Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`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
`
`88010246
`
`LAW OFFICE 110
`
`https://tmng-al.uspto.gov/resting2/api/img/88010246/large
`
`SEGWAY DRIFT
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`I.
`
`The Refusal Based on Reg. No. 4329613 Should be Withdrawn or a Decision should be Deferred
`
`With respect to Reg. No. 4329613, Applicant does not believe there is any likelihood of confusion because, among other reasons, Reg. No.
`
`4329613 covers some type of “overlying platform” apparatus for in-line skates and Applicant is not seeking registration of its Mark in connection
`
`with goods or services that are closely related enough to an “overlying platform” apparatus to cause confusion.  Moreover, each trademark owner
`
`appears to operate in distinct fields and consumers are unlikely to be confused into believing there is a relationship between Applicant and the
`
`owner of Reg. No. 4329613. 
`
`In the alternative, Applicant notes that the Cited Mark is due for its requisite Section 8 Declaration of Use on April 30, 2019 and as of the
`
`date of filing this response, Registrant has failed to file such.  Accordingly, to the extent the Examiner maintains the refusal after reviewing
`
`Applicant's preliminary response, Applicant requests suspension of its Application pending a determination of whether the registrant timely files, and
`
`the USPTO accepts, the §8 or affidavit and/or whether the registration is renewed during the grace period.  See TMEP §716.02(e).  Applicant
`
`reserves its right to present additional arguments to the refusal should Registrant maintain Reg. No. 4329613.
`
`II. The Disclaimer Requirement for “DRIFT” Should be Withdrawn
`
`The Examining Attorney has requested Applicant disclaim “DRIFT” from its Mark, because “DRIFT” purportedly describes an ingredient,
`
`quality, characteristic, function, feature, purpose, or use of Applicant’s goods.   Applicant respectfully requests the Examining Attorney to re-evaluate
`
`the disclaimer request, and notes Applicant’s Mark is, as a whole, at least suggestive, rather than merely descriptive.   More particularly, and as
`
`further detailed below, Applicant’s product is not a “drift skate” as that term may be commonly understood.
`
`  Accordingly, the disclaimer of
`
`“DRIFT” is inappropriate and the Mark should be registrerable as is without entry of a disclaimer.
`
`a.
`
`“DRIFT” Does Not Describe Applicant’s Goods with the Immediacy and Particularly Required to Render Such Disclaimable.
`
`“DRIFT” is not merely descriptive of Applicant’s goods.
`
`  A term is merely descriptive only if it “immediately describes” the Applicant’s
`
`goods and services. In re Econoheat, Inc., 218 U.S.P.Q. 381, 383 (TTAB 1983) (SOLAR QUARTZ held suggestive, not descriptive, of infrared
`
`

