| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76486412 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
| Applicant responds herein to the Examining Attorney's refusals based upon the opinion that the mark identifies a technique and that the mark is merely descriptive. Applicant argues that the mark would be and is perceived as a service mark and is not merely descriptive. Section 1127 of the Act states that a service mark identifies and distinguishes the services of one person, including a unique service, from the services of others and indicates the source of the services. Applicant's mark does exactly that. It identifies applicant's services from the services of others. The Act does not forbid the name of a medical technique from becoming a trademark. The technique employed by the applicant is a medical service to his various patients. Applicant represents that it is he who invented the name NCR and was the first to use such in commerce for these medical services. Applicant argues that the merely descriptive refusal is unwarranted. "NCR," the mark herein, the acronym for applicant's services Neurocranial Restructuring, is not merely descriptive of the services rendered by applicant to his patients. Applicant argues that Neurocranial Restructuring is an arbitrary and fanciful name for these medical services and thus registrable under the Act. It follows that the acronym NCR should also be registrable. Applicant's services herein are described as " a physical medicine therapy that utilizes external massage techniques and internal cranial manipulation with the use of an endonasal balloon." How Neurocranical Restructuring and NCR can be considered merely descriptive of those services in very unclear. "Cranial manipulation" does occur in the delivery of the services, but the marks Neurocranial Restructuring and NCR do not merely restate or repeat this concept. The Examining Attorney's position also seems to be that because others use the term NCR and Neurocranial Restructural that that somehow vitiates applicant's right to ownership. As stated above, Applicant represents that it is he who invented the name NCR and was the first to use such in commerce for these medical services. Applicant's position is that other users of the name are doing so without his authorization. As this responds to the Examining Attorney's concerns, applicant respectfully requests that this applicant's mark be published for opposition. | |
| CORRESPONDENCE SECTION | |
| NAME | Mark Falkin |
| CONFIRM NAME | Mark Falkin, Attorney @ Law |
| STREET | 2604 W. 49 1/2 Street |
| CITY | Austin |
| STATE | TX |
| ZIP/POSTAL CODE | 78731-5606 |
| COUNTRY | USA |
| PHONE | 512-560-4950 |
| FAX | 512-458-4688 |
| mark@trademarkfalkin.com | |
| AUTHORIZED TO COMMUNICATE VIA E-MAIL | Yes |
| SIGNATURE SECTION | |
| SIGNATURE | /Mark Falkin/ |
| SIGNATORY NAME | Mark Falkin |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATORY DATE | 01/07/2004 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jan 07 16:24:53 EST 2004 |
| TEAS STAMP | USPTO/OA-XXXXXXXXX-200401 07162453083098-76486412-2 0091d0b8cbe4586c3cd399745 deef62cf-N-N-200401071623 19519527 |
| PTO Form 1966 (Rev 9/2002) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76486412 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
| Applicant responds herein to the Examining Attorney's refusals based upon the opinion that the mark identifies a technique and that the mark is merely descriptive. Applicant argues that the mark would be and is perceived as a service mark and is not merely descriptive. Section 1127 of the Act states that a service mark identifies and distinguishes the services of one person, including a unique service, from the services of others and indicates the source of the services. Applicant's mark does exactly that. It identifies applicant's services from the services of others. The Act does not forbid the name of a medical technique from becoming a trademark. The technique employed by the applicant is a medical service to his various patients. Applicant represents that it is he who invented the name NCR and was the first to use such in commerce for these medical services. Applicant argues that the merely descriptive refusal is unwarranted. "NCR," the mark herein, the acronym for applicant's services Neurocranial Restructuring, is not merely descriptive of the services rendered by applicant to his patients. Applicant argues that Neurocranial Restructuring is an arbitrary and fanciful name for these medical services and thus registrable under the Act. It follows that the acronym NCR should also be registrable. Applicant's services herein are described as " a physical medicine therapy that utilizes external massage techniques and internal cranial manipulation with the use of an endonasal balloon." How Neurocranical Restructuring and NCR can be considered merely descriptive of those services in very unclear. "Cranial manipulation" does occur in the delivery of the services, but the marks Neurocranial Restructuring and NCR do not merely restate or repeat this concept. The Examining Attorney's position also seems to be that because others use the term NCR and Neurocranial Restructural that that somehow vitiates applicant's right to ownership. As stated above, Applicant represents that it is he who invented the name NCR and was the first to use such in commerce for these medical services. Applicant's position is that other users of the name are doing so without his authorization. As this responds to the Examining Attorney's concerns, applicant respectfully requests that this applicant's mark be published for opposition. | |
| Correspondence Address Change | |
| Applicant proposes to amend the following: | |
| Original: MARK G. FALKIN 2604 W 49 1/2 ST STE 1000 AUSTIN TX 78731-5606 | |
| Proposed: Mark Falkin of Mark Falkin, Attorney @ Law, having an address of Suite 1000 2604 W. 49 1/2 Street Austin, TX USA 78731-5606, whose e-mail address is mark@trademarkfalkin.com, whose phone number is 512-560-4950 and whose fax number is 512-458-4688. | |
| Response Signature | |
| Signature: /Mark Falkin/ Date: 01/07/2004 | |
| Signatory's Name: Mark Falkin | |
| Signatory's Position: Attorney for Applicant | |
| Mailing Address: | |
| Mark Falkin | |
| Mark Falkin, Attorney @ Law | |
| Suite 1000 | |
| 2604 W. 49 1/2 Street | |
| Austin, TX 78731-5606 | |
| Serial Number: 76486412 | |
| Internet Transmission Date: Wed Jan 07 16:24:53 EST 2004 | |
| TEAS Stamp: USPTO/OA-XXXXXXXXX-20040107162453083098- 76486412-20091d0b8cbe4586c3cd399745deef6 2cf-N-N-20040107162319519527 |