Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This responds to applicant’s communication dated May 14, 2007, wherein applicant 1) submitted further arguments in response to the disclaimer requirement; and 2) addressed the examiner’s request for information.  No. 2 is acceptable and has been entered into the application record.  For the reasons set forth below, the requirement for a disclaimer is continued and restated as FINAL.  In addition, the refusal of applicant’s claim of acquired distinctiveness is continued and made FINAL.

DISCLAIMER REQUIREMENT CONTINUED AS FINAL

 

Applicant was required to disclaim the word COCHLEAR on the ground that the term is merely descriptive of the identified goods.  In response, applicant claimed acquired distinctiveness based on use of the mark in commerce for at least five years.  The refusal of the claim of acquired distinctiveness is continued and made final on the ground that the referenced term is generic for the identified goods.  The term COCHLEAR in the mark is incapable of serving as a source-identifier for applicant’s goods.  Therefore, the requirement for a disclaimer is continued and restated as final, notwithstanding applicant’s claim of acquired distinctiveness under Section 2(f), 15 U.S.C. §1052(f).

 

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).  Generic terms are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, 828 F.2d at 1569, 4 USPQ2d at 1142.

 

A two-part test is used to determine whether a designation is generic:

 

(1) What is the class or genus of goods or services at issue?

 

(2) Does the relevant public understand the designation primarily to refer to that class or genus of goods or services?

 

See H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); TMEP §1209.01(c)(i).

 

A term need not be a noun to be generic.  Miller Brewing Co. v G. Heileman Brewing Co., 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978) (LITE held generic for beer); In re Reckitt & Coleman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS held generic for soil and stain removers for use on permanent press products); TMEP §1209.01(c)(ii).

 

As indicated by the attached online dictionary excerpt, the term “cochlear” identifies something “of or relating to the cochlea of the ear; ‘cochlear implant’.”  In this capacity, the term COCHLEAR refers to a particular type, or genus, of implant.  The examiner previously provided several excerpts from an online search indicating common use of the term COCHLEAR to identify a type of implant.  Additional excerpts are attached, including references from applicant’s website defining cochlear implants.  Applicant thus far has not addressed this evidence. 

 

In its several responses, applicant instead contends that the term COCHLEAR requires an exercise of imagination to determine the nature of the identified goods.  These arguments focus at length on definitions of COCHLEA included in the initial Office action of October 2004 in which the previous examiner discussed anatomical meanings of the term.  According to the applicant, a mental pause comprising no less than seven detailed leaps of logic are required to ascertain the nature of applicant’s goods from the term COCHLEAR.  The examiner has considered this reasoning carefully and finds it unpersuasive. 

 

The determination of whether a mark is merely descriptive/generic is considered in relation to the identified goods and/or services, not in the abstract.  In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (CCPA 1978); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk” where relevant trade uses the denomination “concurrent” as a descriptor of this particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985); see TMEP §1209.01(b).  Moreover, descriptiveness/genericness is considered in relation to the relevant goods and/or services.  The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness.  In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp., 183 USPQ 318 (TTAB 1974); TMEP §1209.03(e).

 

It is presumed that consumers encountering applicant’s mark and goods are fully aware of their nature and need not ponder the anatomical interactions of applicant’s goods to arrive at this understanding.  In its response to specific inquiries by the examiner, applicant acknowledges that its goods include cochlear implants.  Applicant also acknowledges that the term “cochlear” has significance to others in its adjectival form.  The above referenced evidence confirms that this significance is that of identifying a particular genus of implant, namely, the type of implant with which applicant uses its mark. 

 

As such, there is no reason to conclude that, in applicant’s words, “imagination, though, reflection, perception or ‘mental pause’” is required to conclude that the term COCHLEAR used to identify “cochlear implants” merely refers to type of implant.  The term immediately identifies some or all of applicant’s goods by their generic name.  Accordingly, the disclaimer requirement is continued and made FINAL.

 

RESPONDING TO A FINAL OFFICE ACTION

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@uspto.gov

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.