Response to Office Action

Section 2(e)1 - Descriptive Mark Refusal

            The Office Action of January 12, 2005 refused registration of Applicant's trademark on the grounds that "the proposed mark merely describes the characteristics, purpose and/or function of applicant's goods and/or services."  Reconsideration is respectfully requested based on the fact that the mark is suggestive, rather than descriptive.

            Refusal to register under 15 U.S.C. section 1052(e)(1) is limited to those cases where a mark is "merely descriptive" of the goods.  Marks which are, instead, suggestive of the goods, are entitled to the same protection accorded arbitrary and fanciful marks, and are fully and immediately registerable.  See Trademark Manual of Examining Procedure ("TMEP") § 1209.01(b) ("A mark which is suggestive is registerable on the Principal Regis­ter.").  See also Keebler Co. v. Rovira Biscuit Corp., 624 F. 2d 366 (C.A. Puerto Rico 1980); Telemed Corp. v. Tel-Med, Inc., 588 F. 2d 213 (C.A. Ill. 1978); J. Thomas McCarthy, Trademarks and Unfair Competition § 11.62 (1996).

            A mark is considered suggestive of the goods, rather than descriptive, if it suggests rather than describes a characteristic, quality or ingredient of the goods.  Keebler Co. v. Rovira Biscuit Corp., 624 F. 2d 366 (C.A. Puerto Rico 1980); Soweco, Inc. v. Shell Oil Co., 617 F. 2d 1178 (C.A. Tex. 1980); Telemed Corp. v. Tel-Med, Inc., 588 F. 2d 213 (C.A. Ill. 1978).  The cases conclude that a mark is suggestive if imagination, thought, or perception is required to reach a conclusion on the nature of the goods.  In contrast, a mark is descriptive if it immediately conveys to one seeing or hearing it knowledge of the ingredients, qualities or characteristics of the goods with which it is used.  Application of Quik-Print Copy Shops, Inc., 616 F. 2d 523 (Cust. & Pat. App. 1980); Educational Development Corp. v. Economy Co., 562 F. 2d 26 (C.A. Okl. 1977).  The Trademark Manual of Examining Procedure concurs.  See TMEP § 1209.01(a).

            In the instant case, the UTI-CARE mark merely suggests certain attributes of the goods, if, in fact, it goes that far.  It does not describe those characteristics.  The UTI-CARE mark does not immediately convey to one seeing or hearing it knowledge of the ingredients, qualities or characteristics of the goods.  Even with imagination, thought or perception, as required for a suggestive mark, many will be unable to identify the character of the goods.  This conclusion is supported by the following: 

                        a.  The goods in the instant case consist of homeopathic pharmaceuticals for use in the relief of minor urinary tract infections.  Notably, neither the words "homeopathic pharmaceuticals," nor the words "urinary tract infections," appears anywhere in the UTI-CARE mark.  Furthermore, neither the word UTI nor the word CARE describe or even suggest that homeopathic pharmaceuticals are involved.  Consumers have no way of knowing the product is associated with or consists of homeopathic pharmaceuticals, or that it is in any way related to health care products for urinary tract infections based on the trademark.  There is, accordingly, no indication as to the nature or character of the goods as derived from the mark.  See i.e., Ex parte Heatube Corp., 109 USPQ 423 (Comm. Pats. 1956) (trademark HEATUBE for electrical heating tubes was not descriptive because mark did not use word "electrical").

                        b.  The word CARE does not have a single accepted meaning, but instead has multiple different meanings.  The word CARE, as defined in Merriam-Webster's online dictionary, can be used as a verb or a noun.  The word CARE can mean:  (i) "suffering of mind," (ii) "a disquieted state of mixed uncertainty, apprehension and responsibility," (iii) "painstaking or watchful attention," (iv) "regard coming from desire or esteem" (v) "charge, supervision," (vi) "a person or thing that is an object of attention, anxiety or solicitude," (vii) "to feel trouble or anxiety" (viii) "to give care," or (ix) "to have a liking, fondness or taste."  Merriam-Webster's Online located at http://www.m-w.com/cgi-bin/dictionary, last visited July 11, 2005.  Furthermore, the word UTI also does not have a single accepted meaning, but instead has multiple different meanings.  The evidence provided by the Examiner and found at www.acronymfinder.com illustrates the word UTI, in addition to Urinary Tract Infection, may, in addition to others, mean: (i) "Under the Impression," (ii) "Underground Technology, Inc.," (iii) "United Telecom Incorporated," (iv) "Universal Text Interchange," (v) "Universal Transport Interface," or (vi) "User Test Instrumentation."   Notably, a mark with multiple meanings is not descriptive, but is, instead, suggestive, or fanciful and arbitrary.  West & Co., Inc. v. Arica Institute, Inc., 557 F. 2d 338 (C.A.N.Y. 1977) (term "psychocalisthenics" was susceptible of multiple interpretations and therefore suggestive); Security Center, Ltd. v. First National Security Centers, 222 USPQ 959 (TTAB 1986).  Where there are multiple meanings, the mark can not "immediately convey knowledge of the ingredients, qualities or characteristics of the goods," but can, at best, merely suggest certain attributes.  As such, both the words UTI and CARE are suggestive.

                        c.  None of the definitions for the word CARE used as a verb or as a noun, as set forth above, include any reference to homeopathic pharmaceuticals.  As such, this indicates the mark is not descriptive, but is, at worst suggestive.

