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UNITED STATES PATENT AND TRADEMARK OFFICE ) In re Matter of: ) ) Applicant: Yigal Mesika ) ) APPLICANTS RESPONSE TO Mark: LOOPS ) OFFICE ACTION [ISSUE/MAILING ) DATE: 8/13/2008] Serial No. 77458554 ) ) Examining Attorney: ) Tracy Cross ) Law Office 109 ) I. INTRODUCTION Examining Attorney, in response to your 8/13/08 Office Action, Applicant hereby requests reconsideration of the initial refusal to register the mark LOOPS. Applicant contends the mark is not descriptive or misdescriptive. However, even if deemed so, Applicant contends that the mark has, thus allowing it to proceed through the registration process. If after this response, it is still determined that the mark is not registrable on the Principal Register, Applicant hereby requests leave to amend the application for the mark to be registered on the Supplemental Register.
Finally, Applicant submits new specimens in response to the Office Action. Applicant’s arguments are set forth below. APPLICANT’S MARK IS NOT DESCRIPTIVE Applicant requests that the initial refusal to register the mark LOOPS on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1) be reversed. Applicant contends that the mark is not merely descriptive or deceptively misdescriptive of the goods or services to which it relates.
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The determination of whether or not a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). In this case, Applicant’s use of the mark is for the sale of a popular pre- formed thread to perform magic tricks and DVDs showcasing/teaching the magic tricks. It’s not the selling of non loops, per se, but of a means to perform tricks which is made better because Applicants product is designed as it is. The types of tricks performed with Applicants product are commonly performed with elastic thread sometimes pre-tied and most time not pre-tied. Many producers of similar products use terms like Magic Knot to describe their products which perform the same or similar tricks as Applicant’s product.
2 Applicant’s product caters to a niche market of magicians and other consumers interested in magic tricks. This product would only be available for sale in areas related to the field of magic. People interested in magic would understand the mark LOOPS for what it stands for, magic tricks as popularized by Applicant and his predecessor in interest Finn Jon (discussed further below). As such, Applicant maintains the argument that mark is not merely descriptive and requests the mark be allowed to continue in the application process. APPLICANT’S MARK IS NOT MISDESCRIPTIVE Applicant contends that the mark it seeks to register, LOOPS, is not deceptively misdesriptive.
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As explained in the case of In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984): The test for misdescriptiveness has two parts. First it must be determined if the matter sought to be registered misdescribes the goods. In the matter at hand, the mark sought to be registered does not misdescribe the goods. Loop has many definitions. The one that most closely relates to Applicant’s mark is “1 a: a curving or doubling of a line so as to form a closed or partly open curve within itself through which another line can be passed or into which a hook may be hooked b: such a fold of cord or ribbon serving as an 3 ornament” [Merriam – Webster Dictionary]. Applicant’s mark consists of loops as a component of the magic trick and as such the mark is not a misdescription. Even assuming it were misdescribed, the mark must also be deceptive, that is, will anyone likely believe the misrepresentation.
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