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. 

 

This Office Action responds to applicant’s letter dated September 12, 2003.  In its response applicant argued against the refusal based on descriptiveness under Section 2(e)(1).  The examining attorney has considered the applicant's arguments as to the descriptiveness of the mark carefully but has found them unpersuasive.  For the reasons discussed below, the refusal under Section 2(e)(1) is maintained and now made FINAL.  

 

Statutory Refusal – Trademark Act Section 2(e)(1)

 

Registration was initially refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the mark for which registration is sought is merely descriptive of an element or elements of the identified goods.  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 or services.  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). 

 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the services.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  Applicant's mark is AIRVAC            for “medical and surgical device, namely a device for removing air from blood oxygenation system during cardiac surgical procedures”. 

 

The applicant argues that the mark has been dissected by the examining attorney, that the examining attorney has not considered the mark as a whole and that it is unitary and therefore by implication the two terms used together create a suggestive mark.  The examining attorney initially considered the mark as a whole as does so now.  Nevertheless, the mark consists of two descriptive word elements that have been combined.  The dictionary definitions of the compound elements previously provided remain instructive as to the descriptiveness of the mark.  It has long been held that a mark which combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985).  This is not the case here.  The combination of the two descriptive terms in this case does not in any way create a separate, nondescriptive meaning as it immediately informs the purchaser of a feature, function, use and/or characteristic of the goods.

 

This is especially true when looking at the mark in relationship to the services for which the mark is used.  The mark has a distinct and plain meaning.  However, the applicant argues that the word element “vac” has many meanings some of which are not related to the goods at issue.  The fact that a term or terms 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).  One must consider a mark not in abstract, but in relation to services for which registration is sought, in the context in which designation is being used, and the possible significance that term would have to average prospective purchaser in determining whether designation is merely descriptive.  In applying this test it is clear that the word element VAC is short for vacuum.  Additionally a description of the device states “The first step toward that downsizing is the use of an active air removal system, known as the AirVac. Developed by engineers at CardioVention, the disposable AirVac employs an air sensor and a solenoid valve. When air is sensed, the AirVac momentarily opens the solenoid valve, thus allowing air to be removed through a vacuum line.”  In this context this word element combined with the other word element makes the mark descriptive as it immediately informs the purchaser of a feature, function, use and/or characteristic of the goods.

 

Additionally the applicant specimens of record are illustrative as it shows the use of the mark in commerce and the way in which the mark is presented to the purchasing public.  The specimens show the mark as AirVac.  Clearly anyone seeing the mark displayed in this form would decern to elements combined and when used in connection with the identified goods would be immediately informed of a feature, function, use and/or characteristic of the goods.

 

Based upon the evidence provided and discussed herein the examining attorney finds that the mark AIRVAC is merely descriptive of the applicant’s goods as it immediately informs the purchaser/user of a feature, function, characteristic, purpose and/or use of the applicant’s goods.  Therefore, the examining attorney refuses registration based on descriptiveness under Section 2(e)(1) and this refusal is now made FINAL. 

 

Responding to a FINAL Office Action

 

Please note that the only appropriate responses to a final action are either

 

(1)   compliance with the outstanding requirements, if feasible, or

 

(2)   filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section

      2.64(a). 

 

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. Section 2.65(a).

 

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 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.

 

Status Information

 

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.

 

/Jeffrey S. DeFord/

 

Jeffrey S. DeFord

Examining Attorney

United States Patent & Trademark Office

Law Office 115

(703) 308-9115 x 197