`

`heaters) (emphasis in original).  A mark is not merely descriptive simply because a person encountering a mark might recognize a suggestion
`
`regarding an aspect of the applicant’s goods and services. In re Nalco Chem. Co., 228 U.S.P.Q. 972, 973 (TTAB 1986) (VERI-CLEAN held
`
`suggestive, not merely descriptive, of Applicant’s cleaning additives); In re George Weston, Ltd., 228 U.S.P.Q. 57, 58 (TTAB 1985) (SPEEDI BAKE
`
`does not convey an “immediate idea” of the ingredients, qualities or characteristics of dough that quickly bakes into bread); In re TMS Corp. of the
`
`Americas, 200 U.S.P.Q. 57, 59 (TTAB 1978).  To be deemed merely descriptive and thus disclaimable, a mark must directly communicate 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. See J. McCarthy, McCarthy on Trademarks and Unfair Competition §11.19, at 11-26 (4th ed.
`
`1998).  Applying the legal principles to Applicant’s goods, Applicant's Mark is not descriptive.
`
`The Mark’s incorporation of “DRIFT” fails to describe the goods for which registration is sought with the immediacy and particularity
`
`required to find a term descriptive and thus disclaimable.  A term is not merely descriptive simply because it imparts information about a quality of
`
`the underlying goods.  See In re DC Comics, Inc., 689 F.2d 1042 (C.C.P.A. 1982).  Instead, the test for whether components of a mark are
`
`descriptive is whether such “conveys information about a significant feature or characteristic of the applicant’s goods with the immediacy and
`
`particularity required by the Trademark Act.”   In re Paul Leonhardt, 109 U.S.P.Q.2d 2091, 2092 (T.T.A.B. 2008).  In the instant case, the Examiner
`
`has identified several references to third-party offerings for a roller skate part purportedly called a “drift skate plate.”   Applicant is unclear as to the
`
`exact nature of this part as such is not incorporated into or used in its own products.  However, based on a review of the Examiner’s evidence, this
`
`part appears to allow a user to convert a traditional roller skate with wheels facing in the direction of the wearer to a traditional roller skate with
`
`wheels facing perpendicular to the wearer.  This appears to allow the wearer to orient their body to be perpendicular to the direction of movement.
`
`Applicant’s goods would be unable to accommodate this part.   In fact, Applicant’s goods can only be safely operated with the wearer’s
`
`body facing in the direction of movement.  Attached as Exhibit 1 is a print-out of Applicant’s website describing its goods.   Applicant’s goods relate
`
`to an innovative self-balancing electronic transporters.  A “drift skate plate” could not reasonably be incorporated into any of the goods Applicant
`
`plans to provide under SEGWAY DRIFT. 
`
`A leading test for determining whether a mark is suggestive– as opposed to merely descriptive– is whether "[a] term… requires imagination,
`
`thought and perception to reach a conclusion as to the nature of goods."  Stix Prods., Inc. v. United Merchants & Mfrs. Inc., 295 F. Supp. 479, 488
`
`(S.D.N.Y. 1968).  Put another way, “if the mental leap between the word and the product's attributes is not almost instantaneous, this strongly
`
`indicates suggestiveness, not direct descriptiveness.”  2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:67 (5th ed.
`
`2017) emphasis added.  The Board has further clarified that even if a mark suggests or hints at the nature of an applicant’s goods or services, if
`
`one must engage in mental gymnastics and extrapolation, the mark does not merely describe the applicant’s services.   See Airco, Inc. v. Air
`
`Products & Chemicals, Inc., 196 U.S.P.Q. 832 (TTAB 1977).　
`
`The word “DRIFT” considered in the context of the Mark as a whole is simply too vague to connote any specific, significant quality or
`
`characteristic of Applicant’s goods and services to consumers.
`
`  In fact, the word drift is commonly understood to have multiple meanings including,
`
`for example:
`
`the act of driving something along;
`
`the flow or velocity of the current of a river or ocean stream;
`
`a general underlying design or tendency;
`
`the underling meaning, import, or purport of what is poken or written [as in ‘gist’];
`
`the motion or action of drifting, especially  spatially and usually under external influence; and
`
`a gradual shift in position;
`
`an aimless course.
`
`See Meriam Webster Online Dictionary Evidence attached as an Exhibit 2.
`
`

