Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/316792

 

Examining attorney Kelley Wells is now handling the prosecution of this application.

 

The section 2(d) refusal is withdrawn.

 

SECTION 2(E)(1) DESCRIPTIVENESS REFUSAL

Registration was previously refused under Section 2(e)(1) of the Trademark Act.  That refusal is repeated and made FINAL.

 

The applicant’s mark CRYOCELL in stylized for is used on goods identified as “frozen cells, excluding sperm cells, for scientific and research use” and Pharmaceutical preparations, namely deep-frozen primary neuronal cells.”

 

The applicant’s identification of goods clearly indicates that the goods are cells.  The term “CELL” names the goods. 

 

The term CRYO is a prefix which means “Cold; freezing: cryoscopy.”[1]

 

The applicant indicates that its cells are frozen.  The term CRYOCELL describes a frozen or freezing cell.  This immediately conveys the nature of the applicant’s goods. 

 

Contrary to the applicant’s statement, the examining attorney is not asserting that CRYOCELL is identical to frozen cell.  The refusal is predicated upon the fact that when the prefix CRYO-, which means “cold” or “freezing,” is combined with the generic name of the goods, CELL, and the created term CRYOCELL is used in association with frozen cells the fact that goods are frozen cells is immediately conveyed, no imagination or creativity is required to ascertain the nature of the goods.  The mark clearly describes the goods.  The refusal is based on the descriptive nature of the mark under Section 2(e)(1) of the Trademark Act.

 

The applicant argues that ascribing “frozen” to the term “CRYO” is inappropriate because the term is broader than that and would more appropriately be seen in the context of “cold.”  While the dictionary definition and the previously submitted evidence supports a finding of the term CRYO to include freezing, the examining attorney would argue that even if the applicant’s suggested definition of “cold”’ were utilized the mark is still descriptive.  If the mark connotes or conveys the idea of a cold cell, certainly cells which are frozen are also cold and the applicant’s mark conveys this descriptive nature of the goods.

 

The applicant also argues that the term CRYOCELL would suggest a range of possible associations and have various meanings.  However,  the examining attorney must consider descriptiveness in relation to the relevant goods or services.  The fact that a term may have different meanings in another context is not controlling on the question of descriptiveness.  In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979).  TMEP §1209.03(e).  Also, it is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive.  It is enough if the term describes one attribute of the goods/services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). 

 

When used on the identified goods the mark clearly conveys the descriptive feature of the goods that they are cold or frozen cells.  The refusal to register the applicant’s mark in accordance with Section 2(e)(1) of the Trademark Act is repeated and made FINAL.

 

IDENTIFICATION OF GOODS – CLASS 5

The requirement that the applicant clarify the Class 5 identification of goods is repeated and made FINAL.

 

The applicant must indicate the disease, illness or condition which the neuronal cells are used to treat.

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

 

 

/Kelley L. Wells/

Kelley L. Wells

Examining Attorney

Law Office 105

(703) 308-9105x124

(703) 872-9825 fax

ecom105@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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