ESTTA Tracking number: ESTTA1079328 09/02/2020
Transcript of ESTTA Tracking number: ESTTA1079328 09/02/2020
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1079328
Filing date: 09/02/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 88573025
Applicant Elkay Plastics Co., Inc.
Applied for Mark COMPOSTA
CorrespondenceAddress
GARY M ANDERSONFULWIDER PATTON LLP6100 CENTER DRIVE SUITE 1200LOS ANGELES, CA 90045UNITED STATESPrimary Email: [email protected] Email(s): [email protected], [email protected] phone number provided.
Submission Appeal Brief
Attachments MAIN BRIEF.pdf(49029 bytes )EXHIBITS.pdf(1129826 bytes )
Filer's Name Gary M. Anderson
Filer's email [email protected], [email protected], [email protected]
Signature /gary m. anderson/
Date 09/02/2020
1079075.1 ELKAY-98830
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the Matter of
Applicant: Elkay Plastics Co., Inc.
Serial No.: 88/573,025
Filing Date: August 9, 2019
Mark: COMPOSTA
Sahar Nasserghodsi
Examining Attorney
Law Office 115
September 2, 2020
APPLICANT'S MAIN BRIEF
1079075.1 i ELKAY-98830
TABLE OF CONTENTS
Page
I. DESCRIPTION OF RECORD……………………………………………………………1
II. STATEMENT OF ISSUES……………………………………………………………….2
III. RECITATION OF FACTS…...………………………………………………………...…3
IV. ARGUMENT…………………………………………………………………………..….3
A. English Translation Requirement………………………………………………....3
B. Merely Descriptive Refusal……………………….………………………………4
V. CONCLUSION…………………………………………………………………………...6
1079075.1 ii ELKAY-98830
TABLE OF AUTHORITIES
Page(s)
Cases
Application of Quik-Print Copy Solutions, Inc., 616 F.2d 523, 205 USPQ 505
(C.C.P.A. 1980) .........................................................................................................................5
In re MBNA America Bank, N.A., F.3d 1328 (Fed.Cir.2003) .........................................................5
Other Authorities
Bab.la English to Italian ...............................................................................................................3, 4
Cambridge Dictionary, Italian to English ........................................................................................3
The Collins Italian – English Dictionary .........................................................................................4
Yandex Translate .............................................................................................................................4
TMEP § 1207.01(b)(vi) ..................................................................................................................4
1079075.1 1 ELKAY-98830
This Appeal Brief is filed in response to the Examining Attorney's Denial of Applicant's
Request for Reconsideration After Final Action. In the Denial the Examining Attorney
maintained the Section 2(e)(1) refusal that Applicant’s mark was merely descriptive of a feature
of Applicant’s goods.
I. DESCRIPTION OF RECORD
On August 9, 2019, Applicant filed the instant application on an intent-to-use basis to
register the mark COMPOSTA for use in connection with “bags, pouches, film and rigid
containers for use in the food service, industrial and commercial industries,” in Class 16 [TSDR
Doc. 1]
On November 14, 2019, the Examining Attorney issued an Office Action. In said Office
Action the Examining Attorney initially refused registration of the mark under Section 2(e)(1)
holding that COMPOSTA translates to “compost” and thus was merely descriptive of a feature
of Applicant’s goods. The Examining Attorney also issued a Section 2(d) refusal over
Registration Nos. 4,633,237 and 4,851,549. The Examining Attorney also required an
amendment to the Identification of Goods and an English translation of the mark. [TSDR Doc.
6]
On February 18, 2020, Applicant filed a response to the Office Action. In said response
the Applicant amended the Identification of Goods and provided an English translation of the
mark. Applicant also submitted arguments against the Section 2(e)(1) and Section 2(d) initial
refusals. [TSDR Doc. 8]
On March 6, 2020, the Examining Attorney issued a Final Office Action. In said Final
Office Action, the Examining Attorney maintained the Section 2(e)(1) and Section 2(d) Refusals.