`

`The above common definitions clarify that the word itself has multiple connotations.  These multiple meanings require the consumer to engage in a
`
`thought process to determine how “drift” might apply to or what meaning is intended by the word DRIFT as applied to the goods.    
`
`Moreover, DRIFT does not directly describe Applicant’s goods such that a consumer encountering the Mark would gain any type of accurate or
`
`distinct knowledge of the characteristics of Applicant's self-balancing electronic transporters.  To one who is not familiar with Applicant’s self-
`
`balancing electronic transporters, Applicant’s Mark would– at best– convey only a suggestion as to the general nature of these goods—namely that
`
`they might help a user to “drift” in a direction, or that “drift” refers to a velocity or flow that occurs when a user wears the product, or that the user is
`
`able to conduct or drive something along by virtue of using the product.  Again, determining the meaning of the word requires the consumer to
`
`engage in multiple various mental leaps, imagination and mental pauses to reach a conclusion about nature of Applicant’s goods. Because
`
`extrapolation and mental gymnastics are necessary to arrive at an understanding of Applicant's product, the incorporation of DRIFT in Applicant’s
`
`Mark is at most suggestive rather than merely descriptive.  Accordingly, a consumer encountering the word “DRIFT” must think about the
`
`relationship between the meaning of “DRIFT” and Applicant’s goods to determine the nature of the relationship between the two.
`
`  This multi-step
`
`thought process is the very essence of suggestiveness and not descriptiveness.   
`
`b. Any Doubts to Be Resolved in Favor of Applicant.
`
`When considering whether a mark is suggestive or merely descriptive, to the extent that there is some doubt, the doubt must be resolved in
`
`the Applicant’s favor by finding the proposed mark to be suggestive.   In re Conductive Systems, Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983); In re the
`
`Rank Organisation Ltd., 222 U.S.P.Q. 324, 326 (T.T.A.B. 1984); In re The Nobele Company, 225 U.S.P.Q. 749, 750 (T.T.A.B. 1980).  Resolving
`
`such doubts in favor of finding a mark suggestive is soundly based on the recognition that anyone who believes that they would be damaged by the
`
`registration will have an opportunity to oppose it.  Given the, at best, nebulous connection between a “skate drift plate” and SEGWAY DRIFT, there
`
`are sufficient doubts as to whether the Mark is descriptive of a significant feature of Applicant’s goods with the immediacy and particularity required
`
`by the Trademark Act.  Accordingly, these doubts should be resolved in Applicant’s favor and the request for disclaimer of DRIFT should be
`
`withdrawn.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (4 pages)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (10 pages)
`
`evi_64124201218-20190416155914428695_._Exhibit_1_SEGWAY_DRIFT.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0005.JPG
`
`evi_64124201218-20190416155914428695_._Exhibit_2_DRIFT_Definitions.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0008.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0009.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0010.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0011.JPG
`
` 
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0012.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0013.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0014.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\880\102\88010246\xml4\ROA0015.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Exhibit 1- Printout of Applicant's website; Exhibit 2- "drift" definitions
`
`GOODS AND/OR SERVICES SECTION (012)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`012
`
`Vehicles; electric vehicle; locomotives; bodyworks; bicycles; scooters (vehicles); tires for vehicles; boats; vehicles with wheels; joysticks for
`vehicles; motorized, self-propelled, wheeled personal mobility and transportation devices, namely, mobility scooters, utility carts, and chariots;
`electric three-wheeled mobility and transportation devices, namely, motorized scooters, motorized personal mobility scooters, and motorized
`patrollers; three-wheeled motor vehicles; two-wheeled motor vehicles; robotic transport vehicles; electric bicycles; motorized bicycles; carts;
`go-carts; beach vehicles, namely, beach carts; motorized vehicles, namely, recreational carts, namely, motor racing cars, and go-carts;
`motorized carts for transporting and storing recreational and sports equipment; handling carts; all-terrain vehicles; trolleys; two-wheeled
`trolleys; shopping trollies; hand cars in the nature of hand-propelled wheeled vehicles; dollies; hand trucks; shopping trolleys; wheeled
`trolleys; motorized luggage carts; motorized carts for carrying goods and luggage; food carts, motorized; motorized golf carts; motorized, self-
`balancing dollies; motorized, self-balancing hand carts; motorized, self-balancing trollies vehicle wheel balancer; parts and accessories thereof
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (012)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`012
`
`Vehicles; electrically powered motor vehicles; electric vehicle; locomotives; bodyworks for motor vehicles; bodyworks; bicycles; motor
`scooters; scooters (vehicles); tires for vehicles; boats; joysticks for land vehicles; vehicles with wheels; motorized, self-propelled, wheeled
`personal mobility and transportation devices, namely, mobility scooters, utility carts, and chariots; joysticks for vehicles; electric three-wheeled
`mobility and transportation devices, namely, motorized scooters, motorized personal mobility scooters, and motorized patrollers; three-
`wheeled motor vehicles; two-wheeled motor vehicles; robotic transport vehicles; electric bicycles; motorized bicycles; carts; go-carts; beach
`vehicles, namely, beach carts; motorized vehicles, namely, recreational carts, namely, motor racing cars, and go-carts; motorized carts for
`transporting and storing recreational and sports equipment; handling carts; all-terrain vehicles; trolleys; two-wheeled trolleys; shopping trollies;
`hand cars in the nature of hand-propelled wheeled vehicles; dollies; hand trucks; shopping trolleys; wheeled trolleys; motorized luggage carts;
`motorized carts for carrying goods and luggage; food carts, motorized; motorized golf carts; motorized, self-balancing dollies; motorized, self-
`balancing hand carts; motorized, self-balancing trollies vehicle wheel balancer; parts and fittings therefor.; parts and accessories thereof
`
`FINAL DESCRIPTION
`
`electrically powered motor vehicles; locomotives; bodyworks for motor vehicles; bicycles; motor scooters; tires for vehicles; boats; joysticks
`for land vehicles; motorized, self-propelled, wheeled personal mobility and transportation devices, namely, mobility scooters, utility carts, and
`chariots; electric three-wheeled mobility and transportation devices, namely, motorized scooters, motorized personal mobility scooters, and
`motorized patrollers; three-wheeled motor vehicles; two-wheeled motor vehicles; robotic transport vehicles; electric bicycles; motorized
`bicycles; carts; go-carts; beach vehicles, namely, beach carts; motorized vehicles, namely, recreational carts, namely, motor racing cars, and
`go-carts; motorized carts for transporting and storing recreational and sports equipment; handling carts; all-terrain vehicles; trolleys; two-
`wheeled trolleys; shopping trollies; hand cars in the nature of hand-propelled wheeled vehicles; dollies; hand trucks; shopping trolleys;
`wheeled trolleys; motorized luggage carts; motorized carts for carrying goods and luggage; food carts, motorized; motorized golf carts;
`motorized, self-balancing dollies; motorized, self-balancing hand carts; motorized, self-balancing trollies vehicle wheel balancer; parts and
`fittings therefor.
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (028)(current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`028
`
`Toys; toy robots; toy vehicles; hang gliders; gymnastics equipment; skateboards; ski veneer; elbow pads (sports); knee pads (sports); roller
`skates; snow shoes; toy cars; parts and accessories thereof
`
`       
`       
`       
`       
`

