| To: | ZOLL Medical Corporation (emp@tm4smallbiz.com) |
| Subject: | TRADEMARK APPLICATION NO. 77011381 - POCKETCPR - N/A |
| Sent: | 8/28/2007 5:22:13 PM |
| Sent As: | ECOM104@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/011381
MARK: POCKETCPR
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: ZOLL Medical Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 8/28/2007
THIS IS A FINAL ACTION.
The refusal under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), is now made FINAL for the reasons set forth below. 37 C.F.R. §2.64(a).
Descriptiveness Refusal
Registration is refused because the proposed mark merely describes the purpose and features of applicant’s 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. 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).
The two major reasons for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-1527 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).
A term need not describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive. For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods to be found merely descriptive. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).
Applicant has filed the proposed mark POCKETCPR for use in connection with “Hand-held medical device for providing feedback regarding the rate and depth of cardiopulmonary resuscitation chest compressions.” As noted in the first action, applicant’s proposed mark is merely a combination of two descriptive terms. The term “pocket” is defined as “a shaped piece of fabric attached inside or outside a garment and forming a pouch used esp. for carrying small articles.” The term CPR means “Cardiopulmonary resuscitation” (See definitions attached to previous office action). Taken together, the term “pocket CPR” describes a CPR device that can be carried in ones pocket.
As previously stated, a mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (holding SUGAR & SPICE not to be merely descriptive of bakery products). However, the mere combination of descriptive words does not automatically create a new nondescriptive word or phrase. E.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (finding GROUP SALES BOX OFFICE descriptive for theater ticket sales services). Neither does removing a space between descriptive words, as applicant has done here, necessarily create a non-descriptive word or phrase. See, e.g., In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of “computer software for use in development and deployment of application programs on a global computer network”);
Applicant contends that the combination of the terms POCKET and CPR is incongruous, since CPR is an activity or life saving procedure rather than a tangible device. However, applicant’s goods are in fact hand held devices used in the process of performing CPR, and such devices could indeed be carried in a pocket. When the mark is seen used in connection with the goods, the term POCKETCPR is simply an abbreviated way of saying “POCKET CPR DEVICE” with the word “device” being implied. There is no incongruity whatsoever since the mark immediately describes the use of the device and the fact that it is pocket sized. As a result, the mark is merely descriptive. E.g., In re Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); Associated Theatre Clubs, 9 USPQ2d at 1662.
Applicant also contends that the mark is incongruous because it “creates in the customer’s mind a bizarre image of carrying around some nebulous collection of skills, in their pocket.” However, the customer does not see applicant’s mark in a vacuum. As shown by the attached COHST evidence, customer’s encounter applicant’s mark used on the goods. The determination of whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract. As used on the goods, the proposed mark immediately conveys unambiguous information as to the nature and size of the goods. See: In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk” where relevant trade uses the denomination “concurrent” as a descriptor of this particular type of operating system). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985); see TMEP §1209.01(b).
Finally, applicant contests the sufficiency of the evidence attached to support a finding of descriptiveness. The examining attorney believes that ample evidence of descriptive uses of POCKET CPR were provided with the first Office action. Nevertheless, attached hereto are additional examples of descriptive uses of the term POCKET CPR in connection with the identified goods. Indeed, the term POCKET CPR is even used descriptively in connection with applicant’s own product on the attached website of the Centre for Occupational Health and Safety Training. Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public, and may be used to demonstrate and establish the manner in which a term is used and understood 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).
Accordingly, since the mark merely describes the use and a feature of applicant’s goods, i.e. that it is a pocket sized CPR device, registration must be refused on the Principal Register under Section 2(e)(1) of the Trademark Act. This refusal is now made FINAL.
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 matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/John M. Wilke/
Examining Attorney
Law Office 104
571-272-5871
571-273-5871 fax
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.
