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  76/406740

 

This letter follows the May 12, 2003 Office action in this case and supersedes the prior action. Please note, upon further examination of the file, the examiner notes as follows.

 

Disclaimer Must Include “People”

 

At issue in this case was the disclaimer of “REPAIR MANAGEMENT.” Please note, while no disclaimer of “PEOPLE” was requested in the first Office action, it is clear from a review of the case law that such a disclaimer must be made. As shown in the attached opinion, the term “PEOPLE” has been held to be generic with regard to the applicant, whose organization consists of “people” who render the applicant’s services. In re Career Employment Services, Inc., 219 USPQ 951 (TTAB 1983). In that case, the applicant appealed a refusal to register “THE PROFESSIONAL HEALTH CARE PEOPLE” on the Supplemental Register for “providing temporary employment services for nurses, nurses aids and other medical personnel.” The Board affirmed the refusal, noting that “PEOPLE” referred to the applicant’s employees and that the term was generic. To wit:

 

Applicant's organization consists of people who are trained to place nurses, nurses aids and other medical personnel into positions where they render health care services to others.  That is, applicant's staff consists of people knowledgeable of the professional health care field who provide suitable medical personnel to desiring individuals and organizations.  Therefore, the designation THE PROFESSIONAL HEALTH CARE PEOPLE aptly names applicant's organization and as such is the generic or common descriptive name of applicant's services.  The phrase is therefore incapable of indicating source of applicant's services and distinguishing them from those of others.  As a generic term, this phrase should be freely available to competitors to use to identify their employees as professional health care people.

 

See In Re Career Employment Services at 952.

 

This case appears to be analogous. Here, as in Career Services, the term “PEOPLE” clearly refers to the applicant’s employees and the providers of its services. As such, the term is must be disclaimed. This requirement is maintained even in light of the applicant’s proffered Section 2(f) claim as the term is generic.

 

Disclaimer Required

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

            No claim is made to the exclusive right to use “REPAIR MANAGEMENT PEOPLE” apart from the mark as shown.

 

All other refusals and requirements are maintained.

 

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.

 

 

John T. Lincoski /JTL/

Trademark Attorney

Law Office 113

(703)308-9113 ext. 286

John.Lincoski@USPTO.GOV

 

 

In re Career Employment Services, Inc., 219 USPQ 951 (TTAB 1983)

Headnotes

 

TRADEMARKS

1. Marks and names subject to ownership -- Descriptive -- Particular marks    (§ 67.5081)

"The Professional Health Care People" is generic or common descriptive name for providing temporary services for nurses, nurses aides, and other medical personnel.

2. Marks and names subject to ownership -- Descriptive -- In general    (§ 67.5071)

Generic or common descriptive phrase is incapable of indicating source of applicant's services and distinguishing them from those of others; generic term should be freely available to competitors to use.

 

Case History and Disposition:

                                                           Page 951

Appeal from Trademark Examining Attorney.

Application for registration of trademark of Career Employment Services, Inc., Serial No. 208,604, filed Mar. 23, 1979.  From decision refusing registration, applicant appeals.  Affirmed.

Attorneys:

Bauer & Amer, Mineola, N.Y., for applicant.

Judge:

Before Allen, Simms, and Krugman, Members.

Opinion Text

Opinion By:

Simms, Member.

Applicant, Career Employment Services, Inc., a New York corporation, has appealed from the final refusal of the Trademark Examining Attorney to register on the Supplemental Register the designation THE PROFESSIONAL HEALTH CARE PEOPLE for "providing temporary employment services for nurses, nurses aids and other medical personnel." 1 The Examining Attorney argues that the phrase sought to be registered is both the apt descriptive name for the type of person applicant provides through its employment agency and for the employees who are on applicant's staff because they are skilled in knowledge of the health care field.  Applicant, on the other hand, argues that the designation is sufficiently arbitrary and incongruous that it is capable of distinguishing applicant's services from those of others. It is applicant's position that the phrase is intended to and does refer to applicant as the source of professionals in the health care field since the word "PEOPLE" refers to applicant as the source of the employees who are being furnished but not the employees themselves.

On the specimens of record, a brochure describing applicant's services, the designation sought to be registered is displayed as follows:

                                                           Page 952

 

[Unavailable graphic material set at this point contains the text shown below.  To view graphics, see text in hard copy or call BNA PLUS at 1-800-452-7773 or 202-452-4323.]

HEALTH FORCE: THE PROFESSIONAL HEALTH CARE PEOPLE 

In view of the manner in which the asserted mark is displayed, and from other information contained on the specimens, we are inclined to agree with applicant that the words THE PROFESSIONAL HEALTH CARE PEOPLE refer to applicant's employees rather than the people that applicant places into jobs through its services, and would be so perceived by the purchasers of applicant's services.  Even so, we do not believe that this phrase is capable of distinguishing applicant's services from those of others.

The specimens reveal that applicant's staff is comprised of people, whom applicant calls "professionals," who are experienced in the health care field.

Health Force® has earned its reputation for excellence in the health care field by providing superior patient care personnel to hospitals, nursing homes and private homes on an "as needed" basis.

Under the direct supervision of experienced Registered Nurses on our Health Force® staff, utmost care is taken to assure the highest professional standards at all times * * *

When someone close needs nursing care at home, or away from home, call us right away -- night or day.  We operate on a 24-hour basis.

You'll speak to a professional.  Someone who can quickly determine the skills needed for your case.  Someone who appreciates your emotional strain, and takes time to send the person most compatible with the patient, the family and the environment * * *

Elsewhere, the brochure refers to the staff as "The 'Pros' Who Care."

[1][2] Applicant's organization consists of people who are trained to place nurses, nurses aids and other medical personnel into positions where they render health care services to others.  That is, applicant's staff consists of people knowledgeable of the professional health care field who provide suitable medical personnel to desiring individuals and organizations.  Therefore, the designation THE PROFESSIONAL HEALTH CARE PEOPLE aptly names applicant's organization and as such is the generic or common descriptive name of applicant's services.  The phrase is therefore incapable of indicating source of applicant's services and distinguishing them from those of others.  As a generic term, this phrase should be freely available to competitors to use to identify their employees as professional health care people. See: Professional Economics Incorporated v. Professional Economic Services, Inc., 205 USPQ 368  (TTAB 1979) (where the Board held, among other things, that the designation PROFESSIONAL ECONOMIC SERVICES was the apt descriptive term and therefore a readily understood name for registrant's "financial consulting services for professional men, particularly doctors.")

 Decision 

The refusal of registration is affirmed.

Footnotes

 

Footnote 1.  Serial No. 208,604, filed March 23, 1979, claiming use since June 10, 1977.  The application was amended to the Supplemental Register on July 7, 1980.

 

 

 

- End of Case -