`

`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (028)(proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`028
`
`Toys; toy robots; toy vehicles; hang gliders; skateboards; gymnastics equipment; wood veneer skis; elbow pads for athletic use; ski veneer;
`knee pads for athletic use; elbow pads (sports); roller skates; knee pads (sports); snow shoes; toy cars; parts and fittings therefor; parts and
`accessories thereof
`
`FINAL DESCRIPTION
`
`toy robots; toy vehicles; hang gliders; skateboards; wood veneer skis; elbow pads for athletic use; knee pads for athletic use; roller skates;
`snow shoes; toy cars; parts and fittings therefor
`
`FILING BASIS
`
`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
`
`Section 1(b)
`
`/Deborah J Peckham/
`
`Deborah J. Peckham
`
`Attorney of record, Massachusetts bar member
`
`617-345-3000
`
`04/17/2019
`
`YES
`
`Wed Apr 17 11:34:30 EDT 2019
`
`USPTO/ROA-XX.XXX.XXX.XXX-
`20190417113430231020-8801
`0246-620ee4e9981e8f9bd3fe
`72b31be89921efd6e2e52312c
`3667bc702697db08e7ce9-N/A
`-N/A-20190416155914428695
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 88010246 SEGWAY DRIFT(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/88010246/large) has
`been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`I.
`
`The Refusal Based on Reg. No. 4329613 Should be Withdrawn or a Decision should be Deferred
`
`With respect to Reg. No. 4329613, Applicant does not believe there is any likelihood of confusion because, among other reasons, Reg. No.
`
`4329613 covers some type of “overlying platform” apparatus for in-line skates and Applicant is not seeking registration of its Mark in connection with
`
`

