| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85049641 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85049641 |
| LITERAL ELEMENT | COMPOUND W |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration of the mark "Compound W" on the grounds that Applicant has not submitted sufficient evidence to show Applicant has acquired distinctiveness in the applied for mark and that the term "compound" is generic in relationship to the identified goods, dermatologics, in International Class 05. As described more fully below, Applicant traverses both grounds for refusal and again argues against the requirement for a disclaimer of the term "compound." I. Refusal - Distinctiveness Claim in part - Section 2(f) The Examining Attorney argues that the acquired distinctiveness evidence submitted by Applicant does not show that the public has come to associate the proposed mark with single source for the goods. The Examining Attorney notes that applicant may submit additional evidence including "specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source." Applicant has already submitted evidence that the mark has been in use in commerce since 1954, evidence of extensive advertising expenditures, sales figures, and advertising samples. A party can submit 3 types of evidence to establish acquired distinctiveness under Section 2(f): 1. A claim of ownership of one or more prior registrations on the Principle Register of the same mark for goods or services that are the same as or related to those named in the pending application. TMEP § 1212.04, et seq. 2. A statement verified by the applicant that the mark has become distinctive of the applicant's goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the 5 years before the date when the claim of distinctiveness is made. TMEP § 1212.05, et seq. 3. Actual evidence of acquired distinctiveness. TMEP § 1212.06 et seq. Applicant has submitted evidence of all 3 types. First, Applicant owns several prior registrations of the mark "Compound W." See Serial Nos. 72104800, 78457533. Second, Applicant has submitted an affidavit attesting to Applicant's continuous use of the mark in commerce since 1954, or for 57 years. We note this is 52 years longer than the 5 years necessary to establish a prima facie case of acquired distinctiveness. Finally, Applicant has submitted evidence of extensive advertising expenditures, extensive sales figures over Compound W's lengthy commercial history, and samples of advertising currently in both print and electronic circulation. As noted by the Examining Attorney, a showing of acquired distinctiveness need not consider all of the factors listed above, and no single factor is determinative. In re Steelbuilding.com, 415 F.3d 1293, 1300 (Feb. Cir. 2005). Despite satisfying all three types of evidence necessary to establish acquired distinctiveness under Section 2(f) and despite Compound W's 57 year history, the Examining Attorney notes that the evidence submitted is insufficient to show acquired distinctiveness of the mark because "they do not show that the public has come to associate the proposed mark with a single source for the goods." In short, Applicant believes this conclusion to mean that nothing short of a consumer survey will show to the Examining Attorney that the public has come to associate the proposed mark with a single source for the goods. Applicant disagrees. Applicants are not required to introduce a consumer survey or other direct evidence of consumer recognition. Yamaha International v. Hoshino Gakki, 840 F.2d 1572, 6 USPQ2D 1001 at 1010 (Fed. Cir. 1988); Coach Services, Inc. v. Triumph Learning, LLC., TTAB (2010). The Patent and Trademark Office, and the Federal courts, have long accepted other evidence of acquired distinctiveness of exactly the type submitted by Applicant and have made determinations of consumers' reactions based on the inferences able to be drawn from the evidence that is of record. Id. Applicant respectfully requests the Examining Attorney reconsider the evaluation of the evidence, in its totality, with due consideration to the length of substantially exclusive use of the mark in commerce and the other actual evidence of acquired distinctiveness. II. The Word Element "Compound" is Generic as applied to the Goods The Examining Attorney's second ground for refusal is based on an allegation that "compound" is a generic term for pharmaceutical products. Applicant strongly disagrees. We first note that the burden of proving genericness rests with the Examining Attorney, who must show by clear and convincing evidence that an applied for mark is generic. In re American Fertility Society, 188 F.3d 1341 (Fed. Cir. 1999). The Examining Attorney must prove, by clear and convincing evidence, that the word or expression inherently has a generic meaning in ordinary language, or that the public uses the word to identify goods of other producers as well. In re Dc Comics, Inc., 689 F.2d 1042, 1054-55 (C.C.P.A. 1982) (emphasis added). The two part test for genericness asks two questions: (1) What is the class of goods or services at issue; and, (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc. 782 F.2d 987, 990 (Fed. Cir. 1990). The critical issue is "whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." Id., In re Tires Tires Tires, Inc., TTAB (2009). The Examining Attorney states that the class of goods is "a chemical compound." Applicant disagrees. The class of goods, as identified in the application, is International Class 05, which covers pharmaceuticals and other preparations used for medicinal purposes. The Examining Attorney's proposed class of "chemical compounds" is well beyond the claimed class in the application and includes chemical