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ThReAdTeDs - Traditional, crochet, fiber, patterns, supplies by Berta Hesen-Minten
Barling Bears - Designed by Marilyn Lambert

threadteds ThReAdTeDs®
Posts: 347
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8 years ago a mother and daughter team applied for the trademark "Thread Teds by Thread Bears"
Many of you know that I have been using ThReAdTeDs as my trademark since 2002 and I filed an opposition against their filing because it is too similar to my trademark and is confusing to customers.

Unfortunately, after a long, 8 year proceeding my opposition was denied, this mother and daughter team are now able to to proceed with their application, in hopes tat it will mature into another registered trademark for the same goods- the mark "Thread Teds by Thread Bears".

One good thing comes out of this though, to be able to trademark the mark "Thread Teds by Thread Bears", the mother and daughter team had to disclaim the wording "THREAD TEDS" and "THREAD BEARS" because the trademark office decided it was the name of their goods and not registerable.

There are certain words that the USPTO will not allow to be trademarked because they are generic, etc. So they are asked to disclaim (give up) trademark protection on the words "THREAD TEDS" and "THREAD BEARS", but they still retain trademark protection on the whole "Thread Teds by Thread Bears". So in this case they have TM in "Thread Teds by Thread Bears" but not just in "THREAD TEDS" or "THREAD BEARS".

When a trademark owner disclaims in its trademark registration a portion of the trademark, the trademark owner is declaring to the world that it claims no exclusive right to use that disclaimed portion apart from the trademark as a whole.

So ... by registering "Thread Teds by Thread Bears" as a trademark with "THREAD TEDS" and "THREAD BEARS" disclaimed, the trademark owner claims the exclusive right to use the "Thread Teds by Thread Bears" phrase to brand its product or service but disclaims the exclusive right to use "THREAD TEDS" and "THREAD BEARS" by itself to brand that product or service.

That means, I continue can use my trademark ThReAdTeDs  and am even officially allowed to call my crocheted bears as before "thread bears".

So, if you are looking for collectible bears and friends designed and made by Berta Hesen-Minten look for..   ThReAdTeDs.. stylized written with upper and lower case alternated.
Thanks so much!
Berta

threadbears Posts: 107

Again, to set the record straight…
Yes, we do still own Thread Bears®.  If anyone would like to confirm registration at the US Patent and Trademark Office, here is a link to our Trademark Title: http://assignments.uspto.gov/assignment … o=75245684

We advise against anyone using the phrase “thread bear(s)” or “threadbear(s),” in any font or format.  We are required, by law, to police anyone infringing on our marks.

As for disclaimers…
As Trademark Law states, disclaimers on any application would not invalidate any trademark.  Our registration for “Thread Teds by Thread Bears,” in no way, makes our Thread Bears trademark invalid or generic.  To verify this rule: http://www.bitlaw.com/source/15usc/1056.html

The only people who could use “thread bears” in any way would be people who make completely different items from ours—items that do not fall under our category of goods.  For instance, there could be a Thread Bears Landscaping.  But, if a company offers any type of crocheted/sewn/felted/knitted/soft-sculpted bears or animals, and uses the phrase “thread bears,” in any way, is infringing.
Yes, Berta Hesen-Minten can carry on in business as “ThReAdTeDs,” but she will no longer be able to associate our mark, “Thread Bears,” with her business.

If anyone would like more information on Trademark Law, we advise you to look at the USPTO website directly, or to seek out legal counsil.  If you would like the Layman’s breakdown on our trademark, you may find this on our blog.

jenny Three O'clock Bears
warwickshire uk
Posts: 4,413
Website

So who owns the phrase 'Teddy Bear'?
Are we all in breech of some title ownership issue? Very scary stuff ....
I wish you luck Berta!

threadbears Posts: 107

Jenny,
Nobody can own rights to the phrase "teddy bear," since that phrase can be found in the dictionary together.  Everyone can use "teddy bear." 

