cstr

Applicant: Home Shopping Club LP

Serial No.: 75/789,860

Filed: September 1, 2007

Mark: STRETCH FX

Written Assignment IV
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
LETTER TO THE PATENT AND TRADEMARK OFFICE

TO THE COMMISSIONER FOR TRADEMARKS,

SIR/MADAM:

This letter responds to the Office Action. Applicant respectfully disagrees with the refusal to register the mark “STRETCH FX” on the Principal Register on the ground that the mark is merely descriptive, and requests reconsideration.

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Relying on this definition, the Examining Attorney asserted that the mark “STRETCH FX,” which is used in connection with apparel, “merely described a feature of the goods” and that, specifically, the mark described “clothing made from stretch type fabrics, or clothing that offers the effect of stretching.” See Office Action. However, the determination of merely descriptiveness should consider “the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace.” See TMEP §1209.01(b), 2. And the following reasons are proposed to show that “STRETCH FX” as a whole will not have possible significance of product features to the average purchasers in the closing marketplace.

I. “STRETCH FX” as a whole is a fanciful term.

“[F]anciful terms bear no relationship to the products or services to which they are applied.’ See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir. 1983). “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language.” See TMEP §1209.01(a), 1. Here, “STRETCH FX” as a whole is fanciful term because it was invented for a trademark only and “FX” is unknown to the average purchasers of the clothing marketplace.

“Stretch” is not a word designated to clothing, and it has many meanings so that the average purchasers cannot associate “stretch” with the features of clothing when they first encounter “STRETCH FX.” According to the Merriam-Webster Online Dictionary (http://mw1.merriam-webster.com/dictionary/stretch), “stretch” can be a verb, noun, or adjective. As a verb, “stretch” may mean “to extend (as one's limbs or body) in a reclining position” or “to cause the limbs of (a person) to be pulled especially in torture.” As a noun, it may mean “a walk to relieve fatigue” or “a term of imprisonment.” As an adjective, it may mean “longer than the standard size.” No meanings of “stretch” directly point out the association with clothing. Thus, the average purchasers in the clothing marketplace will not recognize “STRETCH FX” as “clothing made from stretch type fabrics, or clothing that offers the effect of stretching.” It is impossible for a mark designer to use “STRETCH FX” to indicate the features of the clothing, but, contrarily, “STRETCH FX” is merely designed to function as a trademark.

Secondly, the definition of “FX” cannot be found in the Merriam-Webster Online Dictionary. In fact, “FX” is not associated with apparel. For example, according to a famous online encyclopedia, Wikipedia.org (http://en.wikipedia.org/wiki/FX), “FX” may refer to: (1) Athlon 64 FX, which is an AMD microprocessor; (2) FX TV, which is a cable/satellite television network; (3) Forex Market, which provides trading information; (4) Toyota Kijang or Tamaraw FX, which is a sport utility vehicle; (5) FX, which is a desktop series targeted for consumer gaming segment from Gateway, Inc.; (6) Infiniti FX, which is a model designation for Infiniti's compact luxury Crossover Utility Vehicle; and so on. Additionally, “FX” may stand for: (1) Bone fracture, used in medical short-hand; (2) FedEx by IATA airline designator; (3) Fighter Experimental, used for a 1960s U.S. Air Force advanced fighter specification; (4) Foresight Exchange, which is an online prediction market using play money; (5) Foreign exchange market, which is a banking term for changing money from one currency into another; (6) Foreign exchange service, which is a telephone connection to a distant exchange; and so on. As a result, the average purchasers in the clothing marketplace will not associate “FX” with clothing products.

Therefore, since neither of “STRETCH” or “FX” will lead the average purchasers to the connection with clothing products, the “STRETCH FX” as a whole is deemed to be a fanciful term and to be registrable.

II. “STRETCH FX” as a whole is at least a suggestive term.

“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services.” See TMEP §1209.01(a), 3. Here, “STRETCH FX” as a whole is at least a suggestive term because the average purchasers in the clothing marketplace will think for a while the connection between “STRETCH FX” and the nature of clothing goods. That is, “STRETCH FX” is not cataloged as “a descriptive term, which immediately tells something about the goods or services.” Id.

When “STRETCH” is combined with “FX,” what highly impresses an average purchaser is a fashion term or some imagination about high technology rather than stretch types of materials. As mentioned above, in the dictionary “stretch” has a plenty of meanings, so the average purchasers will not directly think “stretch” suggests the nature of the goods. Particularly, “FX” more likely triggers the average purchasers to compare “STRETCH FX” with “Athlon 64 FX,” a CPU, so as to induce science fiction impression.

As a result, although noticing that the “STRETCH FX” is used for clothing, the average purchasers still focuses on the very spotting portion, “FX,” and later they may remind themselves that clothing can be stretched. “STRETCH FX” as a whole is at least a suggestive term, and it will make the average purchasers get through several thinking steps to figure out “STRETCH FX” that indicates the nature of clothing.

III. The examining attorney’s reasoning supports the suggestiveness of “STRETCH FX.”

“STRETCH FX” is a suggestive term because the reasoning of the examining attorney can lead to that. First, the examining attorney mentioned “clothing [is] made by the stretch type of fabric.” However, the average purchasers in fact read “STRETCH” prior to “FX”, which means that, if “stretch” plays an adjective role, the average purchasers will more likely first think “What is ‘stretch FX’?” and then surprisingly say “Oh! The clothing fabric may be a stretch type.”

Secondly, the Examining Attorney mentioned “clothing [] offers the effect of stretching.” Again with the same reading sequence, the average purchasers will still wonder what “stretch FX” is and later may realize the clothing may be stretch.”
Therefore, both reasons provided by the Examining Attorney should emphasize the suggestiveness of “STRETCH FX”

After presenting the above reasons about why “STRETCH FX” is either fanciful or at least suggestive, Applicant respectfully requests the Examining Attorney to reconsider the refusal of the principal registration and furthermore to allow the registration.

Respectfully Submitted,