| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85459455 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85459455 |
| LITERAL ELEMENT | XR |
| 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) | |
|
In response to the communication from the Examiner dated February 15, 2012, the examining attorney rejected Applicant’s “XR” trademark registration because the Examining Attorney finds the mark xR to be merely descriptive. The Examiner stated that registration is refused because the proposed mark xR merely describes a feature or function of Applicant’s goods in that the applicant has applied to register the mark xR for “vitamin supplements” and “health care services for wellness.” The Examining Attorney references, as support, an attached excerpt taken from www.acronymfinder.com, “XR” is the abbreviation for “extended release.” The Examining Attorney further presumed (incorrectly) that the applicant’s vitamin supplements will be extended release, and that the applicant’s healthcare services feature the prescribing of these extended release or XR vitamin supplements. Finally, based upon these incorrect assessments, the Examining Attorney cited third party registrations and pending applications taken from the Trademark Office’s database of registered and pending marks all for marks with goods utilizing extended release vitamins and with the term “XR” disclaimed as descriptive. However, “XR” does NOT describe a feature or characteristic of Applicant’s goods and services and as such is registrable. Applicant created, and uses, the mark "xR" in reference to the traditional mark for prescription "Rx"....but backwards. Applicant is in the medical field and primarily in wellness, and operates with a mission to show how "xR" can and should compliment "Rx" and be implemented in conjunction with traditional medicine. The Applicant’s service is to create and support customized wellness programs primarily based on medical history, and blood work is incorporated when necessary. While a line of supplements is typically customized in order to support the health services under this name, the products used are not extended release and if they were, that would merely be a coincidence. Applicant is NOT seeking protection in any way for "extended release" or "XR". Given that the assumptions that lead to the conclusion of descriptiveness are incorrect (i.e., applicant is NOT providing goods of extended release supplements, and any such functionality, if it did exist, would be merely coincidental), the Examining Attorney’s rejection should be withdrawn. Additionally, Applicant notes that under the well known imagination test, if a mark requires imagination, thought and perception to reach a conclusion as to the nature of the goods, the term is merely suggestive and therefore entitled to registration. Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 8 U.S.P.Q.2d 1345 (2d Cir. 1988). Applicant submits that xR, at the very least, is merely suggestive and therefore entitled to registration. Applicant’s goods are not described by its xR trademark. It takes a great deal of imagination, thought and perception to reach a conclusion as to the nature of the services. As additionally described in Applicant’s website at www.xrmd.com, xR is positioned and used to describe a method to naturally restore body deficiencies through a personalized program of supplements, vitamins, natural substances and nutrition and support the process of modifying the program as an individual’s body responds over time. The identification and customized formulation of specific supplements is thereby identified and prescribed, as opposed to a mass marketed “multi-vitamin”, prescription drug or cookie-cutter therapy. Applicant’s “Vitamin supplements” and “Health care services for wellness” provided under the xR identifier scientifically detect what is missing from a patient’s body through medical history, blood testing and physical examination to create a “natural prescription”, or other words, the opposite of a prescription (Rx) - and two are rarely the same. And once one begins, the “xR” service will support the patient and his/her physician to monitor, modify and maintain the natural prescription as the body responds over time. Thus, additional imagination, thought and perception are necessary to arrive at the functionality and characteristic of the goods at issue. This demonstrates the suggestive, rather than descriptive, nature of the xR trademark under the imagination test. Therefore, in view of foregoing amendment and clarifications, the applicant submits that registration of the present application, as amended, is in order and is requested. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /John D. Gugliotta/ |
| SIGNATORY'S NAME | John D. Gugliotta |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | 330-253-2225 |
| DATE SIGNED | 06/05/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jun 05 07:33:58 EDT 2012 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0120605073358041487-85459 455-490ddcfb8c7f615b9af13 c5e351a8e3fbe5-N/A-N/A-20 120605073100136124 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
In response to the communication from the Examiner dated February 15, 2012, the examining attorney rejected Applicant’s “XR” trademark registration because the Examining Attorney finds the mark xR to be merely descriptive. The Examiner stated that registration is refused because the proposed mark xR merely describes a feature or function of Applicant’s goods in that the applicant has applied to register the mark xR for “vitamin supplements” and “health care services for wellness.”
The Examining Attorney references, as support, an attached excerpt taken from www.acronymfinder.com, “XR” is the abbreviation for “extended release.” The Examining Attorney further presumed (incorrectly) that the applicant’s vitamin supplements will be
extended release, and that the applicant’s healthcare services feature the prescribing of these extended release or XR vitamin supplements.
Finally, based upon these incorrect assessments, the Examining Attorney cited third party registrations and pending applications taken from the Trademark Office’s database of registered and pending marks all for marks with goods utilizing extended release vitamins and with the term “XR” disclaimed as descriptive.
However, “XR” does NOT describe a feature or characteristic of Applicant’s goods and services and as such is registrable. Applicant created, and uses, the mark "xR" in reference to the traditional mark for prescription "Rx"....but backwards. Applicant is in the medical field and primarily in wellness, and operates with a mission to show how "xR" can and should compliment "Rx" and be implemented in conjunction with traditional medicine. The Applicant’s service is to create and support customized wellness programs primarily based on medical history, and blood work is incorporated when necessary. While a line of supplements is typically customized in order to support the health services under this name, the products used are not extended release and if they were, that would merely be a coincidence. Applicant is NOT seeking protection in any way for "extended release" or "XR".
Given that the assumptions that lead to the conclusion of descriptiveness are incorrect (i.e., applicant is NOT providing goods of extended release supplements, and any such functionality, if it did exist, would be merely coincidental), the Examining Attorney’s rejection should be withdrawn. Additionally, Applicant notes that under the well known imagination test, if a mark requires imagination, thought and perception to reach a conclusion as to the nature of the goods, the term is merely suggestive and therefore entitled to registration. Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 8 U.S.P.Q.2d 1345 (2d Cir. 1988). Applicant submits that xR, at the very least, is merely suggestive and therefore entitled to registration.
Applicant’s goods are not described by its xR trademark. It takes a great deal of imagination, thought and perception to reach a conclusion as to the nature of the services. As additionally described in Applicant’s website at www.xrmd.com, xR is positioned and used to describe a method to naturally restore body deficiencies through a personalized program of supplements, vitamins, natural substances and nutrition and support the process of modifying the program as an individual’s body responds over time. The identification and customized formulation of specific supplements is thereby identified and prescribed, as opposed to a mass marketed “multi-vitamin”, prescription drug or cookie-cutter therapy. Applicant’s “Vitamin supplements” and “Health care services for wellness” provided under the xR identifier scientifically detect what is missing from a patient’s body through medical history, blood testing and physical examination to create a “natural prescription”, or other words, the opposite of a prescription (Rx) - and two are rarely the same. And once one begins, the “xR” service will support the patient and his/her physician to monitor, modify and maintain the natural prescription as the body responds over time.
Thus, additional imagination, thought and perception are necessary to arrive at the functionality and characteristic of the goods at issue. This demonstrates the suggestive, rather than descriptive, nature of the xR trademark under the imagination test. Therefore, in view of foregoing amendment and clarifications, the applicant submits that registration of the present application, as amended, is in order and is requested.