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  76/455166

The assigned examining attorney has reviewed the referenced application and determined the following.

 

No Conflicting Marks Noted

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.01.

 

However, the examining attorney makes the following refusal.

 

Mark is Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

 

The applicant has applied to register the mark SCD for welding devices for connecting sections of thermoplastic tubing, and welding wafer used in connection therewith.

 

The acronym “SCD” is descriptive of sequential compression devices.  See the enclosed third-party registrations and internet evidence.  Applicant’s goods are for use with sequential compression devices.  Accordingly, the examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of a use of the identified goods.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  Applicant must clarify the use of the goods.  In effect, if the goods are medical goods, Applicant should so clarify and classify accordingly.  The applicant may adopt the following identification, if accurate:  Medical equipment, namely, welding devices for connecting sections of thermoplastic tubing, and welding wafer used in connection therewith, in Class 10.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Prior U.S. Registration

If the applicant is the owner of Registration Nos. 1958498, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

Significance

The applicant must indicate whether the acronym “SCD” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).  In particular, Applicant must specify whether SCD refers to “sequential compression device.”  Applicant must also specify whether the goods are used with sequential compression devices.

 

Requirement for Information

The examining attorney requires information about the goods to determine whether all or part of the mark is merely descriptive as applied to the goods.  TMEP sec. 814.  The applicant must provide product information for the goods.  This may take the form of a fact sheet, instruction manual, or advertisement.  If unavailable, the applicant should submit the information for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, the applicant must provide a detailed factual description of the goods.

 

In all cases, the submitted factual information must make clear how the goods operate, its salient features, and its prospective customer and/or channel of trade.  This information is not readily available to the examining attorney, and is pertinent to the descriptiveness determination.  Conclusory statements from the applicant or its attorney regarding the descriptiveness standard will not be sufficient to meet this requirement for information.

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

//Caroline Fong Weimer//

Examining Attorney

Law Office 115

(703) 893-1636 ext. 411

(703) 746-6179 (FAX)

 

 

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.

Mark
        TSCD
Goods and Services
        IC 010. US 026 039 044. G & S: medical equipment, namely welding devices for connecting sections of thermoplastic medical tubing together and welding wafers for use therewith
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        74574203
Filing Date
        September 14, 1994
Publication for Opposition Date
        December 5, 1995
Registration Number
        1958498
Registration Date
        February 27, 1996
Owner Name and Address
        (REGISTRANT) TERUMO KABUSHIKI KAISHA CORPORATION JAPAN 44-1, 2-chome, Hatagaya Shibuya-ku, Tokyo JAPAN
Section 44 Indicator
        SECT44
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Affidavit Text
        SECT 15. SECT 8 (6-YR).
Live Dead Indicator
        LIVE
Attorney of Record
        WILLIAM T. BOLAND, JR.

 

Mark
        SCD SEQUEL
Goods and Services
        IC 010. US 026 039 044. G & S: sequential compression and therapeutic systems consisting of controller and tubing sets used for reducing the incidence of deep vein thrombosis. FIRST USE: 19950310. FIRST USE IN COMMERCE: 19950310
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        74671394
Filing Date
        May 8, 1995
Publication for Opposition Date
        July 23, 1996
Registration Number
        2007742
Registration Date
        October 15, 1996
Owner Name and Address
        (REGISTRANT) Kendall Company, The CORPORATION DELAWARE 15 Hampshire Street Mansfield MASSACHUSETTS 02048
Assignment Recorded
        ASSIGNMENT RECORDED
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SCD" APART FROM THE MARK AS SHOWN
Type of Mark
        TRADEMARK
Register
        PRINCIPAL
Affidavit Text
        SECT 15. SECT 8 (6-YR).
Live Dead Indicator
        LIVE
Attorney of Record
        ANNE E FITZPATRICK