Sue

desertmountainbear desertmountainbear
Bloomsburg, PA
Posts: 5,389
Website

I have to say that it does make me feel bad that the term "thread bear" would be copyrighted.  To me that is the term that describes the making of the bear.  A thread bear is a teddy bear that has been crocheted from a fine yarn or thread.  That process of making bears and animals has been around for a long time.  I have seen patterns from the 50s and 60s using this technique.

I am sorry, but by taking this name and copyrighting its use, it seems to me you are being unfair to all the other bear makers who use this term to describe what they are making.

I usually keep my opinions to myself, but this is something that affects many people in a bad way.

Francesca KALEideaSCOPE
Rheinfelden
Posts: 1,306
Website

This means that if I decide to register the Trademark "OOAK artist bears", then nobody will be able to use that description to sell them again....unless they are really selling toilet seats for instance....interesting!  bear_sad  bear_sad  bear_sad
I agree with Joanne, even if the law is the law, sometimes common sens should prevail....but it is just my opinion.

Us Bears Pennsylvania
Posts: 1,477

I wasn't going to say anything because I might sound negative but, after reading a few posts, I've changed my mind.

As a person who buys Bears, occasionally from people on this website, I would be a lot less likely to adopt from Bearmakers who squabble over semantics and the wording of trade marks.

rkr4cds Creative Design Studio (RKR4CDS)
suburban Chicago
Posts: 2,044

USC 1056
Disclaimer of unregistrable matter

(a) The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.

(b)No disclaimer, including those made under subsec. (e) of section 7 of this Act [15 USC 1057(e)], shall prejudice or affect the applicant's or registrant's rights then existing or thereafter arising in the disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services.
__________________________

Please read and interpret these words most carefully, especially (b):
No disclaimer shall prejudice the rights to 'register' (any word) in another application.

This statute says nothing about the "use" of a disclaimed word or phrase AFTER an application matures into a Registration, only that they shall not "prejudice or affect'... 'his right of registration on another application/"

To paraphrase her meaning, Berta states that the 2 disclaimed phrases will become free for use by others, but "not until this application matures in a full Registration."
As of now, even though the applicants have sworn to this declaration of genericness - as of September 3, 2009 - it is not a lawful agreement until official Registration is awarded to the Thread Bears® company for Thread Teds by Thread Bears™.

jenny Three O'clock Bears
warwickshire uk
Posts: 4,413
Website

I think it's difficult because this phrase is very much in use in our world. It would be a bit like owning the term 'washing up liquid' ...it's hard to know how one would describe such an item otherwise. Now I could understand why an established  brand name would fight over the use of their product names ..like 'Big Mac' or 'Mickey Mouse'  but this term is something which we all use so I wish them luck policing its use. Personally I think time would be better spent on more interesting projects..life's too short.
It's a real shame and I am truly shocked.

threadbears Posts: 107

Bobbie, you continue to misinform others…

You can’t interpret the law.  It says what it says.  Any other trademark with “thread bears“ in it will not make our registered trademark free for others to use.

It would not make sense that anybody could use a phrase only after it is a trademark.

So, you‘re implying that “Beyond Basic Bears” could not be used by anyone until it is a registered trademark...  That makes no sense.  This is backwards--when a phrase becomes a registered trademark, it is protected by the law.

The disclaimer is not an agreement that our trademark is generic.  “Thread bears” is not the generic term for the type of bears we make.  The generic term for these items is crocheted bears.  Bobbie and Berta, in your evidence at the Trademark Office, your previous lawyer stated, in a letter to you, that despite all of your evidence against “Thread Bears,”  you lost because it was deemed non-generic.

threadteds ThReAdTeDs®
Posts: 347
Website

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I copied and past this from the Trademark website. In here it is clearly stated, that the term “THREAD BEARS” is generic for applicant’s goods:

OFFICE ACTION (Feb. 02, 2006)

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

Serial Number  78/553324

The trademark examining attorney has reassessed the application in light of the evidence supplied with the granted Letter of Protest.  A copy of the evidence presented in the Letter of Protest and the memorandum that accompanied the evidence are attached.  See TMEP §§1715 et seq. regarding Letters of Protest.

