Episode 5 – ORANGE TREE SAMPLES

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 an application that received a disclaimer request.

The Office Action – ORANGE TREE SAMPLES

We are looking at a successful Office Action Response filed in the course of prosecuting an application to register the mark ORANGE TREE SAMPLES for autio and musical sound recordings and related software in International Class 32, Ser. No. 86958626. The applicant, Greg Schlaepfer, is represented by Philip Zender of Squire Patton Boggs in San Francisco.

In an Office Action issued on July 19, 2016, the Office found no confusingly similar marks but requested a disclaimer of the term SAMPLES, pointing both to external evidence and the use of “sample libraries” in the description of goods.

Reviewing the Office Action

While not noted by the Examining Attorney, there is considerable case law supporting the Office’s position. Use of a term in a description of goods or services is just one instance of the applicant’s own descriptive or generic use of the term in question, which is generally highly probative of the question of the strength of that term. See, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (“applicant’s own use of the term ERGONOMIC … highlights the descriptive nature of this term …”).

Let’s look at the Office Action using TM TKO’s tools. Is “sample” a common term on the registry, indicating that it is not likely to serve as a source indicator?

TM TKO’s look at registry data also suggests that the term is fairly weak. Mousing over the graph for more detail indicates that “sample” is common in descriptions of goods in-class and, where it occurs in marks, it is often disclaimed or present in marks in Supplemental Register registrations.

Combined with the use of the term in the description of goods and the case law on the point, the disclaimer request in the Office Action looks well-supported.

The Office Action Response

The applicant saw no reason to push back, and agreed to the disclaimer in an Office Action Response filed on October 17, 2016. The application was published for opposition on December 13, 2016.