`

`goods or services that are closely related enough to an “overlying platform” apparatus to cause confusion.  Moreover, each trademark owner appears
`
`to operate in distinct fields and consumers are unlikely to be confused into believing there is a relationship between Applicant and the owner of Reg.
`
`No. 4329613. 
`
`In the alternative, Applicant notes that the Cited Mark is due for its requisite Section 8 Declaration of Use on April 30, 2019 and as of the date
`
`of filing this response, Registrant has failed to file such.  Accordingly, to the extent the Examiner maintains the refusal after reviewing Applicant's
`
`preliminary response, Applicant requests suspension of its Application pending a determination of whether the registrant timely files, and the USPTO
`
`accepts, the §8 or affidavit and/or whether the registration is renewed during the grace period.  See TMEP §716.02(e).  Applicant reserves its right to
`
`present additional arguments to the refusal should Registrant maintain Reg. No. 4329613.
`
`II. The Disclaimer Requirement for “DRIFT” Should be Withdrawn
`
`The Examining Attorney has requested Applicant disclaim “DRIFT” from its Mark, because “DRIFT” purportedly describes an ingredient,
`
`quality, characteristic, function, feature, purpose, or use of Applicant’s goods.   Applicant respectfully requests the Examining Attorney to re-evaluate
`
`the disclaimer request, and notes Applicant’s Mark is, as a whole, at least suggestive, rather than merely descriptive.   More particularly, and as further
`
`detailed below, Applicant’s product is not a “drift skate” as that term may be commonly understood.
`
`  Accordingly, the disclaimer of “DRIFT” is
`
`inappropriate and the Mark should be registrerable as is without entry of a disclaimer.
`
`a.
`
`“DRIFT” Does Not Describe Applicant’s Goods with the Immediacy and Particularly Required to Render Such Disclaimable.
`
`“DRIFT” is not merely descriptive of Applicant’s goods.
`
`  A term is merely descriptive only if it “immediately describes” the Applicant’s goods
`
`and services. In re Econoheat, Inc., 218 U.S.P.Q. 381, 383 (TTAB 1983) (SOLAR QUARTZ held suggestive, not descriptive, of infrared heaters)
`
`(emphasis in original).  A mark is not merely descriptive simply because a person encountering a mark might recognize a suggestion regarding an
`
`aspect of the applicant’s goods and services. In re Nalco Chem. Co., 228 U.S.P.Q. 972, 973 (TTAB 1986) (VERI-CLEAN held suggestive, not merely
`
`descriptive, of Applicant’s cleaning additives); In re George Weston, Ltd., 228 U.S.P.Q. 57, 58 (TTAB 1985) (SPEEDI BAKE does not convey an
`
`“immediate idea” of the ingredients, qualities or characteristics of dough that quickly bakes into bread); In re TMS Corp. of the Americas, 200
`
`U.S.P.Q. 57, 59 (TTAB 1978).  To be deemed merely descriptive and thus disclaimable, a mark must directly communicate 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. See J. McCarthy, McCarthy on Trademarks and Unfair Competition §11.19, at 11-26 (4th ed. 1998).  Applying the legal
`
`principles to Applicant’s goods, Applicant's Mark is not descriptive.
`
`The Mark’s incorporation of “DRIFT” fails to describe the goods for which registration is sought with the immediacy and particularity required
`
`to find a term descriptive and thus disclaimable.  A term is not merely descriptive simply because it imparts information about a quality of the
`
`underlying goods.  See In re DC Comics, Inc., 689 F.2d 1042 (C.C.P.A. 1982).  Instead, the test for whether components of a mark are descriptive is
`
`whether such “conveys information about a significant feature or characteristic of the applicant’s goods with the immediacy and particularity required
`
`by the Trademark Act.”   In re Paul Leonhardt, 109 U.S.P.Q.2d 2091, 2092 (T.T.A.B. 2008).  In the instant case, the Examiner has identified several
`
`references to third-party offerings for a roller skate part purportedly called a “drift skate plate.”   Applicant is unclear as to the exact nature of this part
`
`as such is not incorporated into or used in its own products.  However, based on a review of the Examiner’s evidence, this part appears to allow a
`
`user to convert a traditional roller skate with wheels facing in the direction of the wearer to a traditional roller skate with wheels facing perpendicular to
`
`the wearer.  This appears to allow the wearer to orient their body to be perpendicular to the direction of movement.
`
`Applicant’s goods would be unable to accommodate this part.   In fact, Applicant’s goods can only be safely operated with the wearer’s body
`
`facing in the direction of movement.  Attached as Exhibit 1 is a print-out of Applicant’s website describing its goods.   Applicant’s goods relate to an
`
`innovative self-balancing electronic transporters.  A “drift skate plate” could not reasonably be incorporated into any of the goods Applicant plans to
`
`provide under SEGWAY DRIFT. 
`
`

