| To: | Fastaff, LLC (tupperk@ballardspahr.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 86140853 - RAPID RESPONSE - N/A |
| Sent: | 3/31/2014 7:44:45 PM |
| Sent As: | ECOM114@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 86140853
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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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
The assigned examining attorney has reviewed the referenced application and determined the following.
I. SEARCH STATEMENT:
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 1105.01. However, the applicant must respond to the following issue(s).
II. MERELY DESCRIPTIVE:
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. 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)). Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive. TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).
The applicant applied to register the mark RAPID RESPONSE for “employment agency services, namely, temporary and permanent placement of healthcare professionals.” The term RAPID RESPONSE is a designation/term of art that refers to a specific type healthcare professional/nurse who are specialized in quick care. Please see attached. In fact, applicant’s specimen itself describes a category of nurses called rapid response nurses while referencing it staffing chart, stating:
“Staffing strategy: An intelligent mix of full-time, traditional travel, rapid response, and per diem nurses that can deliver near 100% utilization during census peaks at approximately 20% costs savings;” and
“This variable staffing model supports using the right blend of traditional nurse travelers together with rapid response variable length nurses and filling in shorter-term gaps with per diem and float pool staff.” [emphasis added]
This clearly supports the descriptive nature of this mark.
Accordingly, these terms refer to the quality, characteristic or feature of the applicant’s services, and are therefore merely descriptive. As stated in the recitation and based on the specimens and evidence, applicant provides healthcare professional staffing services, which could include placing rapid response nurses.
- GENERIC ADVISORY:
Finally, the proposed mark appears to be generic as applied to the services and, therefore, incapable of identifying the applicant’s services and distinguishing them from those of others. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). Applicant’s services fall within a category of services, namely, rapid response nurse (RRN) placement services. Under these circumstances, the examining attorney cannot recommend an amendment to proceed under Trademark Section 2(f), 15 U.S.C. Section 1052(f), or an amendment to the Supplemental Register.
However, in the meantime, the applicant must respond to the following additional issue.
III. SPECIMEN:
Registration is refused because the specimen does not show the applied-for mark in use in commerce. Specifically, except for the below referenced instances, all references of the mark are in the context of Rapid Response Travel Nurses as a ‘phrase’ and not as Rapid Response by itself as a service mark. Further, the few references where RAPID RESPONSE is listed by itself are not for it as a service mark for employment agency services, but rather to describe a category of nurses discussed throughout the specimen (two of which are listed above and the other one is in the model/chart referenced above).
The applicant must submit another specimen showing the mark as used in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a). Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.05.
The statement supporting use of the substitute specimen must read as follows:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
Please note: This statement, along with the below declaration, are already incorporated into the online Response to Office Action form. They are, however, being provided herein solely for informational purposes and/or to the extent applicant submits a paper response.
DECLARATION:
The following is a properly worded declaration under 37 C.F.R. Section 2.20. If the applicant uses this declaration rather than a notarized statement, then at the end of its response, the applicant should insert the following declaration signed by a person properly authorized to sign on behalf of the applicant.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
- ALTERNATIVE – SUBSTITUTING A BASIS (Advisory):
If the applicant cannot comply with the requirement for a specimen of use under the Section 1(a) basis, the applicant may wish to amend the application to assert a Section 1(b) intent-to-use basis.
Accordingly, if the applicant intends to amend the basis from Section 1(a) to Section 1(b), the applicant must submit the following statement (which is also provided online):
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).
As above, this statement must also be verified with an affidavit or a declaration under 37 C.F.R. Section 2.20. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b); 37 C.F.R. Section 2.71(d)(1). Please see immediately above for a properly worded declaration.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
III. CONCLUSION:
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
/KaranChhina/
Karanendra S. Chhina
Trademark Attorney
Law Office 114
(571) 272-9447
karan.chhina@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.