compounds in any industry for any purposes, rather than the limited class of pharmaceuticals and other preparations used for medicinal purposes. Next, the Examining Attorney states that "compound" is understood by the relevant public as primarily referring to that class or genus of goods, meaning "chemical compounds." Applicant disagrees. The term "compound" has several uses in common English parlance that have nothing to do with chemical compounds and the Examining Attorney has introduce no evidence, let alone clear and convincing evidence, that "compound" is understood as referring primarily to chemical compounds. Merriam Webster defines "compound" as a transitive verb meaning: 1. To put together (parts) so as to form a whole: Combine (compound ingredients) 2. To form by combining parts (compound a medicine) 3. To settle amicably; adjust by agreement b: to agree for a consideration not to prosecute (an offense) (compound a felony) 4. To pay (interest) on both the accrued interest and the principal b: to add to: augment. See http://www.merriam-webster.com/dictionary/compound. The relevant public understands compound to mean any of the above depending on the context of the situations - in banking or finance to refer to compound interest, in law to compounding a crime, in military or defense to a military compound, in housing to a housing compound, in pharmaceutical manufacturing and basic cooking to a substance composed of two or more ingredients. Thus, "compound" does not have an inherently generic meaning. Compound is certainly not like other well-known generic terms which refer to one, and only one genus of goods or services, such as "lawyers.com" for legal services or "hotels.com" for online hotel registration. See In re Reed Elsevier Properties, Inc., 482 F.3d 1376, 1379-80 (Fed. Cir. 2007); In re Hotels.com, 573 F.3d 1300, 1303-06 (Fed. Cir. 2009). At most, the Examining Attorney has shown that "compound" is a characteristic of Applicant's product, a pharmaceutical preparation, or of any good composed of two elements, pieces of ingredients. A descriptive mark describes the qualities, ingredients or characteristics of the goods related to the mark. In re Steelbuilding.com, 415 F.3d at 1297 (emphasis added). The Examining Attorney's own words note that "the Trademark office has been very consistent in its treatment of the word element 'compound' being merely descriptive for any goods being made up of two or more elements in class 5. . ." Finally, Examining Attorney has not shown that the public, or other producers used "compound" to identify their competing or similar goods. Neither Dr. Scholl's, Wartner, nor PediFix, Compound W's main competitors, use "compound" to identify their goods. For the foregoing reasons, Applicant again declines to disclaim exclusive use of the word "compound" in International Class 05 for dermatologics. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Brian Rockwell/ |
| SIGNATORY'S NAME | Brian Rockwell |
| SIGNATORY'S POSITION | Attorney, Member MD bar |
| SIGNATORY'S PHONE NUMBER | 423-209-4103 |
| DATE SIGNED | 12/15/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Dec 15 16:51:28 EST 2011 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0111215165128495781-85049 641-4904ac86cd1870feb2106 8a85584f293ac-N/A-N/A-201 11215164611530789 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examining Attorney has refused registration of the mark "Compound W" on the grounds that Applicant has not submitted sufficient evidence to show Applicant has acquired distinctiveness in the applied for mark and that the term "compound" is generic in relationship to the identified goods, dermatologics, in International Class 05. As described more fully below, Applicant traverses both grounds for refusal and again argues against the requirement for a disclaimer of the term "compound."
I. Refusal - Distinctiveness Claim in part - Section 2(f)
The Examining Attorney argues that the acquired distinctiveness evidence submitted by Applicant does not show that the public has come to associate the proposed mark with single source for the goods. The Examining Attorney notes that applicant may submit additional evidence including "specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source." Applicant has already submitted evidence that the mark has been in use in commerce since 1954, evidence of extensive advertising expenditures, sales figures, and advertising samples.
A party can submit 3 types of evidence to establish acquired distinctiveness under Section 2(f):
1. A claim of ownership of one or more prior registrations on the Principle Register of the same mark for goods or services that are the same as or related to those named in the pending application. TMEP § 1212.04, et seq.
2. A statement verified by the applicant that the mark has become distinctive of the applicant's goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the 5 years before the date when the claim of distinctiveness is made. TMEP § 1212.05, et seq.
3. Actual evidence of acquired distinctiveness. TMEP § 1212.06 et seq.
Applicant has submitted evidence of all 3 types. First, Applicant owns several prior registrations of the mark "Compound W." See Serial Nos. 72104800, 78457533. Second, Applicant has submitted an affidavit attesting to Applicant's continuous use of the mark in commerce since 1954, or for 57 years. We note this is 52 years longer than the 5 years necessary to establish a prima facie case of acquired distinctiveness. Finally, Applicant has submitted evidence of extensive advertising expenditures, extensive sales figures over Compound W's lengthy commercial history, and samples of advertising currently in both print and electronic circulation.
