UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/550976
APPLICANT: Qualia Computing, Inc.
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CORRESPONDENT ADDRESS: TODD E. STOCKWELL STOCKWELL & ASSOCIATES, PSC 861 CORPORATE DRIVE SUITE 201 LEXINGTON, KENTUCKY, 40503 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: DETECTION DIAGNOSIS TREATMENT
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CORRESPONDENT’S REFERENCE/DOCKET NO: 991-013
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/550976
The assigned examining attorney has reviewed the referenced application and determined the following.
A. 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 1105.01.
B. 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’s mark is DETECTION DIAGNOSIS TREATMENT for “medical apparatus, namely devices, products and processes for detecting, diagnosing and treating disease.” The mark immediately identifies three functions of the goods. See the applicant’s own identification of goods, which clearly states that the goods are used for the detection, diagnosis and treatment of disease. Putting these three terms back to back in a mark does not result in a separate, non-descriptive meaning. As such, the mark is merely descriptive.
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 additional substantive refusal of registration.
C. Partial Refusal – Mark Identifies a Process
With respect to the applicant’s “processes” only, registration is refused because the proposed mark, as identified in the identification of goods, merely identifies a process and would not be perceived as a trademark for the goods identified in the application. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127. See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 n.13 (TTAB 1983); In re Big Stone Canning Co., 169 USPQ 815 (TTAB 1971).
In this case, the applicant specifically states that it is, in part, seeking registration of the mark for “processes.” Thus, the mark clearly identifies, in part, a process.
Where a term is used solely to identify a process, style, method, system, or the like, it is not registrable as a trademark. A process or system is only a way of doing something, and does not generally constitute a marketable or tangible product. The name of a system or process does not function as a trademark unless it is also used to identify and distinguish the goods listed in the application, and to indicate the source of those goods. The determination of whether matter functions solely as the name of a system or process and also as a trademark is based on a consideration of the manner in which the proposed mark is used, as evidenced by the specimen and any other information of record. See In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975) (OXINITE held not to function as a trademark for a gas mixture because, based on the specimens of record, consumers would associate the mark only with a water treatment process and not with the identified goods); See also TMEP §1301.02(e).
Applicant may respond to this refusal by deleting the term “processes” from its identification of goods. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
D. Identification of Goods
The identification of goods is unacceptable as indefinite because applicant must identify each “apparatus,” “device” and “product” for which registration is sought by its common commercial name and appropriate international classification. TMEP section 804.
The applicant must rewrite the identification in its entirety, listing each good or service according to its appropriate international classification, with the international classes listed in ascending order. 37 C.F.R. Section 2.74(b). 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. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods or services listed in the present identification.
E. Additional Fees May Be Required
As discussed above, the application identifies goods that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Regards,
/Scott M. Oslick/
Trademark Examining Attorney
Law Office 108
(703) 308-9108 x117 (Telephone)
(703) 746-8108 (Fax - Official Responses Only)
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.