| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77007258 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney has rejected registration of Applicant’s application to register the mark MVE (the “Mark” or “Mark MVE”) on grounds that the Mark merely identifies a process or system rather than identifying and distinguishing Applicant’s goods from those of others. In addition, the Examining Attorney has rejected the specimen as unacceptable because the Mark is “buried in the text on the label”. Applicant requests that its application be allowed registration based on the following: I. Mark Indicates Source of Applicant’s Goods As indicated below, Applicant is amending the recitation of services to clarify that the Mark will be used to identify Applicant’s goods, not a process or system sold by Applicant. Applicant, together with its affiliates and licensees (collectively referred to herein as “HealthPoint”), is a well established pharmaceutical company that specializes in the development, manufacturing, and marketing of pharmaceutical products for the treatment of traumatized skin. Affidavit of Facts, Para. 2. HealthPoint sells a number of different skin care preparations but does not generally sell the process or systems for manufacturing such preparations. Healthpoint has developed formulations of skin care preparations called “multivesicular emulsion technology”. Affidavit of Facts, Para. 3. Multivesicular emulsion technology essentially is a patented formulation that improves the sustained release of softening and moisturizing characteristics as well as medicaments in skin care preparations. Affidavit of Facts, Para. 3. Apart from its sale of skin care preparations, HealthPoint does not sell the multivesicular emulsion technology to consumers. Affidavit of Facts, Para. 3. The mark MVE is derived from the technical term “multivesicular emulsion technology.” Affidavit of Facts, Para. 4. Healthpoint prints the mark MVE on labels that are affixed to a number of its pharmaceutical preparations. Affidavit of Facts, Para. 5. The purpose of the MVE Mark is (i) to help consumers identify skin care preparations produced by Healthpoint and (ii) to suggest to consumers that skin care preparations bearing the mark MVE have sustained softening and moisturizing characteristics. Affidavit of Facts, Para. 5. Consequently, the Mark MVE is designed to indicate HealthPoint as the source of HealthPoint’s skin care preparations and to distinguish HealthPoint’s skin care preparations from those of others. Moreover, HealthPoint’s use of the Mark MVE is distinguishable from the use contemplated in the three references cited by the Examining Attorney’s office action. First, TMEP § 1301.02(e) prohibits the registration of service marks that are descriptive of a process or system that is offered under the service mark seeking registration. In the present case, the Mark is suggestive – not descriptive - of a process or system. More importantly, however, the Mark is used in connection with HealthPoint’s goods, not a process, system, or service. Therefore, TMEP 1301.02(e) does not apply to the application at issue. Second, in In re Griffen, the applicant sought registration of a mark that was not used with the goods offered by the applicant. In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166, 167 (C.C.P.A. 1975). More specifically, the applicant sought registration of the word OXINITE which was descriptive of a certain mixture of gases. Id. The applicant’s goods consisted of selling or leasing an apparatus that generated a mixture of gases. Id. The applicant was denied registration, however, because the applicant “failed to show use of the mark on the goods or their containers.” Id. For this reason, the TTAB concluded that the word OXINITE failed to function as a trademark for the applicant’s goods. Id. In contrast, the Mark MVE does appear on HealthPoint’s skin care preparations and, consequently, functions as a trademark, unlike the word OXINITE in In re Griffen. Id. Third, in Armstrong Cork, the applicant sought registration of the term INLAID COLOR in connection with the sale of its vinyl floor covering product. Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 (TTAB 1983). TTAB first found that INLAID COLOR was “either merely descriptive or deceptively misdescriptive of the color characteristics of the vinyl floor covering product to which this term is applied … or of the process by which these characteristics are produced.” Id. Next, the TTAB found that the applicant’s use of the term INLAID COLOR had not acquired secondary meaning because the applicant’s “advertising is almost totally directed to identifying INLAID COLOR as the name of the manufacturing process by which its SOLARIUM floor covering is made, rather than as a term having significance as an indication of source.” Id. Accordingly, the TTAB noted that the term INLAID COLOR would not be registerable under the Trademark Act if that term served “no other purpose than that of indicating a process performed on the goods.” Id at 535, n.13. In the present case, however, HealthPoint’s use of the Mark MVE is distinctive from that of Armstrong Cork for two important reasons. First, the Mark MVE functions as a trademark on HealthPoint’s skin care preparations by being printed on the label that is affixed to those goods. This placement of the Mark on HealthPoint’s goods allows consumers to identify HealthPoint as the source of HealthPoint’s skin care preparations and to distinguish HealthPoint’s skin care preparations from those of others. The term INLAID COLOR, in contrast, was simply used in advertising describing a process preformed on the vinyl flooring, not on a label