The Examining Attorney required a further amendment to the Identification of Goods and
repeated the request for an English translation of the mark disagreeing with the translation
previously provided by Applicant. [TSDR Doc. 10]
On May 11, 2020, Applicant filed a Request For Reconsideration After Final Office
Action. In its Request For Reconsideration, Applicant argued against the Examining Attorney’s
proposed translation of the mark and submitted two alternative translations. The Applicant also
1079075.1 2 ELKAY-98830
further amended the Identification of Goods. Applicant submitted further arguments against the
Section 2(e )(1) – merely descriptive refusal and the Section 2(d) – likelihood of confusion
refusals. [TSDR Doc. 11]
On May 28, 2020, Applicant’s attorney had a telephonic interview with the Examining
Attorney. During the interview, the Examining Attorney indicated that she was withdrawing the
Section 2(d)(1) – likelihood of confusion refusal. Additionally, during the interview, Applicant
agreed to a further amendment to the Identification of Goods and to the English translation of the
mark. The Examining Attorney entered an Examiner’s Amendment on May 28, 2020. In said
Examiner’s Amendment the Applicant and Examining Attorney agreed to submit the English
translation of COMPOSTA in the alternative, namely, “composed,” “compote” or “compost.”
[TSDR Doc. 15]
On May 29, 2020, Applicant filed an Amendment to Allege Use. [TSDR Doc. 18]
On June 5, 2020, the Examining Attorney entered an Examiner’s Amendment further
amending the Identification of Goods in conformation with Applicant’s Attorney’s email of June
2, 2020. [TSDR Doc. 24]
On June 5, 2020, the Examining Attorney issued a Denial of Applicant’s Request For
Reconsideration After Final Action. In said Denial, the Examining Attorney maintained the
Section 2(e)(1) merely descriptive refusal. The Examining Attorney indicated that Applicant had
satisfied the classification and Identification of Goods requirement and the English translation
requirement of the Final Office Action . [TSDR Doc. 25]
II. STATEMEN TO ISSUES
There are two issues in this appeal.
Issue No. 1: What is the proper English translation of Applicant’s mark COMPOSTA?
Is it “composed,” “compote” or “compost”?
Issue No. 2: Is Applicant’s mark COMPOSTA merely descriptive of Applicant’s
goods, namely,
1079075.1 3 ELKAY-98830
Class 16: Pouches and rigid containers all made from kraft paper and kraft board for
packaging use in the food service industry; Plastic pouches and films all made from bio-resin for
use in the food service industry for packaging; Rigid containers consisting primarily of kraft
paper, kraft board and also including bio-resin, for packaging use in the food service industry; all
aforementioned goods being compostable.
Class 20: Plastic rigid containers made from bio-resin for use in the food service
industry; Rigid containers consisting primarily of a bio-resin plastic substitute and also including
kraft paper and kraft board, for packaging use in the food service industry; all aforementioned
goods being compostable.
III. RECITATION OF FACTS
Applicant’s goods are a variety of containers and packaging materials, all used in the
food service industry. All of the Applicant’s goods are manufactured from compostable
materials.
IV. ARGUMENT
A. English Translation Requirement
In the first Office Action the Examining Attorney took the position that Applicant's mark
was an Italian word and that it translated to "compost" in English. Applicant responded that
COMPOSTA was a coined or created term. However, following the Examining Attorney's
contention that it was an Italian word, Applicant submitted a Google Translate Italian to English
translation of "COMPOSTA" as meaning "composed" in English and not, "compost" as
contended by the Examining Attorney. [see Exhibit 1, which was included in Applicant’s
Response] In the Final Action, the Examining Attorney failed to give any weight to Applicant's
evidence and maintained that COMPOSTA means "compost" in English.
In support of her position, the Examining Attorney cited the Cambridge Dictionary,
Italian to English translation of "composta." The Examining Attorney's translation provided two
translations for "composta." The first translation is "compote, fruit preserve." The secondary
translation is "compost." In further support, the Examining Attorney cited a bab.la English to
Italian translation that translates compost in English into "composta" in Italian. However, the
1079075.1 4 ELKAY-98830
example of the use of "compost" in the bab.la English to Italian is that of a compote or fruit
preserve. The example given is "I need only tell you that, as we speak, approximately 200,000
tonnes of peach compost have remained unsold." [see Exhibit 2, which was cited in the Final
Office Action]
It it’s Request For Reconsideration After Final Office Action. Applicant submitted
additional evidence supporting Applicant's position as to the meaning of "compost." The
Yandex Translate translates composta to composed in English. The Collins Italian – English
Dictionary translates "composta" as "compote." And translate.com/italian-english translates
"composta" to "composed." [see Exhibit 3 which was Exhibit 1 to the Request For
Reconsideration.