Upon careful consideration of the application in light of this new evidence, the trademark examining attorney has determined that the term “THREAD BEARS” is generic for applicant’s goods, namely, “Collectables in the nature of Bears, Dolls and Animals, all the forgoing jointed and crocheted, sewn, felted and soft sculpted from various fibers and materials.” Therefore, this wording must now be disclaimed. For further explanation, please note the following.

Disclaimer of “THREAD BEARS” required:

Applicant has previously disclaimed the descriptive wording “THREAD TEDS” and “BEARS” apart from the mark.  Applicant must now however disclaim the generic wording “THREAD BEARS” apart from the mark as shown because it is the common name for the applicant’s goods as cited in the application, namely, “Collectables in the nature of Bears, Dolls and Animals, all the forgoing jointed and crocheted, sewn, felted and soft sculpted from various fibers and materials.”  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

No claim is made to the exclusive right to use “THREAD TEDS” and “THREAD BEARS” apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

As a reminder, a “disclaimer” is a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The disclaimed wording remains part of the mark and the appearance of the applied-for mark will not change.

Explanation of Generic Terms

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.

A two-part test is used to determine whether a designation is generic:

(1) What is the class or genus of goods or services at issue?

(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

Here, the genus of goods at issue is miniature bears made out of thread.  Applicant has already disclaimed the descriptive and/or generic words “THREAD TEDS” and “BEARS.”  Applicant is the owner of the prior U.S. Registration No. 2146208 where the applicant disclaimed the generic word “BEARS” and claimed acquired distinctiveness under Trademark Act Section 2(f) for the word “THREAD” in order to register the identical goods on the Principal Register.

However, the attached evidence demonstrates that the term “THREAD BEARS” has become the recognized and commonly used name for small, crocheted, sewn, or felted bears, dolls, and animals.  (See evidence attached to Letter of Protest).  As such, the term “THREAD BEARS” has become generic for applicant’s goods. The evidence attached demonstrates the use of the term “THREAD BEARS” for collectable sewn bears used by many individuals and entities as the generic term for these items.  Because the relevant public understands the designation “THREAD BEARS” primarily to refer to that genus of goods that are collectable sewn bears, the term is generic and must be disclaimed apart from the mark.

Please note that although applicant is the owner of the prior U.S. Registration No. 2146208 for “THREAD BEARS,” trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought.  In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Products Corp., 406 F.2d 1389, 160 USPQ 730 (C.C.P.A. 1969).  A term that was once arbitrary or suggestive may lose its distinguishing and origin denoting characteristics through use in a descriptive sense over a period of time, and come to be regarded by the purchasing public as nothing more than a descriptive designation.  In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re International Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).

Disclaimer Explained

Just as applicant was required to disclaim the phrase “THREAD TEDS,” so must applicant now disclaim the unitary phrase “THREAD BEARS.”  A combination of generic terms may result in a unitary designation that is registrable if the juxtaposition of terms is incongruous or evokes a unique commercial impression.  However, if the combination of two or more generic terms is such that each term retains its generic significance, then the combined expression is generic and thus incapable of denoting source.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE).  See also Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559 F. Supp. 1270, 218 USPQ 71 (S.D.N.Y. 1983) (AIR SHUTTLE); Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 196 USPQ 121 (D. Oregon 1976), aff'd 202 USPQ 401 (9th Cir. 1979) (SURGICENTER); In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994) (POCKET SURVIVAL TOOL); In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989) (COMPUTER SONAR); Turtle Wax Inc. v. Blue Coral Inc., 2 USPQ2d 1534 (TTAB 1987) (WASH WAX); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW & CONFERENCE). In this case, applicant’s goods are known as “THREAD BEARS” in the collectable bear industry.  As such, the combination of words is generic and must be disclaimed.

Regarding applicant’s prior registration for “THREAD BEARS,” please note that in Park 'N Fly v. Dollar Park & Fly, Inc ., 469 U.S. 189, 224 USPQ 327 (1985), the Supreme Court held that the owner of a registered mark may rely on incontestability to enjoin infringement, and that an incontestable registration therefore cannot be challenged on the ground that the mark is merely descriptive.   Here, however, the term “THREAD BEARS” is not merely descriptive but is generic for applicant’s goods.  As such, the phrase “THREAD BEARS” must be disclaimed.