attached to the product itself. Second, the Mark MVE is suggestive, rather than descriptive, of the formulation used to produce the suspended release characteristics in HealthPoint’s skin care preparations. Consequently, the Mark MVE, unlike the term INLAID COLOR, has the requisite distinctiveness under Section 2 of the Trademark Act. For all of the above reasons, HealthPoint respectfully submits that the Mark MVE does function as a trademark to identify and distinguish HealthPoint’s goods from those of others and to indicate the source of HealthPoint’s goods. II. New Specimen Applicant is supplying a new specimen that more prominently displays the Mark MVE on the label. Applicant respectfully submits that this new specimen is acceptable. Conclusion: In light of the foregoing arguments, Applicant respectfully submits that the application is now conditioned to be registered on the Principal Register, and such is earnestly requested. If a telephone conference may be of assistance in properly resolving any outstanding issues, the Examining Attorney is respectfully requested to contact Applicant’s undersigned attorney. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_21613660210-171150446_._Affidavit_of_Facts.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS2\EXPORT15\770\072\77007258\xml1\ROA0002.JPG |
| \\TICRS2\EXPORT15\770\072\77007258\xml1\ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Affidavit of Facts |
| GOODS AND/OR SERVICES SECTION (003)(current) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | |
| A slow-release softening and moisturizing ingredient sold as a component part of non-medicated skin care preparations | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/01/2004 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/01/2004 |
| GOODS AND/OR SERVICES SECTION (003)(proposed) | |
| INTERNATIONAL CLASS | 003 |
| DESCRIPTION | |
| Non-medicated skin care preparations featuring slow-release softening and moisturizing characteristics | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/01/2004 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/01/2004 |
| STATEMENT TYPE | "The substitute specimen(s) was in use in commerce as of the filing date of the application." |
| SPECIMEN FILE NAME(S) |
\\TICRS2\EXPORT15\770\072 \77007258\xml1\ROA0005.JP G |
| SPECIMEN DESCRIPTION | Photo of the goods |
| FILING BASIS | Section 44(e) |
| FOREIGN REGISTRATION FILE NAME(S) |
\\TICRS2\EXPORT15\770\072 \77007258\xml1\ROA0004.JP G |
| STANDARD CHARACTERS OR EQUIVALENT |
NO |
| GOODS AND/OR SERVICES SECTION (005)(current) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| A slow-release softening and moisturizing ingredient sold as a component part of medicated skin care preparations | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/01/2004 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/01/2004 |
| GOODS AND/OR SERVICES SECTION (005)(proposed) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| Medicated skin care preparations featuring slow-release of medicaments | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 06/01/2004 |
| FIRST USE IN COMMERCE DATE | At least as early as 06/01/2004 |
| STATEMENT TYPE | "The substitute specimen(s) was in use in commerce as of the filing date of the application." |
| SPECIMEN FILE NAME(S) |
\\TICRS2\EXPORT15\770\072 \77007258\xml1\ROA0006.JP G |
| SPECIMEN DESCRIPTION | Photo of the goods |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /William D. Wiese/ |
| SIGNATORY'S NAME | William D. Wiese |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 02/20/2008 |
| RESPONSE SIGNATURE | /William D. Wiese/ |
| SIGNATORY'S NAME | William D. Wiese |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 02/20/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Feb 20 17:33:56 EST 2008 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20080220173356640062-7700 7258-41090f74789a1ec84db6 9306a49b7d57cd-N/A-N/A-20 080220171150446386 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney has rejected registration of Applicant’s application to register the mark MVE (the “Mark” or “Mark MVE”) on grounds that the Mark merely identifies a process or system rather than identifying and distinguishing Applicant’s goods from those of others. In addition, the Examining Attorney has rejected the specimen as unacceptable because the Mark is “buried in the text on the label”. Applicant requests that its application be allowed registration based on the following:
I. Mark Indicates Source of Applicant’s Goods
As indicated below, Applicant is amending the recitation of services to clarify that the Mark will be used to identify Applicant’s goods, not a process or system sold by Applicant. Applicant, together with its affiliates and licensees (collectively referred to herein as “HealthPoint”), is a well established pharmaceutical company that specializes in the development, manufacturing, and marketing of pharmaceutical products for the treatment of traumatized skin. Affidavit of Facts, Para. 2. HealthPoint sells a number of different skin care preparations but does not generally sell the process or systems for manufacturing such preparations. Healthpoint has developed formulations of skin care preparations called “multivesicular emulsion technology”. Affidavit of Facts, Para. 3. Multivesicular emulsion technology essentially is a patented formulation that improves the sustained release of softening and moisturizing characteristics as well as medicaments in skin care preparations. Affidavit of Facts, Para. 3. Apart from its sale of skin care preparations, HealthPoint does not sell the multivesicular emulsion technology to consumers. Affidavit of Facts, Para. 3.
