim is made to the exclusive right to use TOT apart from the mark as shown.
`
`/tdunlap/
`
`TOM DUNLAP
`
`ATTORNEY OF RECORD
`
`703.777.7319
`
`04/23/2015
`
`YES
`
`Thu Apr 23 15:31:46 EDT 2015
`
`USPTO/ROA-XX.XXX.XX.XX-20
`150423153146257112-863295
`69-530379c8f1e1c140b1bdbf
`2f18f4d67d932dde9bf3bea0b
`b742cd364d63284357b-N/A-N
`
`(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)
`

`

`/A-20150423152756169617
`
`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. 86329569(cid:160)TOT YEARS(Standard Characters, see http://tsdr.uspto.gov/img/86329569/large) has been amended as follows:
`
`EVIDENCE
`
`Original PDF file:
`evi_701095314-20150423152756169617_._TOT_YEARS_ROA_86329569.pdf
`Converted PDF file(s) ( 5 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use TOT apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /tdunlap/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 04/23/2015
`Signatory's Name: TOM DUNLAP
`Signatory's Position: ATTORNEY OF RECORD
`
`Signatory's Phone Number: 703.777.7319
`
`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: 86329569
`Internet Transmission Date: Thu Apr 23 15:31:46 EDT 2015
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20150423153146257
`112-86329569-530379c8f1e1c140b1bdbf2f18f
`4d67d932dde9bf3bea0bb742cd364d63284357b-
`N/A-N/A-20150423152756169617
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`
`Filed:
`
`Tot Years
`86329569
`
`October 24, 2014
`
`Trademark Atty:
`TradeMark:
`
`Julie Thomas Veppumthara
`TOT YEARS
`
`RESPONSE TO OCTOBER 24, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on October 24, 2014. The
`
`Applicant respectfully submits the following response. Applicant submits that the above-
`
`identified trademark application for TOT YEARS is in condition for allowance to publication.
`
`DISCLAIMER
`
`The Applicant submits the following disclaimer:
`
`No claim is made to the exclusive right to use “TOT” as to Class 028 apart from the
`
`mark as shown.
`
`POTENTIAL SECTION 2(e)(1) REFUSAL — MARK IS MERELY DESCRIPTIVE
`
`Applicant submits a preliminary response to the potential section 2(e)(l) refusal; however,
`
`Applicant reserves all rights to provide a detailed and more descriptive response if Examining
`
`Attorney Julie Thomas Veppumthara raises a Section 2(e)(l) refusal in a subsequent Office
`
`Action.
`
`

`

`APPLICANT’S MARK IS AT MOST SUGGESTIVE
`
`Applicant respectf11lly submits that the mark TOT YEARS for cups, plates, and training cups
`
`for babies and children is at most suggestive and is not merely descriptive of Applicant’s
`
`goods. It is therefore deserving of registration on the Principal Register.
`
`A mark is merely descriptive only if it “immediately describes” the Applicant’s goods or
`
`services. In re Econoheat Inc. 218 U.S. P. Q. 381, 383 (TTAB 1983)(emphasis in original).
`
`For a term to be classified as “merely descriptive,” the name must “immediately tell a potential
`
`customer what to expect in sum total of these concepts.” Holiday Inns, Inc. V. Monolith Enter,
`
`21 U.S. P.Q. 949, 952 (TTAB 1981). Ifthe term used as a mark provides vague or indirect
`
`information about the goods or services, then the term is used in a “suggestive” manner. See J.
`
`McCarthy, McCarthy on Trademarks and Unfair Competition §l 1.19, at 11-26 (4th ed. 2002).
`
`To be deemed merely descriptive, a mark must directly provide the consumer with reasonably
`
`accurate knowledge of the characteristics of the product or service in connection with which it
`
`is used. If the information about the product or service is indirect or Vague, then the mark is
`
`considered suggestive, not descriptive. L1. See also Glamorene Products Corp. v. Boyle-
`
`Midway Inc., 188 U.S.P.Q. 145 (S.D.N.Y. 1975) (finding that the mark SPRAY ‘N VAC is
`
`not merely descriptive of a no scrub rug cleaner and stating “a mark is not merely descriptive
`
`unless descriptiveness is its principle significance. A mark is not descriptive if it merely
`
`suggests the nature or class of the product on which it is used”.)
`
`

