UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/583995
APPLICANT: COCHLEAR LIMITED
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: COCHLEAR
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CORRESPONDENT’S REFERENCE/DOCKET NO: COCH-0013-1
CORRESPONDENT EMAIL ADDRESS: |
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 76/583995
Registration previously was refused under Section 2(e)(1) on the basis that the mark is merely descriptive. Registration also was refused based on requirements for an acceptable identification of goods and acceptable declaration. Applicant responded by arguing against the refusal under Section 2(e)(1) and alternatively requesting registration under Section 2(f), and by amending the identification of goods, and providing a new declaration. Applicant also submitted an Amendment to Allege Use (AAU). The AAU is acknowledged and accepted. The amended identification of goods and substitute declaration are accepted and made of record.
Mark Is Merely Descriptive – Section 2(e)(1)
However, the proposed mark is incapable of serving as a source-identifier for applicant’s goods and/or services. Therefore, the refusal of registration under Section 2(e)(1) is continued, notwithstanding applicant’s claim of acquired distinctiveness under Section 2(f), 15 U.S.C. §1052(f).
As noted above, 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. §1052(e)(1); TMEP §§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 and/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 §1209.01(b). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).
The applicant applied to register the mark COCHLEAR for the following goods:
Medical electronic apparatus, namely, implantable prosthetic hearing devices and associated accessories and monitoring equipment, namely, programmable prosthetic hearing implants, multi-channel implantable hearing prosthesis; interface devices for programming prosthetic hearing implants in the nature of computerized diagnostic programming systems comprised primarily of medical electrode arrays and receiver-stimulator modules, promontory stimulators, speech processors, audio input selectors, cables, headsets, headset coils, headset magnets, headset inserts, headset earhooks, headset microphones, and telephone adaptors.
The term COCHLEAR refers to “a spiral-shaped cavity of the inner ear that resembles a snail shell and contains nerve endings essential for hearing.”[1] It also identifies a type of implant that helps one hear. Several articles were attached to the prior Office Action, which showed that “COCHLEAR” identifies a type of hearing implant. The articles were obtained a via search on the Google® search engine for the terms “cochlear” and “implant.” The search results included over 94,000 articles.
The examining attorney now attaches additional articles from the examining attorney's search of the Internet using the GOOGLE® search engine in which “cochlear implant” appeared in about 227,000 stories. See attachments. The submitted stories are a representative sample of the stories retrieved by the indicated search. Sample search summary page(s) and representative stories from the search have both been provided. Search result summary pages have probative value since search engine results as well as Web site contents are equally accessible to the consuming public and both constitute evidence that the public may be exposed to the term. See In re Fitch ICBA Inc., 64 USPQ2d 1058 (TTAB 2002). Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. TMEP §710.01(b). In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998). With regard to evidence the Trademark Trial and Appeal Board has also stated that newswire stories have probative value because of the increasing use of the personal computer to obtain news and information, see In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003); and that foreign publications and English language websites have probative value since the Internet is a tool widely available to all. See In re Remacle, 66 USPQ2d 1222 (TTAB 2002) at note 5.
This evidence shows that the proposed mark “COCHLEAR” immediately identifies a type of hearing implant and what the applicant’s accessories and equipment are used in connection with. Thus it appears generic. Significantly, use of the generic term “implant” in the examining attorney’s search helps to show the direct connection between applicant’s mark and the goods described in the application.
Based upon the foregoing, it is clear that the term COCHLEAR refers to a type of hearing implant. Applicant’s goods include hearing implants their accessories and monitoring systems. Accordingly, the refusal of registration on the Principal Register under Section 2(e)(1) is continued.
Distinctiveness Claim Under Section 2(f)
On page six of applicant’s response, applicant indicated that a verified statement was enclosed to support the assertion that the mark has become distinctive as a result of applicant’s substantially exclusive and continuous use of the mark in commerce for the five years preceding the date of the statement. However, no such declaration was enclosed. The examining attorney notes that a substitute declaration for the application was enclosed. However, it included no distinctiveness claim. A second declaration was included in applicant’s Amendment to Allege Use, which also did not include a distinctiveness claim. Therefore the claim is unacceptable.
However, even if the supporting declaration were received, the claim of distinctiveness under Section 2(f) would be unacceptable. The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985). More evidence is needed where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods and/or services would be less likely to believe that it indicates source in any one party. See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Associates, Inc., 1 USPQ2d 1657 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984). However, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark. Such a designation cannot become a trademark under any circumstances. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195 USPQ 281 (7th Cir. 1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978).
In this case, the attached evidence shows the mark to be highly descriptive and it appears that it may be generic. Thus, additional actual evidence would be necessary in this case to support a claim based upon 2(f) of the Trademark Act.
Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant has any questions, please do not hesitate to contact the undersigned.
/mld/
Maureen L. Dall
Trademark Attorney, Law Office 110
United States Patent and Trademark Office
Phone: 571-272-9714
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.