Applicant's submits that the evidence of record shows that the primary translation of
"composta" is either "composed" or "compote." Applicant submits that the Examining
Attorney's proposed translation is at best the third possible translation of "Composta." The
Examining Attorney's single, secondary translation is insufficient to support the Examining
Attorney's position. As set forth in the TMEP, if the evidence shows that the relevant English
translation is literal and direct, and no contradictory evidence of shades of meaning or other
relevant meanings exits, the doctrine generally should be applied by the Examining Attorney.”
(emphasis added) TMEP § 1207.01(b)(vi).
Applicant respectfully submits that in the instant case the contradictory evidence of
record regarding the meaning of COMPOSTA precludes the application of the doctrine of
foreign equivalence. There is not clear, uncontradicted evidence in the record as to the proper
English translation of the word.
B. Merely Descriptive Refusal
The Examining Attorney has maintained the position Applicant's mark "COMPOSTA" is
merely descriptive. In support of this position the Examining Attorney states that COMPOSTA
means "compost" in English. However, as shown in Applicant's evidence the Italian word
"composta" means "composed" or "compote" and not “compost.”
1079075.1 5 ELKAY-98830
Since, contrary to the Examining Attorney's position, COMPOSTA translates as
"composed," or "compote" the Examining Attorney's citation to various websites (Attachments
to the Office Action) are not relevant. Additionally, Applicant notes that the two marks
previously cited against it for the now withdrawn Section 2(d) refusal, "COMPOSTABOX" and
"COMPOST-A-PAK" are both registered on the Principal Register without a disclaimer of
"COMPOST."
Specifically, Applicant notes that the mark COMPOSTABOX (Reg. No. 4,851,549) is
registered for use in connection with "coated, leak proof, biodegradable and compostable
cardboard boxes for storage, shipment and in-box composting of compostable material."
(emphasis added) The mark is registered on the principal register. Similarly, the mark
COMPOST-A-PAK (Reg. No. 4,633,237) is registered for use in connection with "compostable
paper-pulp based to-go containers for food." (emphasis added) It too is registered on the
principal register without a disclaimer of "compost."
Applicant respectfully submits that it is inconsistent for the Trademark Office to allow
the two cited Registrations, both of which actually contain the word compost, without
disclaimers thereby admitting that trademarks are not merely descriptive, yet refuse Applicant's
registration for a word that does not mean compost.
Accordingly, Applicant respectfully submits that its COMPOSTA mark which translates
as composed or compote is not merely descriptive of Applicant's goods.
Further, Applicant respectfully submits that its mark COMPOSTA is not merely
descriptive regardless of the translation of the mark. For a mark to be merely descriptive it must
immediately and only describe a feature or characteristic of the goods or services. If it takes
some imagination on the part of the consumer, then the mark is suggestive, but not merely
descriptive. Application of Quik-Print Copy Solutions, Inc., 616 F.2d 523, 525, 205 USPQ 505
(C.C.P.A. 1980); In re MBNA America Bank, N.A., F.3d 1328 (Fed.Cir 2003)
Applicant submits that its mark COMPOSTA may be suggestive but it is not merely
descriptive. Given that the primary translation of COMPOSTA is either "composed" or
1079075.1 6 ELKAY-98830
"compote," Applicant submits that it would take imagination on the part of the consumer to
associate "COMPOSTA" with "compost."
V. CONCLUSION
Accordingly, Applicant respectfully requests that the Board reverse the Examining
Attorney’s Section 2(e)(1) Refusal.
Dated: September 2, 2020
By:
Respectfully submitted,
/Gary M. Anderson/
Gary M. Anderson
FULWIDER PATTON LLP
Attorneys for Applicant