`

`A leading test for determining whether a mark is suggestive– as opposed to merely descriptive– is whether "[a] term… requires imagination,
`
`thought and perception to reach a conclusion as to the nature of goods."  Stix Prods., Inc. v. United Merchants & Mfrs. Inc., 295 F. Supp. 479, 488
`
`(S.D.N.Y. 1968).  Put another way, “if the mental leap between the word and the product's attributes is not almost instantaneous, this strongly
`
`indicates suggestiveness, not direct descriptiveness.”  2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:67 (5th ed.
`
`2017) emphasis added.  The Board has further clarified that even if a mark suggests or hints at the nature of an applicant’s goods or services, if one
`
`must engage in mental gymnastics and extrapolation, the mark does not merely describe the applicant’s services.   See Airco, Inc. v. Air Products &
`
`Chemicals, Inc., 196 U.S.P.Q. 832 (TTAB 1977).　
`
`The word “DRIFT” considered in the context of the Mark as a whole is simply too vague to connote any specific, significant quality or
`
`characteristic of Applicant’s goods and services to consumers.
`
`  In fact, the word drift is commonly understood to have multiple meanings including, for
`
`example:
`
`the act of driving something along;
`
`the flow or velocity of the current of a river or ocean stream;
`
`a general underlying design or tendency;
`
`the underling meaning, import, or purport of what is poken or written [as in ‘gist’];
`
`the motion or action of drifting, especially  spatially and usually under external influence; and
`
`a gradual shift in position;
`
`an aimless course.
`
`See Meriam Webster Online Dictionary Evidence attached as an Exhibit 2.
`
`The above common definitions clarify that the word itself has multiple connotations.  These multiple meanings require the consumer to engage in a
`
`thought process to determine how “drift” might apply to or what meaning is intended by the word DRIFT as applied to the goods.    
`
`Moreover, DRIFT does not directly describe Applicant’s goods such that a consumer encountering the Mark would gain any type of accurate or
`
`distinct knowledge of the characteristics of Applicant's self-balancing electronic transporters.  To one who is not familiar with Applicant’s self-balancing
`
`electronic transporters, Applicant’s Mark would– at best– convey only a suggestion as to the general nature of these goods—namely that they might
`
`help a user to “drift” in a direction, or that “drift” refers to a velocity or flow that occurs when a user wears the product, or that the user is able to
`
`conduct or drive something along by virtue of using the product.  Again, determining the meaning of the word requires the consumer to engage in
`
`multiple various mental leaps, imagination and mental pauses to reach a conclusion about nature of Applicant’s goods. Because extrapolation and
`
`mental gymnastics are necessary to arrive at an understanding of Applicant's product, the incorporation of DRIFT in Applicant’s Mark is at most
`
`suggestive rather than merely descriptive.  Accordingly, a consumer encountering the word “DRIFT” must think about the relationship between the
`
`meaning of “DRIFT” and Applicant’s goods to determine the nature of the relationship between the two.
`
`  This multi-step thought process is the very
`
`essence of suggestiveness and not descriptiveness.   
`
`b. Any Doubts to Be Resolved in Favor of Applicant.
`
`When considering whether a mark is suggestive or merely descriptive, to the extent that there is some doubt, the doubt must be resolved in the
`
`Applicant’s favor by finding the proposed mark to be suggestive.   In re Conductive Systems, Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983); In re the Rank
`
`Organisation Ltd., 222 U.S.P.Q. 324, 326 (T.T.A.B. 1984); In re The Nobele Company, 225 U.S.P.Q. 749, 750 (T.T.A.B. 1980).  Resolving such doubts
`
`in favor of finding a mark suggestive is soundly based on the recognition that anyone who believes that they would be damaged by the registration will
`
`have an opportunity to oppose it.  Given the, at best, nebulous connection between a “skate drift plate” and SEGWAY DRIFT, there are sufficient
`
`doubts as to whether the Mark is descriptive of a significant feature of Applicant’s goods with the immediacy and particularity required by the
`
`Trademark Act.  Accordingly, these doubts should be resolved in Applicant’s favor and the request for disclaimer of DRIFT should be withdrawn.
`
`

