Anatomy of an Office Action Response – #3

Episode 3 – Trowel Pro

What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

Today’s post focuses on strategies in responding to requests for information under 37 C.F.R. § 2.61(b).

The Office Action – TROWEL PRO

Today, we are looking at a successful Office Action Response filed in the course of prosecuting an application to register the mark TROWEL PRO for a variety of construction materials in International Classes 1, 17, and 19, Ser. No. 86/885,391. The applicant, Laticrete International, Inc., is represented by Peter Peterson of DeLio, Paterson & Curcio, LLC.

The main issues raised by the USTPO Examining Attorney were (a) a disclaimer of “trowel” and (b) an information request about the meaning of “pro” in the industry.

Analyzing the Office Action

We will do a quick analysis of the Office Action through TM TKO’s tools. You can see an interactive version of this search report here.

The Office Action noted that trowels are frequently used with grout and other of the applicant’s goods. TROWEL is not especially common as a part of marks in related classes, but it shows up with some frequency in description of services and in disclaimers or in marks that are on the Supplemental Register. The applicant decided to accept the disclaimer request, and there was plenty of evidence to support that being the right call.

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The Examining Attorney also asked whether PRO has any meaning or significance in the industry and whether it is a “term of art” in the industry. These requests are often a prelude to a Section 2(e) refusal. PRO as a part of the mark grades out as even weaker, due to substantial dilution, so extra care was required in addressing the issue. If both parts of the mark are treated as non-distinctive, the mark as a whole is more likely to end up on the Supplemental Register, which provides substantially fewer rights than a registration on the Principal Register with all but one term disclaimed, even if the remaining term is not conceptually especially strong.

Care is required in these responses; the Office will routinely use responses in requests for information under 37 C.F.R. § 2.61(b) as the basis for refusal, see, e.g., In re FM Tech., Inc., Ser. No. 86100919 (TTAB Jul. 27, 2016) (upholding 2(e) refusal for 3DRad mark in part due to response to the respondent’s reply to an Examiner’s “function” question: “… by radiation with integrated imaging”), and incomplete or vague replies can be grounds for refusal, In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB Feb. 1, 2008).

The Office Action Response

In the Office Action Response, the applicant disclaimed the term “trowel” and took a cautious response to the next two questions. The applicant simply noted that “pro” has no additional meaning or significance in applicant’s industry and is not a term of art in applicant’s industry. It’s an appropriate enough response in that “pro” doesn’t mean anything special in connection with these goods, although “pro” is generally used to indicate high-quality or “professional” quality goods (and is used, and disclaimed, as a part of competitive marks on the registry), and it looks like the Examining Attorney could easily have taken a harder line.

The applicant responded to the information request by noting that “there are no fact sheets, manuals or advertisements yet available” and replied very generally that the goods will be used in building construction in connection with installation of concrete, mortar, grout, etc.; the applicant did not provide equivalent material from competitors. The Examining Attorney could have taken the position that the amount of information provided was insufficient, but chose not to press the issue further.

TL;DR

When responding to a request for information, it’s vital to curate the information you provide. If the Examining Attorney needs more, the worst that can happen is that you will get a second Office Action or a Final Office Action, and in either event have a second opportunity to provide more.

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