As noted by the Examining Attorney, a showing of acquired distinctiveness need not consider all of the factors listed above, and no single factor is determinative. In re Steelbuilding.com, 415 F.3d 1293, 1300 (Feb. Cir. 2005). Despite satisfying all three types of evidence necessary to establish acquired distinctiveness under Section 2(f) and despite Compound W's 57 year history, the Examining Attorney notes that the evidence submitted is insufficient to show acquired distinctiveness of the mark because "they do not show that the public has come to associate the proposed mark with a single source for the goods." In short, Applicant believes this conclusion to mean that nothing short of a consumer survey will show to the Examining Attorney that the public has come to associate the proposed mark with a single source for the goods. Applicant disagrees.
Applicants are not required to introduce a consumer survey or other direct evidence of consumer recognition. Yamaha International v. Hoshino Gakki, 840 F.2d 1572, 6 USPQ2D 1001 at 1010 (Fed. Cir. 1988); Coach Services, Inc. v. Triumph Learning, LLC., TTAB (2010). The Patent and Trademark Office, and the Federal courts, have long accepted other evidence of acquired distinctiveness of exactly the type submitted by Applicant and have made determinations of consumers' reactions based on the inferences able to be drawn from the evidence that is of record. Id. Applicant respectfully requests the Examining Attorney reconsider the evaluation of the evidence, in its totality, with due consideration to the length of substantially exclusive use of the mark in commerce and the other actual evidence of acquired distinctiveness.
II. The Word Element "Compound" is Generic as applied to the Goods
The Examining Attorney's second ground for refusal is based on an allegation that "compound" is a generic term for pharmaceutical products. Applicant strongly disagrees.
We first note that the burden of proving genericness rests with the Examining Attorney, who must show by clear and convincing evidence that an applied for mark is generic. In re American Fertility Society, 188 F.3d 1341 (Fed. Cir. 1999). The Examining Attorney must prove, by clear and convincing evidence, that the word or expression inherently has a generic meaning in ordinary language, or that the public uses the word to identify goods of other producers as well. In re Dc Comics, Inc., 689 F.2d 1042, 1054-55 (C.C.P.A. 1982) (emphasis added).
The two part test for genericness asks two questions: (1) What is the class of goods or services at issue; and, (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc. 782 F.2d 987, 990 (Fed. Cir. 1990). The critical issue is "whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." Id., In re Tires Tires Tires, Inc., TTAB (2009). The Examining Attorney states that the class of goods is "a chemical compound." Applicant disagrees.
The class of goods, as identified in the application, is International Class 05, which covers pharmaceuticals and other preparations used for medicinal purposes. The Examining Attorney's proposed class of "chemical compounds" is well beyond the claimed class in the application and includes chemical compounds in any industry for any purposes, rather than the limited class of pharmaceuticals and other preparations used for medicinal purposes.
Next, the Examining Attorney states that "compound" is understood by the relevant public as primarily referring to that class or genus of goods, meaning "chemical compounds." Applicant disagrees.
The term "compound" has several uses in common English parlance that have nothing to do with chemical compounds and the Examining Attorney has introduce no evidence, let alone clear and convincing evidence, that "compound" is understood as referring primarily to chemical compounds. Merriam Webster defines "compound" as a transitive verb meaning:
1. To put together (parts) so as to form a whole: Combine (compound ingredients)
2. To form by combining parts (compound a medicine)
3. To settle amicably; adjust by agreement b: to agree for a consideration not to prosecute (an offense) (compound a felony)
4. To pay (interest) on both the accrued interest and the principal b: to add to: augment.
See http://www.merriam-webster.com/dictionary/compound. The relevant public understands compound to mean any of the above depending on the context of the situations - in banking or finance to refer to compound interest, in law to compounding a crime, in military or defense to a military compound, in housing to a housing compound, in pharmaceutical manufacturing and basic cooking to a substance composed of two or more ingredients. Thus, "compound" does not have an inherently generic meaning. Compound is certainly not like other well-known generic terms which refer to one, and only one genus of goods or services, such as "lawyers.com" for legal services or "hotels.com" for online hotel registration. See In re Reed Elsevier Properties, Inc., 482 F.3d 1376, 1379-80 (Fed. Cir. 2007); In re Hotels.com, 573 F.3d 1300, 1303-06 (Fed. Cir. 2009).
At most, the Examining Attorney has shown that "compound" is a characteristic of Applicant's product, a pharmaceutical preparation, or of any good composed of two elements, pieces of ingredients. A descriptive mark describes the qualities, ingredients or characteristics of the goods related to the mark. In re Steelbuilding.com, 415 F.3d at 1297 (emphasis added). The Examining Attorney's own words note that "the Trademark office has been very consistent in its treatment of the word element 'compound' being merely descriptive for any goods being made up of two or more elements in class 5. . ."
Finally, Examining Attorney has not shown that the public, or other producers used "compound" to identify their competing or similar goods. Neither Dr. Scholl's, Wartner, nor PediFix, Compound W's main competitors, use "compound" to identify their goods.
For the foregoing reasons, Applicant again declines to disclaim exclusive use of the word "compound" in International Class 05 for dermatologics.