`

`EVIDENCE
`Evidence in the nature of Exhibit 1- Printout of Applicant's website; Exhibit 2- "drift" definitions has been attached.
`Original PDF file:
`evi_64124201218-20190416155914428695_._Exhibit_1_SEGWAY_DRIFT.pdf
`Converted PDF file(s) ( 4 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Original PDF file:
`evi_64124201218-20190416155914428695_._Exhibit_2_DRIFT_Definitions.pdf
`Converted PDF file(s) ( 10 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 012 for Vehicles; electric vehicle; locomotives; bodyworks; bicycles; scooters (vehicles); tires for vehicles; boats; vehicles with
`wheels; joysticks for vehicles; motorized, self-propelled, wheeled personal mobility and transportation devices, namely, mobility scooters, utility
`carts, and chariots; electric three-wheeled mobility and transportation devices, namely, motorized scooters, motorized personal mobility scooters,
`and motorized patrollers; three-wheeled motor vehicles; two-wheeled motor vehicles; robotic transport vehicles; electric bicycles; motorized
`bicycles; carts; go-carts; beach vehicles, namely, beach carts; motorized vehicles, namely, recreational carts, namely, motor racing cars, and go-
`carts; motorized carts for transporting and storing recreational and sports equipment; handling carts; all-terrain vehicles; trolleys; two-wheeled
`trolleys; shopping trollies; hand cars in the nature of hand-propelled wheeled vehicles; dollies; hand trucks; shopping trolleys; wheeled trolleys;
`motorized luggage carts; motorized carts for carrying goods and luggage; food carts, motorized; motorized golf carts; motorized, self-balancing
`dollies; motorized, self-balancing hand carts; motorized, self-balancing trollies vehicle wheel balancer; parts and accessories thereof
`Original Filing Basis:
`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.
`
`Proposed:
`Tracked Text Description: Vehicles; electrically powered motor vehicles; electric vehicle; locomotives; bodyworks for motor vehicles;
`bodyworks; bicycles; motor scooters; scooters (vehicles); tires for vehicles; boats; joysticks for land vehicles; vehicles with wheels; motorized,
`self-propelled, wheeled personal mobility and transportation devices, namely, mobility scooters, utility carts, and chariots; joysticks for vehicles;
`electric three-wheeled mobility and transportation devices, namely, motorized scooters, motorized personal mobility scooters, and motorized
`patrollers; three-wheeled motor vehicles; two-wheeled motor vehicles; robotic transport vehicles; electric bicycles; motorized bicycles; carts; go-
`carts; beach vehicles, namely, beach carts; motorized vehicles, namely, recreational carts, namely, motor racing cars, and go-carts; motorized
`carts for transporting and storing recreational and sports equipment; handling carts; all-terrain vehicles; trolleys; two-wheeled trolleys; shopping
`trollies; hand cars in the nature of hand-propelled wheeled vehicles; dollies; hand trucks; shopping trolleys; wheeled trolleys; motorized luggage
`carts; motorized carts for carrying goods and luggage; food carts, motorized; motorized golf carts; motorized, self-balancing dollies; motorized,
`self-balancing hand carts; motorized, self-balancing trollies vehicle wheel balancer; parts and fittings therefor.; parts and accessories thereof
`
` 
`

`

`Class 012 fo