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

The following cases explain the disclaimer requirement more fully:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).

Applicant has entered a disclaimer of the individual terms “THREAD TEDS” and “BEARS” apart from the mark as a whole.  However, because the term “THREAD BEARS” is generic for applicant’s goods, namely, collectable bears made out of thread, and because these terms appear together in the mark as the unitary phrase “THREAD BEARS,” this wording must therefore be disclaimed as a unit in the following format:

No claim is made to the exclusive right to use “THREAD TEDS” and “THREAD BEARS” apart from the mark as shown.

A disclaimer of the individual component words of a complete descriptive phrase is improper.  See, e.g., In re Medical Disposables Co., 25 USPQ2d 1801, 1805 (TTAB 1992); In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r Pats. 1987); American Speech-Language-Hearing Association v. National Hearing Aid Society, 224 USPQ 798, 804 n.3 (TTAB 1984); In re Surelock Mfg. Co., Inc., 125 USPQ 23, 24 (TTAB 1960).  This standard is applied strictly, and the disclaimer of individual words separately is generally appropriate only when the words being disclaimed are separated by registrable matter.  TMEP §1213.08(b).

Please note the following: Once applicant has disclaimed the words “THREAD TEDS” and “THREAD BEARS” apart from the mark, the application may proceed to be published on the Principal Register.

All issues raised in this Office Action may be resolved by calling or emailing the undersigned examining attorney (tasneem.hussain@uspto.gov) and authorizing changes consistent with the suggestions in this Office Action.  If applicant is submitting an e-mail response, please be sure to sign the name with forward slashes to indicate the authorization.  Upon calling or emailing the examining attorney and authorizing the changes, an examiner's amendment will be promptly issued.

PLEASE NOTE:  Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.

The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

General Information

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below or at Tasneem.Hussain@uspto.gov.

/Tasneem Hussain/

Trademark Examining Attorney

Law Office 105

(571) 272-8273

HOW TO RESPOND TO THIS OFFICE ACTION:

    ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.uspto.gov/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
    REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.uspto.gov/external/portal/tow.

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.

threadbears Posts: 107

Berta, since you did not post the date of your document...

Everyone should know that this was posted on 2/14/2007.  If you would like to verify, here is the link: http://tsdr.uspto.gov/documentviewer?ca … 0214133711

Everyone should also know that on 6/19/2008, the Court ruled in our favor--that it is not generic.  If you would like to verify, here is the link: http://ttabvue.uspto.gov/ttabvue/v?pno= … CAN&eno=25

As stated above, your lawyer had told you--also on 6/19/2008-- that your cancellation attempt was denied, since the Board did not find the phrase to be generic.  Here is the letter to you (which was taken from your evidence at the Trademark Office):
1362090211_blawyer.jpg

Edited to add: This evidence is obtained from the US Patent and Trademark Office.  It is public record.

threadteds ThReAdTeDs®
Posts: 347
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OFFICE ACTION (Feb. 14, 2007)

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

Serial Number  78/553324

THIS IS A FINAL ACTION

This FINAL OFFICE ACTION responds to applicant’s communication filed on December 14, 2006 in which the applicant argued against the requirement for the disclaimer of the wording “THREAD BEARS”.  The examining attorney has carefully considered the applicant's arguments but has found them unpersuasive.  For the reasons below, the requirement for the disclaimer of the wording “THREAD BEARS” is maintained and now made FINAL.  37 C.F.R. §2.64(a).

Disclaimer

Applicant has previously disclaimed the descriptive wording “THREAD TEDS” and “BEARS” apart from the mark.  Applicant must now however disclaim the generic wording “THREAD BEARS” apart from the mark as shown because it is the common name for the applicant’s goods as cited in the application, namely, “Collectables in the nature of Bears, Dolls and Animals, all the forgoing jointed and crocheted, sewn, felted and soft sculpted from various fibers and materials.”  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  Please note, the disclaimed wording remains part of the mark and the appearance of the applied-for mark will not change.