The mark MVE is derived from the technical term “multivesicular emulsion technology.” Affidavit of Facts, Para. 4. Healthpoint prints the mark MVE on labels that are affixed to a number of its pharmaceutical preparations. Affidavit of Facts, Para. 5. The purpose of the MVE Mark is (i) to help consumers identify skin care preparations produced by Healthpoint and (ii) to suggest to consumers that skin care preparations bearing the mark MVE have sustained softening and moisturizing characteristics. Affidavit of Facts, Para. 5. Consequently, the Mark MVE is designed to indicate HealthPoint as the source of HealthPoint’s skin care preparations and to distinguish HealthPoint’s skin care preparations from those of others.
Moreover, HealthPoint’s use of the Mark MVE is distinguishable from the use contemplated in the three references cited by the Examining Attorney’s office action. First, TMEP § 1301.02(e) prohibits the registration of service marks that are descriptive of a process or system that is offered under the service mark seeking registration. In the present case, the Mark is suggestive – not descriptive - of a process or system. More importantly, however, the Mark is used in connection with HealthPoint’s goods, not a process, system, or service. Therefore, TMEP 1301.02(e) does not apply to the application at issue.
Second, in In re Griffen, the applicant sought registration of a mark that was not used with the goods offered by the applicant. In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166, 167 (C.C.P.A. 1975). More specifically, the applicant sought registration of the word OXINITE which was descriptive of a certain mixture of gases. Id. The applicant’s goods consisted of selling or leasing an apparatus that generated a mixture of gases. Id. The applicant was denied registration, however, because the applicant “failed to show use of the mark on the goods or their containers.” Id. For this reason, the TTAB concluded that the word OXINITE failed to function as a trademark for the applicant’s goods. Id. In contrast, the Mark MVE does appear on HealthPoint’s skin care preparations and, consequently, functions as a trademark, unlike the word OXINITE in In re Griffen. Id.
Third, in Armstrong Cork, the applicant sought registration of the term INLAID COLOR in connection with the sale of its vinyl floor covering product. Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528, 535 (TTAB 1983). TTAB first found that INLAID COLOR was “either merely descriptive or deceptively misdescriptive of the color characteristics of the vinyl floor covering product to which this term is applied … or of the process by which these characteristics are produced.” Id. Next, the TTAB found that the applicant’s use of the term INLAID COLOR had not acquired secondary meaning because the applicant’s “advertising is almost totally directed to identifying INLAID COLOR as the name of the manufacturing process by which its SOLARIUM floor covering is made, rather than as a term having significance as an indication of source.” Id. Accordingly, the TTAB noted that the term INLAID COLOR would not be registerable under the Trademark Act if that term served “no other purpose than that of indicating a process performed on the goods.” Id at 535, n.13.
In the present case, however, HealthPoint’s use of the Mark MVE is distinctive from that of Armstrong Cork for two important reasons. First, the Mark MVE functions as a trademark on HealthPoint’s skin care preparations by being printed on the label that is affixed to those goods. This placement of the Mark on HealthPoint’s goods allows consumers to identify HealthPoint as the source of HealthPoint’s skin care preparations and to distinguish HealthPoint’s skin care preparations from those of others. The term INLAID COLOR, in contrast, was simply used in advertising describing a process preformed on the vinyl flooring, not on a label attached to the product itself. Second, the Mark MVE is suggestive, rather than descriptive, of the formulation used to produce the suspended release characteristics in HealthPoint’s skin care preparations. Consequently, the Mark MVE, unlike the term INLAID COLOR, has the requisite distinctiveness under Section 2 of the Trademark Act. For all of the above reasons, HealthPoint respectfully submits that the Mark MVE does function as a trademark to identify and distinguish HealthPoint’s goods from those of others and to indicate the source of HealthPoint’s goods.
II. New Specimen
Applicant is supplying a new specimen that more prominently displays the Mark MVE on the label. Applicant respectfully submits that this new specimen is acceptable.
Conclusion:
In light of the foregoing arguments, Applicant respectfully submits that the application is now conditioned to be registered on the Principal Register, and such is earnestly requested. If a telephone conference may be of assistance in properly resolving any outstanding issues, the Examining Attorney is respectfully requested to contact Applicant’s undersigned attorney.
