Offc Action Outgoing
RAPID RESPONSE
BTNX, Inc.
U.S. TRADEMARK APPLICATION NO. 85463339 - RAPID RESPONSE - RIDOUT-H
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 85463339
MARK: RAPID RESPONSE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: BTNX, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 7/11/2012
After review of applicant’s response received on 06/04/2012, the following is determined: the refusal to register on the ground that the mark is merely descriptive is maintained and continued; specimens of use are required; dates of use are required; the foreign registration is accepted.
REFUSAL TO REGISTER– Mark is Merely Descriptive
Registration is refused because the applied-for mark merely describes a feature of of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Applicant’s mark is RAPID RESPONSE for “Diagnostic testing devices, namely, drug and pregnancy testing devices, namely, drug testing kits comprised of medical diagnostic reagents and assays for testing bodily fluids and pregnancy test kits and computer devices for analyzing reagents and assays” “Alcohol breath testing units” and “Medical testing services for diagnostic purposes, namely, analysis services in respect of test results obtained from diagnostic testing devices for drugs, alcohol and pregnancy, excluding research and development of vaccines and medicines.”
Applicant’s goods and services are used to provide a “rapid response” in conection with diagnostic testing. See image attached to previous office action from applicant’s website in which applicant indicates that it is a leader in “rapid” point of care diagnostics. In addition, applicant describes its One Step hCG Urine Pregnancy Test as a “rapid” chromatographic immunoassay. See image from applicant’s website attached to the end of this office action.
In addition, “rapid response” is a common term to describe a type of testing and especially a type of drug testing. See attached images from various websites showing use of “rapid response” used in connection with testing and with drug tests.
Furthermore, the USPTO has already determined that “RAPID RESPONSE” is a descriptive term. See attached third-party registrations with RAPID RESPONSE disclaimed, registered on the supplemental register or registered under a claim of acquired distinctiveness. Third-party registrations featuring the same or similar goods and/or services as applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on a showing of acquired distinctiveness, or registered on the Supplemental Register. See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).
Accordingly, registration is refused on the principal register on the ground that RAPID RESPONSE merely describes applicant’s goods and services.
Applicant submits third-party registrations in which RAPID RESPONSE is not disclaimed as evidence that RAPID RESPONSE is not merely descriptive. However, because the above-indicated evidence gathered from the Internet shows “rapid response” is commonly used in connection with drug testing, applicant’s argument is not persuasive.
Applicant incorrectly contends that RAPID RESPONSE is not descriptive on the ground that is not immediately descriptive of the goods and/or services. On the contrary, in the context of applicant’s goods and services, consumers will most certainly immediately understand that “RAPID RESPONSE” refers to quick results for their drug tests. The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); “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).
Applicant also incorrectly contends that the mark is not merely descriptive on the ground that the terms “rapid” and “response” have more than one meaning and that the combination of the two terms have more than one meaning. However, descriptiveness is considered in relation to the relevant goods and/or services. The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness. In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); TMEP §1209.03(e).
In addition, applicant does not indicate any relevant alternate meaning of the combination of the two terms. Generally, a mark that merely combines descriptive words is not registrable if the individual components retain their descriptive meaning in relation to the goods and/or services and the combination results in a composite mark that is itself descriptive. TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co. Inc., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services because such wording “is nothing more than a combination of the two common descriptive terms most applicable to applicant's services which in combination achieve no different status but remain a common descriptive compound expression”).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See, e.g., In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous or nondescriptive meaning in relation to the goods and/or services.
REQUIREMENTS FOR A USE BASED APPLICATION
Applicant appears to intend to add section 1(a) as a filing basis, in addition to the 44e basis in the original application. Applicant must comply with the following requirements for a section 1(a) filing basis:
(1) The following statement: “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application as of the application filing date;”
(2) The date of first use of the mark anywhere on the goods or in connection with the services;
(3) The date of first use of the mark in commerce as a trademark or service mark;
(4) One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce). If a specimen was not submitted with the initial application, applicant must submit the following statement: “The specimen was in use in commerce at least as early as the application filing date;” and
(5) Verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above statements and dates of use.
See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a), 2.193(e)(1); TMEP §806.01(a).
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(Signature)
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(Print or Type Name and Position)
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(Date)
IDENTIFICATION OF GOODS FOR CLASS 9 MUST BE AMENDED
CLASS 5: Drug and pregnancy diagnostic testing devices, namely, drug testing kits comprised of medical diagnostic reagents and assays for testing bodily fluids and pregnancy test kits for analyzing reagents and assays
CLASS 9: Drug and pregnancy diagnostic testing devices, namely computer hardware for for analyzing reagents and assays
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
REQUIREMENTS FOR A MULTIPLE CLASS APPLICATION
(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class.
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
(3) SUBMIT REQUIRED STATEMENTS AND EVIDENCE: For each international class of goods and/or services, applicant must also submit the following:
(a) DATES OF USE: Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.
(b) SPECIMEN: One specimen showing the mark in use in commerce for each international class of goods and/or services. Applicant must have used the specimen in commerce at least as early as the filing date of the application. If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
(c) STATEMENT: The following statement: “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”
(d) VERIFICATION: Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).
See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).
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.
/Mark Sparacino/
Trademark Attorney
Law Office 103
US Patent and Trademark Office
571-272-9708
Mark.Sparacino@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.