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

No claim is made to the exclusive right to use “THREAD TEDS” and “THREAD BEARS” apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

As previously explained, the Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  A disclaimer does not affect the appearance of the applied-for mark and does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

Explanation of Generic Terms

As previously discussed in the February 2, 2006 Office Action, generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.

A two-part test is used to determine whether a designation is generic:

(1) What is the class or genus of goods or services at issue?

(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

Here, the genus of goods at issue is miniature bears made out of thread.  Applicant has already disclaimed the descriptive and/or generic words “THREAD TEDS” and “BEARS.”  Applicant is the owner of the prior U.S. Registration No. 2146208 where the applicant disclaimed the generic word “BEARS” and claimed acquired distinctiveness under Trademark Act Section 2(f) for the word “THREAD” in order to register the identical goods on the Principal Register.

However, the previously attached evidence demonstrated that the term “THREAD BEARS” has become the recognized and commonly used name for small, crocheted, sewn, or felted bears, dolls, and animals.  (See evidence attached to Letter of Protest). In this case, applicant’s goods are known as “THREAD BEARS” in the collectable bear industry.  As such, the combination of words is generic and the term “THREAD BEARS” must be disclaimed.

The evidence attached demonstrates the use of the term “THREAD BEARS” for collectable sewn bears used by many individuals and entities as the generic term for these items.  As demonstrated by the attached materials obtained from applicant’s website located at www.beadwrangler.com/creature.htm, the word “thread bears” is a commonly used phrase to identify goods such as those sold by applicant.  For example, please note the following excerpt:

You will find several websites for thread crocheted bears and patterns.  Search the internet using the words "thread bears", "crocheted teddy bears, " "crocheted miniature bears" and you will  find many links and web rings.

Although applicant claims that the wording “THREAD BEARS” is not generic, the evidence attached indicates otherwise.  Because the relevant public understands the designation “THREAD BEARS” primarily to refer to that genus of goods that are collectable sewn bears, the term is generic and must be disclaimed apart from the mark.

Applicant argues that the generic term for the type of products in question are “crochet, knitted, sewn or needle felted animals.”  However, a term that serves as the common descriptor of a key ingredient, characteristic or feature of the goods is also generic and thus incapable of distinguishing source.  A term need not relate solely to the name of the goods or services in order to be held incapable of serving as an indicator of origin.  A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOCOLATE FUDGE generic for diet sodas); Miller Brewing Co. v G. Heileman Brewing Co., 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977) (LITE generic for beer), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978); In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (C.C.P.A. 1970) (CUSTOM BLENDED generic for gasoline);  In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (C.C.P.A. 1969) (PASTEURIZED for face cream incapable); Roselux Chemical Co, Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (C.C.P.A. 1962) (SUDSY generic for ammonia); In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers); In re Ricci-Italian Silversmiths, Inc., 16 USPQ2d 1727 (TTAB 1990) (ART DECO generic for flatware); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE generic for stores that sell lingerie); In re National Patent Development Corp., 231 USPQ 823 (TTAB 1986) (ULTRA PURE for interferons for medical use incapable); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE generic for mail order and distributorship services in the field of wicker furniture and accessories); In re Hask Toiletries, 223 USPQ 1254 (TTAB 1984) (HENNA 'N' PLACENTA generic of ingredients for hair conditioner); In re Bee Pollen From England Ltd., 219 USPQ 163 (TTAB 1983) (BEE POLLEN FROM ENGLAND for bee pollen incapable).