`

`Applicant’s mark does not immediately and directly describe the products provided under the
`
`mark, thus, Applicant submits that its mark is “suggestive” and capable of registration on the
`
`Principal Register. Applicant’s mark does not immediately or directly tell the consumer what
`
`to expect. The mark does not immediately convey the precise nature of the goods or exactly
`
`what is being offered by Applicant. In this case, while Applicant’s mark TOT YEARS may be
`
`suggestive in that it appeals to toddlers it is not merely descriptive. The term TOT refers to a
`
`broad class, toddlers and potential goods and services that could appeal toward this class of
`
`individuals. The term TOT does not tell consumers that the goods are cups, plates, and training
`
`cups. The terms YEARS denotes a period of time, such as, a lunar year or period of 12
`
`calendar months. The combination of TOT and YEARS does not call to mind any particular
`
`product. The terms “tot years” could evoke thoughts of a pre—school, day care, high chairs,
`
`play sets or any item catered towards toddlers. Given the various goods or services to which
`
`the mark could refer, it is evident the mark is not merely descriptive of Applicant’s goods. The
`
`term TOT, when juxtaposed with the term YEARS, does not merely describe Applicant’s
`
`goods, namely, cups, plates, and training cups. The consumer must engage in a multi-stage
`
`reasoning process and exercise imagination to associate the mark with the goods it identifies.
`
`EXISTING REGISTERED MARKS INCORPORATING USAGE OF “TOT”
`
`There are a number of registered and pending registration marks incorporating the term TOT
`
`for a variety of goods and services. Examples of registered and pending registration marks
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`incorporating the term TOT include:
`
`Registration No. 4379687: TOTSTUFF for “Playground equipment, namely, crawl tubes,
`
`

`

`panel mazes, talk tubes, play tables, activity and decorative panels, large toy stationary
`automobiles, climbing units, large toy musical instruments, swings and plastic seats in the
`nature of stool—like platforms set into the ground on which a toddler can sit or climb.”
`
`Registration No. 4575797: TOTTURF for “Installation and maintenance of playground
`surfaces.”
`
`Registration No. 4618678: TUTUS FOR TOTS for “Dance instruction for children.”
`
`Registration No. 4654178: HEALTHY TOTS for “Medical services, namely, nursing services
`for pregnant women.”
`
`Registration No. 4719127: STRONGTOTS for “On-line journals, namely, blogs featuring
`information about child development and child education; publishing of reviews of goods and
`services of others in the field of child development and child education; online electronic
`publishing of text of others featuring information about child development and child
`education; providing online, non-downloadable publications in the nature of texts in the field
`of child development and child education.”
`
`Serial No. 86288290: TOTGEAR for “Backpacks to carry small children, infant carriers worn
`on the body; slings for carrying infants.” Published for opposition on April 15, 2015.
`
`As the foregoing registered and pending registration marks demonstrate, marks which contain
`
`the term TOT are capable of registration. Much like these marks are not merely descriptive of
`
`their goods, Applicant’s mark is not descriptive. Thus, for the same reason that each of this
`
`marks is registrable, Applicant’s mark TOT YEARS should likewise be deemed capable of
`
`registration.
`
`CONCLUSION
`
`To the extent the Examining Attorney finds Applicant's TOT YEARS mark to fall within the
`
`"gray area“ between obviously descriptive and suggestive marks, all doubts must be resolved
`
`in Applicant's favor. In re Conductive Systems, Inc, 220 U.S.P.Q. 84, 86 (TTAB 1983) (where
`
`combination of two merely descriptive terms creates a mark that might be either descriptive or
`
`

`

`suggestive, doubts are to be resolved in favor of applicants; refusal reversed); In re Pennwalt
`
`Corp, 173 U.S.P.Q. 317, 319 (TTAB 1972) (DRI—FOOT not merely descriptive for
`
`antiperspirant foot deodorant; doubts to be resolved in favor of publication; refusal reversed).
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`Accordingly, the Examining Attorney should withdraw the refusal under Section 2(e)(l).
`
`Respectfully submitted,
`/Keisha M. Hardley/
`Keisha M. Hardley (MD Bar)
`Attorney of Record for the Applicant
`
`