                        d.  The word UTI cannot possibly "immediately convey knowledge of the ingredients, qualities or characteristics of the goods" where, as here, it can be associated with a wide variety of products.  In the instant case, the word UTI, used as a noun, could suggest a countless variety of products.  As examples, it could suggest a reference to computer user interface or transport technology, or a corporate name.  While the word UTI may suggest certain attributes of the goods, it does not "immediately convey knowledge of the ingredients, qualities or characteristics."  Instead, a consumer would have to exercise "imagination, thought or perception" to derive a meaning or product from the word UTI.  As such, it poses a classic case for qualification as a suggestive, rather than descriptive, mark. 

                        e.  Even assuming the word UTI were descriptive (which we do not believe to be the case), it is not descriptive when used together with the word CARE.  Service Merchandise Co. v. Service Jewelry Stores, Inc., 737 F. Supp. 983 (S.D. Tex. 1990); In re Calspan Technology Products, Inc., 197 USPQ 647 (TTAB 1977).  As used together, they do not "immediately convey knowledge of the ingredients, qualities or characteristics of the goods," but at best require "imagination, thought or perception" to derive a meaning, thereby rendering the mark suggestive, rather than descriptive. 

                        f.  The mark will be used by Applicant as a trademark to identify source or origin.  The use will be in a dominant, bold face, attention-getting format.  The type will be considerably larger than that for other text on the containers, tags and labels.  As such, its use will distinguish it immediately as a trademark, identifying source or origin, rather than a mere descriptive phrase in smaller less noticeable type and placement.  Such use will render the mark suggestive, arbitrary or fanciful, rather than descriptive.

                        g.  Prior United States Patent and Trademark office precedent supports a finding of suggestiveness, rather than descriptiveness.  As an example, the mark UTI PLUS, identified as serial number 75192940 and registration number 2229886, is currently registered on the Principle Register for use with the same type of products as in the instant case, namely relief of symptoms of urinary tract infections.  The mark was approved for registration despite use of the word UTI, together with a disclaimer that no claim is made to the exclusive right to use "UTI" apart from the mark as shown.

                        h.  Numerous cases support the conclusion that the UTI-CARE mark is suggestive rather than descriptive.  All marks listed below were held to be suggestive, rather than descriptive.  See Correct Printing Co. v. Ramapo River Printing Co., 16 F. Supp. 573 (D.C.N.Y. 1936) (AUTOMATIC as trademark for return post card folder); Cullman Ventures, Inc. v. Columbian Art Works, Inc., 13 USPQ 2d 1257 (S.D.N.Y. 1989) (AT-A-GLANCE for use with calendars); Re Rank Organization, Ltd., 222 USPQ 324 (TTAB 1984) (LASER for high fidelity loudspeakers designed and tested by use of laser holography); Engineered Mechanical Services, Inc. v. Applied Mechanical Technology, Inc., 223 USPQ 324 (M.D. La. 1984) (METALOCK for a method of metal repair); Re Micro Instrument Corp., 222 USPQ 252 (TTAB 1984); Re Hutchinson Technology, Inc., 7 USPQ 2d 1490 (C.A. F.C. 1988) (TECHNOLOGY as used with electronic and mechanical computer components); Artype, Inc. v. Zappulla, 108 USPQ 51 (2d Cir. 1956) (ARTYPE as used with cut-out letters for artists); Supply Mfg. co. v. King Trimmings, Inc., 139 USPQ 163 (S.D.N.Y. 1963) (BAC-A-BELT for belt backing materials); Compugraphic Corp. v. Compu-Graphic Corp., 167 USPQ 459 (S.D.N.Y. 1970) (COMPUGRAPHIC as used with typesetting equipment); Re Colgate-Palmolive Co., 149 USPQ 793 (TTAB 1966) (HANDI WIPES for dusting cloths); Scientific Applications, Inc. v. Energy Conservation Corp., 195 USPQ 379 (N.D. Go. 1977) (HOMEFOAMERS for insulation installation services); Re Polytop Corp., 167 USPQ 383 (TTAB 1962) (LOC-TOP as used with bottle closure caps); Glamorene Products Corp. v. BoyleMidway, Inc., 188 USPQ 145 (S.D.N.Y. 1975) (SPRAY 'N VAC for an aerosol rug cleaner); Airco, Inc. v. Air Products & Chemicals, Inc., 196 USPQ 832 (TTAB 1977) (AIR-CARE as used with a scheduled maintenance program for hospital inhalation and anesthesia equipment); Ex parte Heatube Corp., 109 USPQ 423 (Comm. Pats. 1956) (HEATUBE for electrical heating units); The Driving Force, Inc. v. Manpower, Inc., 538 F. Supp. 57 (D.C. Pa. 1982) (THE DRIVING FORCE for use with supplying leased truck drivers to business on a temporary basis); Information Clearing House, Inc. v. Find Magazine, 492 F. Supp. 147 (D.C.N.Y. 1980) (FIND as used with information retrieval service); and Arkell Safety Bag Co. v. Safepack Mills, 289 F. 616 (SAFEPACK for wrapping paper).

                        i.  Doubts concerning the descriptiveness of a mark are to be resolved in favor of the Applicant.  In re Micro Instrument Corp., 222 USPQ 252, 255 (TTAB 1984); In re LRC Products Limited, 223 USPQ 1250, 1252 (TTAB 1984).

            In view of the foregoing amendment and these remarks, it is believed that this application complies fully with the requests as described in the Office Action, and that the application is therefore in condition for publication.  Favorable action is therefore requested.