A combination of generic terms may result in a unitary designation that is registrable if the juxtaposition of terms is incongruous or evokes a unique commercial impression.  However, if the combination of two or more generic terms is such that each term retains its generic significance, then the combined expression is generic and thus incapable of denoting source.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE).  See also Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559 F. Supp. 1270, 218 USPQ 71 (S.D.N.Y. 1983) (AIR SHUTTLE); Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 196 USPQ 121 (D. Oregon 1976), aff'd 202 USPQ 401 (9th Cir. 1979) (SURGICENTER); In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994) (POCKET SURVIVAL TOOL); In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989) (COMPUTER SONAR); Turtle Wax Inc. v. Blue Coral Inc., 2 USPQ2d 1534 (TTAB 1987) (WASH WAX); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW & CONFERENCE).  Here, the combination of “THREAD” and “BEARS” does not create an expression capable of denoting source.  As the attached evidence demonstrates, many sellers of these goods use the phrase “THREAD BEARS” and thus the source is not limited to applicant.

Prior Registration and Use

Please note that although applicant is the owner of the prior U.S. Registration No. 2146208 for “THREAD BEARS,” trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought.  (Emphasis added) In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Products Corp., 406 F.2d 1389, 160 USPQ 730 (C.C.P.A. 1969).  A term that was once arbitrary or suggestive may lose its distinguishing and origin denoting characteristics through use in a descriptive sense over a period of time, and come to be regarded by the purchasing public as nothing more than a descriptive designation.  In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re International Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).

Although applicant states that “our type of product was not offered any where until we offered it on eBay in 2000,” the fact that an applicant may be the first and sole user of a merely descriptive or generic designation does not justify registration where the evidence shows that the term is merely descriptive of the identified goods and/or services.  In re Acuson, 225 USPQ 790 (TTAB 1985) (COMPUTED SONOGRAPHY descriptive of ultrasonic imaging instruments); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field); TMEP §1209.03(c).

Conclusion

The requirement that applicant disclaim the wording “THREAD TEDS” and “THREAD BEARS” is hereby made FINAL.  Please note the following: Once applicant has disclaimed the words “THREAD TEDS” and “THREAD BEARS” apart from the mark, the application may proceed to be published on the Principal Register.

Proper Response to Final Action

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by:

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).


In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

General Information

Please note that there is no required format or form for responding to this Office action.  However, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.  TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE.

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below or at Tasneem.Hussain@uspto.gov. Please note, however, that substantive matters must be addressed in a formal manner; see below for further instructions on how to respond to this Office Action.   See below for further instructions on how to respond to this Office Action.

/Tasneem Hussain/

Trademark Examining Attorney

Law Office 105

(571) 272-8273

threadteds ThReAdTeDs®
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And the last one, after Cancellation No. 92046025 has been terminated, the disclaimer for THREAD TEDS and THREAD BEARS still stands and GRANTED by Emma Petersen!   

EXAMINER’S AMENDMENT

ISSUE/MAILING DATE: 9/3/2009

OFFICE SEARCH:  The examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.   

AMENDMENT:  In accordance with the authorization granted by Emma Petersen on September 3, 2009, the application has been AMENDED as indicated below.  Please advise the undersigned examining attorney immediately if there is an objection to the amendment.  Otherwise, no response is necessary.  TMEP §707.

If the identification of goods and/or services has been amended, please note that any future amendments must be in accordance with 37 C.F.R. §2.71(a) and TMEP §1402.07(e).

Cancellation No. 92046025 has been terminated.

DISCLAIMER:

The disclaimer statement is amended to read as follows:

            No claim is made to the exclusive right to use “THREAD TEDS” and “THREAD BEARS” apart from the mark as shown.

See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).


/Marlene D. Bell/

Marlene D. Bell

Law Office 105

Trademark Examiner

(571) 272-9291

threadbears Posts: 107

Berta,
You can clearly see that in this 2009 paperwork, all of the "genericness" has been removed--because we own Thread Bears®.  As for the disclaimers--we already clarified what 'no exclusive rights' means above.

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Maybe it's time to send one another private messages if you must?

On the other hand, maybe it's a good reminder to everyone of what NOT to spend your time and energy on...

Becky

threadteds ThReAdTeDs®
Posts: 347
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dangerbears wrote:

Maybe it's time to send one another private messages if you must?

On the other hand, maybe it's a good reminder to everyone of what NOT to spend your time and energy on...

Becky


You`r right Becky, time to move on. Time will learn were this ends. 
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