UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/583996

 

Registration previously was refused based upon requirements for an acceptable declaration and a disclaimer.  Applicant responded by providing an acceptable declaration, which has been made of record.  Applicant also argued against the disclaimer requirement.  The examining attorney carefully considered these arguments but found them unpersuasive.  Thus, the following requirement is now made FINAL: requirement for a disclaimer of “COCHLEAR.”  37 C.F.R. §2.64(a).

 

Disclaimer

Applicant must disclaim the descriptive wording “COCHLEAR” apart from the mark as shown because it merely describes a feature of applicant’s goods, namely that they will be used in connection with cochlear implants. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). 

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

In this case, “cochlear” is the name of a type of implant or hearing aid named after the cochlear potion of the ear, which is a spiral-shaped cavity of the inner ear that resembles a snail shell and contains nerve endings essential for hearing.[1]  In this regard, the examining attorney refers to the excerpted articles from the examining attorney's search of the Internet using the GOOGLE® searches engine in which “cochlear implant batteries” appeared in almost 300 stories and the term “cochlear implant” appeared in 228,000 stories.  These stories demonstrate that “cochlear” is a type of implant and that “cochlear batteries” are batteries used for cochlear implants.  Significantly, one of the attached excerpts appears to be directly from applicant’s website.  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.

 

Based upon the foregoing, it is clear that “COCHLEAR” is descriptive of the goods as it describes a type of battery and the intended use or purpose of the batteries and chargers or rechargers therefor.  In light of this, applicant must provide the required disclaimer.  The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “COCHLEAR” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

This requirement is made FINAL.

Response  

 

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: 

 

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

 

(2)  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 matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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

 

NOTICE:  FEE CHANGE   

 

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:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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.