UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

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: 2/3/2014

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

Summary of Issues Raised

• Search Report:  No Conflicting Marks
• Refusal:  Section 2(e)(1) -- Merely Descriptive
• Advisory:  Supplemental Register
• Requirement:  Request for Information
• Advisory:  Responding to this Office Action
• Assistance

 

 

SEARCH REPORT:  NO CONFLICTING MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, the trademark examining attorney issues the following substantive refusal. 

 

 

REFUSAL:  SECTION 2(e)(1) – MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a purpose, function, and use of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Here, applicant seeks to register the mark JONES-FX for use on and in connection with “surgical instruments and apparatus; bone screws; bone screw systems; surgical and medical apparatus and instruments for use in endoscopic surgery; surgical and medical apparatus and instruments for use in orthopedic surgery; medical, surgical and orthopedic implants made of artificial materials.”

 

In the medical field, a “Jones fracture” is the name associated with a particular type of foot fracture.  Specifically, the attached Internet evidence reveals the following: 

 

The Jones fracture is a fairly common fracture of the fifth metatarsal. …  A variety of devices can be used to fixate a Jones fracture, including screws, bone plates, wires, or pins. Sometimes a physician will also use a bone stimulator to assist the bone healing.

http://www.footvitals.com/bones/jones-fracture.html

 

A Jones fracture is a fracture of the diaphysis of the fifth metatarsal of the foot.  … Internal fixation with cortical or cancellous screw would require an oblique fracture that could be addressed through "The rule of 2's" in regards to Internal fixation with screws.

http://en.wikipedia.org/wiki/Jones_fracture

 

Moreover, also in the medical field, the letter FX is an abbreviation for “fracture.”  (See attached excerpts from the websites mediLexicon and AllAcronyms.) 

 

Presumably, when used in relation to applicant’s surgical and medical apparatus the term JONES-FX refers to “Jones fracture”, the type of injury applicant’s goods are designed to treat. 

 

That fact that applicant’s JONES-FX goods have other uses does not overcome the descriptive nature of the mark.  “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods … .”  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 a mark describes only one significant function, attribute, or property.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.

 

Here, then, it is enough that applicant’s JONES-FX mark describes one significant purpose, function, and use of its goods, that is, to treat metatarsal fractures, or “Jones fractures” in particular.  As a result, purchasers will perceive the term JONES-FX as describing the intended function, purpose and use of applicant’s goods and not as denoting applicant as the source of the goods. 

 

For these reasons, the proposed mark describes a key purpose, function, and use of applicant’s goods.  The mark is therefore merely descriptive, and registration of the mark is thus refused under Trademark Act Section 2(e)(1) because the mark is merely descriptive as applied to applicant’s goods. 

 

 

ADVISORY:  SUPPLEMENTAL REGISTER

 

Amendment to Allege Use Prerequisite

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76(b), (c) has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.  In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

 

Filing an Amendment to Allege Use

 

To amend the application filing basis from an intent-to-use application under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), applicant must file, prior to approval of the mark for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76.  See 15 U.S.C. §1051(c); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.

 

The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):

 

(1)       The following statement:  “Applicant is believed to be the owner of the mark and that the mark is in use in commerce.”

 

(2)       The date of first use of the mark anywhere on or in connection with the goods and/or services.

 

(3)       The date of first use of the mark in commerce as a trademark or service mark.

 

(4)       A specimen showing actual use of the mark in commerce for each class of goods and/or services for which use is being asserted.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.

 

(5)       A filing fee of $100 per class for each international class of goods and/or services for which use is being asserted (current fee information should be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(6)       Verification of the above (1) through (3) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.

 

See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b), 2.193(e)(1); TMEP §§1104.08, 1104.10(b)(v).

 

Amendments to allege use can be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp.  Filing an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action.  TMEP §1104.

 

 

Opportunity to Respond

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. 

 

If applicant chooses to respond to this Office action, applicant must respond to the requirement(s) below.  However, please note that simply satisfying the outstanding requirement(s) below may not overcome the refusal issued above. 

 

 

REQUIREMENT:  REQUEST FOR INFORMATION

 

The nature of the goods on which applicant uses its mark is not entirely clear from the present record and additional information is required.  37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).

 

In order to conduct proper examination of the application, applicant must provide the following information regarding the goods and wording appearing in the mark: 

 

(1)  Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods, as well as photograph of the identified goods.  In addition, applicant must describe in detail the nature, purpose, and channels of trade of the goods.  Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record. 

 

If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product or services will differ.  If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods.  Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement.; and

 

(2)  Applicant must respond to the following question: 

 

May applicant’s goods be used to treat metatarsal fractures?

 

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814. 

 

 

ADVISORY:  RESPONDING TO THIS OFFICE ACTION

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  Since the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

ASSISTANCE 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/amyckelly/

U.S. Patent and Trademark Office

Attorney Advisor - Trademarks

Law Office 113

(571) 272 4492

Amy.Kelly@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/3/2014 FOR U.S. APPLICATION SERIAL NO. 86089790

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/3/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.