UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/616989
APPLICANT: HEALTH CARE AND RETIREMENT CORPORATION O ETC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: HCR MANOR CARE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 02-378-US
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 76/616989
This letter is in response to the applicant’s communication filed on November 23, 2005. Therein, the applicant: 1) submitted arguments and explanations traversing the refusal for likelihood of confusion under Section 2(d) of the Trademark Act; and 2) declined to disclaim the highly descriptive wording CARE and appears to have claimed acquired distinctiveness. Number 1 is acceptable.
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).
The examining attorney has required a disclaimer of the highly descriptive/generic term CARE. Applicant has claimed that the “MANOR CARE” has become distinctive of the services through exclusive and continuous use. Despite this claim, the term “CARE” is highly descriptive or generic of “health CARE” and “health CARE training”. The term MANOR CARE is not unitary. Therefore, the claim that “CARE” is an integral component of the mark MANOR CARE is unpersuasive. Therefore, applicant must disclaim the highly descriptive/generic term CARE apart from the mark as shown.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.09(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use “CARE” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. Thank you.
/Michael Webster/
Michael Webster
Examining Attorney
USPTO Law Office 102
(571) 272-9266
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.