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Trademark Gladiators: The Trademark Company Defeats Yet Another USPTO Examining Attorney in TTAB Trial

Wednesday, February 13, 2013 2:06 PM

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 contexts.1"

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 www.thetrademarkcompany.com.

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CONTACT: Misty Wilson
         The Trademark Company
         (800) 906-8626  Ext. 107

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