To: | BTNX, Inc. (ipdocket@kwgd.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85463339 - RAPID RESPONSE - RIDOUT-H |
Sent: | 11/6/2012 2:13:45 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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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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: 11/6/2012
THIS IS A FINAL ACTION.
After review of applicant’s response received on 10/11/2012, the following is determined: the refusal to register on the ground that the mark is merely descriptive is maintained and made FINAL; the amendment to the identification of goods and services is accepted.
FINAL REFUSAL TO REGISTER – Mark is Merely Descriptive
Registration is refused because the applied-for mark merely describes a feature 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.
For the reasons set forth below, this refusal is maintained and made FINAL.
Applicant’s mark is RAPID RESPONSE for “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” “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 connection with diagnostic testing. See image attached to office action of 02/27/2012 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 previous office action.
In addition, “rapid response” is a common term to describe a type of testing and especially a type of drug testing. See images attached to the previous office action from various websites showing use of “rapid response” in connection with testing and drug tests.
Furthermore, the USPTO has already determined that “RAPID RESPONSE” is a descriptive term. See third-party registrations attached to the previous office action with RAPID RESPONSE disclaimed, registered on the supplemental register or registered under a claim of acquired distinctiveness. Third-party registrations featuring goods and/or services the same as or similar to 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 acquired distinctiveness, or registered on the Supplemental Register. See Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); 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 appears to contend that RAPID RESPONSE is not merely descriptive on the ground that it is used in connection with rapid response teams or rapid response services related to medical care of patients. However, this does not address the evidence that “rapid response” has an accepted descriptive meaning in connection with applicant’s applied-for goods and services. Descriptiveness is considered in relation to the relevant goods and/or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., ___ F.3d ___, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e).
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if the term describes only one significant function, attribute or property. In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b).
If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/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.