Matthew H. Swyers overturns decision on Merely Descriptive refusal to register trademark
Cary, N.C., Feb. 13, 2013 (GLOBE NEWSWIRE) -- Cary, N.C.,-- February 12, 2013--The Trademark Company, a
privately-held, Trademark law firm, today announced that once
again, it has overcome the United States Patent and Trademark
Office (USPTO) by overturning their "merely
descriptive" refusal and subsequently winning their appeal for
their clients' NO CRIMP trademark.
The Trademark Company, PLLC submitted an in-use trademark
application for NO-CRIMP on behalf of
API Solutions, Inc to the USPTO for review on February 15,
2011. This in-use application was intended to register in due
course on the Principal Register in connection with Class 21 for
"plastic safety caps for medicine containers". However, on May 24,
2011, a response was received from Examining Attorney Charles J.
Jenkins, stating that the application for the trademark NO
CRIMP was refused registration on the grounds that the mark
was "merely descriptive" (15 U.S.C. § 1052(e)(1)).
According to the USPTO, "a term is deemed to be merely
descriptive of good or services if it conveys an immediate idea or
an ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services." In this refusal, Examiner Jenkins
refers to the dictionary to recall definitions of "no" (not at all
or not by any degree) and "crimp," (a crease or bend), to assert
that the "applicant's plastic safety caps "contain a 'no-crimp'
feature that keeps the plastic from bunching up, creasing or
bending when the safety cap is placed on top of the medicine
container." Furthermore, to justify his "merely descriptive"
decision, the Examining Attorney promoted his decision by evoking a
previous verdict enforced circa 1979, by the Trademark Trail
and Appeal Board (TTAB) circa 1979 that "the context in
which the words/term is being used in connection with the goods or
services, and the possible significance that the term(s) would have
to the average purchaser of the goods or services must be
considered because the term(s) may have other meanings in different
In response to the claims filed against the application for
NO-CRIMP, The Trademark Company, PLLC advised API
Solutions, Inc to file an appeal citing the probability of a win
should they make a counter argument declaring that the mark in
questions would be suggestive at best. The argument would state
that "A mark is 'suggestive' if the term(s) requires imagination,
through the perception to reach a conclusion as to the nature of
the product. Therefore, we must first measure the amount of
imagination required by a consumer to get a direct description of
the product or service from the mark. The greater the imagination
required, the more likely the term is suggestive and not merely
descriptive.2" On February 24, 2012 an appeal was
submitted to the TTAB stating the same.
After a long deliberation on November 27, 2012, the USPTO
declared that after "reviewing all of the evidence, we are hard
pressed to understand how the term "no-crimp" applies to plastic
safety caps for medicine containers. The mark did not create an
instant association with the actual goods offered by the applicant
and that the consumer would require a degree of imagination to draw
a connection of the term NO-CRIMP with the applicant's
goods. Therefore, based on the record submitted, we cannot say that
NO-CRIMP directly and immediately conveys information
about a characteristic of the identified goods." As such, the
refusal to register NO-CRIMP was reversed and the mark is currently
published for Opposition in the USPTO's
Official Gazette where it will remain for 30 days as it endures
its final steps of registration.
1 In re Bright-Crest, Ltd., 20 4
USPQ 591, 593.
2 Railroad Salvage of Connecticut, Inc. V.
Railroad Salvage, Inc., 561 Fed. 1014 (D.C.R.I. 1983).
About The Trademark Company
Headquartered in Cary, North Carolina, The Trademark Company was
founded in 2003 by Matthew H. Swyers, a former trademark examining
attorney for the United States Patent and Trademark Office
("USPTO"). Mr. Swyers formed the company with the core belief that
top caliber trademark services should not only be accessible, but
affordable for all. Nearly 10 years later, the company is
recognized as one of the top trademark firms in the world and
represents individuals and companies on 6 of 7 continents around
the world. Over the years the company has grown to have a trademark
registration rate second to none and maintains its unparalleled
customer service with an A+ rating with the Better Business Bureau.
The Trademark Company PLLC is a Virginia Professional Limited
Liability Company, Matthew H. Swyers, Esq. principal. Principal
admitted to practice law in the Commonwealth of Virginia and the
District of Columbia. Practice limited to the federal protection of
trademarks and copyrights. For additional information, visit
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CONTACT: Misty Wilson
The Trademark Company
(800) 906-8626 Ext. 107