PURE-PULSE

Response to Section 2(e)(1) Refusal — Mere Descriptiveness

Applicant respectfully traverses the refusal under Trademark Act Section 2(e)(1) and submits that the mark PURE-PULSE, considered as a whole and in relation to the identified goods, is at most suggestive and is therefore registrable on the Principal Register without a showing of acquired distinctiveness.

A mark is merely descriptive only if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); TMEP §1209.01(b). By contrast, a mark that requires imagination, thought, or perception to reach a conclusion as to the nature of the goods is suggestive, not descriptive. Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004); Stix Prods., Inc. v. United Merchs. & Mfrs., Inc., 295 F. Supp. 479, 488, 160 USPQ 777, 785 (S.D.N.Y. 1968); TMEP §1209.01(a). Incongruity in a composite is a significant indication of suggestiveness, see In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB 1978); TMEP §1209.01(a), and the analysis must rest on the commercial impression created by the mark as a whole, not on its elements dissected and considered in isolation. Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-46 (1920); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1252-53, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012) — both authorities on which the Office Action itself relies. Finally, where there is doubt on the question, the doubt is resolved in the applicant's favor and the mark is published for opposition. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Gourmet Bakers, Inc., 173 USPQ 565, 565 (TTAB 1972).

PURE-PULSE does not clear the "immediately conveys" threshold. The mark is a coined, hyphenated, alliterative compound that appears in no dictionary and that the record does not show to be a recognized phrase in the trade. Before a consumer can extract any product information from it, he or she must complete a chain of mental steps. First, the consumer must select among the meanings of PULSE — whose primary, everyday significance to American consumers is the rhythmic beating of the heart — and settle on the specialized agronomic sense of edible legume seeds. The Office Action attaches a dictionary definition only for PURE; it offers no definition of PULSE and no evidence that ordinary purchasers first understand the word in its legume sense. [APPLICANT TO CONFIRM: submission of a dictionary excerpt for "pulse" showing the cardiovascular sense as the primary definition, as an exhibit.] Second, the consumer must resolve what PURE would assert about the goods. The examining attorney's own materials frame that meaning in the alternative: the attached definition gives "free of dirt, pollutants, infectious agents, or other unwanted elements," while the Office Action describes goods that "contain and/or are minimally processed" pulse flours, and elsewhere goods that "are or contain pure pulse." A purported descriptive meaning that must be stated in the alternative — contaminant-free? unadulterated? minimally processed? composed entirely of pulse? containing some pulse? — is not a meaning the mark conveys "immediately." Third, the consumer must map that indeterminate proposition onto an identification that extends well beyond pulse products: it includes soy flour, soy chips, soy grits, soy meal, egg replacers, and "flour" without limitation, in addition to the chickpea and fava bean items. Pulses are conventionally understood as the dry edible seeds of crops such as chickpeas, lentils, and faba beans; soybeans, as oilseeds, fall outside that category, and an egg replacer is not a pulse at all. [APPLICANT TO CONFIRM: whether to submit a supporting reference, e.g., an FAO or industry definition of "pulses," as an exhibit.] A mark that at most invites the purchaser to speculate about the composition of some of the goods, through several stages of inference, is the definition of a suggestive mark.

The composite also projects a commercial impression greater than, and different from, the sum of its parts. Applied to food and nutrition ingredients, PURE-PULSE readily calls to mind the everyday meaning of "pulse" — the heartbeat — so that the mark evokes clean vitality and wholesome energy: goods for consumers who want to keep their pulse pure. Because that second, non-descriptive meaning is apparent from the mark itself as applied to these goods, PURE-PULSE is a double entendre and is not merely descriptive. In re Colonial Stores, Inc., 394 F.2d 549, 552-53, 157 USPQ 382, 385 (CCPA 1968) (SUGAR & SPICE not merely descriptive of bakery products because it also evokes the familiar nursery rhyme); TMEP §1213.05(c). The alliterative, hyphenated structure reinforces the unitary impression; compare In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983) (SNO-RAKE suggestive, noting the composite's incongruity and the absence of competitor need for the term).

The evidence attached to the Office Action does not establish otherwise:

• The ahdictionary.com excerpt defines PURE in isolation. Under Beckwith and DuoProSS — the anti-dissection authorities the Office Action itself cites — a definition of one element cannot carry the refusal; the question is what the composite PURE-PULSE conveys as a whole.
• The grainprocessing.com excerpt is applicant's own announcement introducing its PURE-TEIN and PURE-PULSE branded ingredients. That is trademark use by the source itself — the term deployed as a product name in a product launch — and it shows the designation functioning as a source identifier, not third parties using "pure pulse" as everyday descriptive language.
• The jimtrade.com excerpt concerns a protein-enriched pure sorghum product. Sorghum is a cereal grain, not a pulse. At most this shows the laudatory word "pure" used with an entirely different grain; it is not evidence that PURE-PULSE describes applicant's goods.
• The bakerpedia.com and techsciresearch.com excerpts are technical and market literature addressing pulse flour as a category. The incidental proximity of two common English words within lengthy documents does not demonstrate that the unitary, hyphenated composite PURE-PULSE carries an immediate, recognized descriptive meaning for the relevant purchasers, and none of the excerpts shows any third party using PURE-PULSE as a descriptive phrase or needing that coined compound to describe its own goods.

Applicant further notes that the Class 1 goods are expressly limited to flours "for industrial purposes." The relevant purchasers for those goods are commercial formulators who buy against technical specifications; for such purchasers the mark serves as a source identifier, and any product information is obtained from the specification, not puzzled out of an alliterative coinage.

Solely in the alternative, and expressly without conceding that PURE-PULSE is merely descriptive of any of the identified goods, applicant notes two fallback positions. First, applicant reserves the right to claim acquired distinctiveness under Section 2(f), including under TMEP §1212.09(a) as applicable to applications filed under Section 1(b). [APPLICANT TO CONFIRM: the length and nature of any use in commerce of PURE-PULSE or of related PURE-formative marks on the same or related goods, and any sales and advertising figures that would support a Section 2(f) claim.] Second, applicant acknowledges the examining attorney's advisory that, because this application was filed under Section 1(b), amendment to the Supplemental Register would become available only after the timely filing of an acceptable amendment to allege use under 37 C.F.R. §2.76, and applicant reserves the right to pursue that amendment at the appropriate time. TMEP §§816.02, 1102.03. Neither alternative is an admission; each is preserved only should the refusal be maintained.

Because PURE-PULSE as a whole requires imagination, thought, and perception to yield any conclusion about the goods, conveys a distinct commercial impression beyond its constituent words, and is unsupported by evidence of descriptive use of the composite, the mark is at most suggestive. At a minimum, the record presents doubt, and doubt must be resolved in applicant's favor. In re Merrill Lynch, 828 F.2d at 1571, 4 USPQ2d at 1144. Applicant therefore respectfully requests that the Section 2(e)(1) refusal be withdrawn and that the mark be approved for publication.

Conclusion

For the foregoing reasons, applicant respectfully requests that the refusal(s) be withdrawn, the requirement(s) be deemed satisfied, and the application be approved for publication.

Respectfully submitted, [ATTORNEY NAME] [FIRM] [DATE] Attorney for Applicant