| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86605135 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86605135/large |
| LITERAL ELEMENT | MOBILITY |
| 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) | |
|
Mark: MOBILITY Ser. No.: 86/605135 Ref. No.: ELPSE.040T
REMARKS The following remarks are submitted in response to the Office Action dated July 30, 2015, which refuses registration on the basis that Applicant’s mark is alleged to be merely descriptive of the applied-for-goods. I. Applicant’s Mark Is Not Merely Descriptive The Examining Attorney has refused registration pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), alleging that Applicant’s mark MOBILITY merely describes a characteristic of Applicant’s goods. Applicant submits that its MOBILITY mark does not immediately convey descriptive information to the consumer about Applicant’s goods but instead causes consumers to follow a multiple-step thought process and is therefore at most suggestive. A. Standard For Descriptiveness And Suggestiveness To be merely descriptive, a mark must immediately convey “knowledge of a quality, feature, function, or characteristic of the goods or services.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 U.S.P.Q.2d 1828, 1831 (Fed. Cir. 2007) (emphasis added). On the other hand, if one must exercise mature thought or follow a multi-step reasoning process in order to understand what characteristics of Applicant’s goods the mark describes or if a term has multiple meanings, then the term is suggestive, rather than merely descriptive. Consolidated Products Co., 76 U.S.P.Q. 73, 74 (Comm’r of Patents 1948). See, e.g., Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 U.S.P.Q.2d 1464 (T.T.A.B. 1993) (ACTION SLACKS not merely descriptive of pants); Citibank N.A. Citibanc Group, Inc., F.2d 1540, 222 U.S.P.Q. 292 (11th Cir.) reh’g denied, 731 F.2d 8901 (11th Cir. 1984) (CITIBANK is at most suggestive, and not merely descriptive, of an urban bank); Ex parte Candle Vase, Inc. 105 U.S.P.Q. 73, 74 (Comm’r of Patents 1965) (CANDLE VASE not merely descriptive of flower holder adapted for fitting around the base of a candle); In re Scott Paper Co. 180 U.S.P.Q. 283 (T.T.A.B. 1973) (MICRO-WIPES for small paper wipes held “merely suggestive”). It is well established that suggestiveness is not a bar to registration on the Principal Register. In this regard, T.M.E.P. § 1209.01(a) provides in pertinent part: “a designation does not have to be devoid of all meaning relative to the goods or services to be registrable.” It is not prohibited that a mark have the capacity to draw attention to what the goods are. The C.C.P.A. has held that a suggestive and therefore registrable mark may even go so far as to possess a “descriptive connotation” that conveys an impression of the goods. “The simple presence of that type of descriptive connotation, like the presence of suggestiveness, will not preclude registration where the mark is not merely descriptive of the goods.” The Coca-Cola Co. v. Seven-Up. Co., 497 F.2d 1351, 182 U.S.P.Q. 207, 209 (C.C.P.A. 1974) (holding UNCOLA not merely descriptive of noncola soft drinks). In sum, Applicant submits that the mark MOBILITY is at most suggestive as used in connection with the applied-for goods, as the meaning of the term does not immediately describe Applicant’s goods. Rather, to understand the applicability of the mark MOBILITY as applied to applicants goods, relevant consumers must go through a multi-step reasoning process. In particular, the applied-for-goods do not directly increase the physical mobility of the user of the goods. The applied-for goods can make it more comfortable for the user of the goods to sit comfortably in a wheelchair or possibly may be used to allow greater access to a prosthetic device. However, the applied-for goods do not directly increase mobility in any way. That said, the mark MOBILITY does increase the mental mobility of the user of the goods in that the benefits of use of the applied-for-goods include aesthetic improvements as to the appearance of the residual limb, as well as practical benefits related to the purchase of clothing to wear over the residual limb. In other words, the mark MOBILITY connotes to the user of the applied-for-goods a new found psychological freedom that assists the user of the goods to “move” forward despite physical disability. The mark is suggestive, at most, and not merely or immediately descriptive of the applied-for-goods. B. A Multistage Reasoning Process Leads To A Finding Of SuggestivenessThe nexus between MOBILITY and Applicant’s goods is too tenuous to support a descriptiveness refusal and a consumer viewing Applicant’s mark must go through a complex, multi-step reasoning process in order to perceive the connection, if any, between the mark MOBILITY and Applicant’s goods. These necessary, significant, and multiple mental steps make the mark at most suggestive, not merely descriptive of the applied for goods. Applicant’s goods, in International Class 10, are listed as being: “Residual limb lengthening devices for amputee patients.” An example good on which Applicant seeks to use the MOBILITY mark is a non-invasively adjustable intramedullary nail for increasing the length of residual limbs. Stated another way, the goods on which Applicant would like to use the MOBILITY mark are non-invasively adjustable growing nails for addressing amputation stumps. Applicant is an industry leader in magnetically-driven non-invasively adjustable orthopedic devices. For example, it has developed non-invasively adjustable scoliosis rods that prevent the pain and expense of multiple adjustment surgeries in children suffering from scoliosis. Additionally, it has developed non-invasively adjustable intramedullary nails that help address limb length discrepancy, for example after cancerous bone resection. Now, Applicant is developing a non-invasively adjustable rod to specifically address residual limbs. Residual limbs result after the majority of the limb has been lost. Limbs may be lost for many reasons. In this country, some of the most common reasons for limb loss include auto, industrial, and motorcycle accidents. However, sadly, one of the most common reasons for limb loss is military combat. Far too frequently combat veterans return to civilian life missing a portion of one or more limbs. Applicant’s residual limb lengthening devices are inserted into the intramedullary canal of a residual limb. The intramedullary canal is the “hollow” in one of the leg bones (i.e., the femur/thigh bone or the tibia/shin bone). Normally, that hollow is filled with marrow. However, Applicant’s device may be inserted into that hole and non-invasively expanded to “stretch” the amputee’s bone stump. The device does not “regrow” the limb. Instead, the device merely makes the stump slightly longer to more closely visually match a normal limb – e.g., the device can make a short stump slightly longer. The benefits of increasing stump length can be significant, including, for example, reducing the need to alter and/or tailor normal clothing to compensate for the amputated limb. However, more significant benefits that may not be ignored are aesthetic and psychological. Increasing residual limb length may make the limb’s absence less notable thereby decreasing passerby notice (e.g., unwanted staring). But, even more importantly, improving the residual limb can beneficially improve amputee confidence in themselves making it easier to accept, and then move past the loss. Additionally, some amputees have residual limbs (e.g., stumps) that are too short to sit comfortably in a wheelchair or accept a conventional prosthetic. Applicant’s goods may help some of these individual to sit comfortably, without pain, in their wheelchairs or may allow greater access to a prosthetic. Indeed, if Applicant’s goods ever increase the physical mobility of a user of Applicant’s goods, it would be steps removed from Applicant’s goods (e.g., Applicants goods may allow access to a prosthetic, somehow improving the user’s mobility). As already explained, the Applicant’s goods do not directly improve mobility. Instead, Applicant’s mark MOBILITY in connection with the specific applied-for-goods connotes psychological mobility or freedom on the part of the amputee receiving the implant. These devices help amputees to psychologically address and shed the burden of their loss and then to “move” forward mentally as they take control of the situation. MOBILITY connotes a fresh, unfettered outlook that Applicant seeks to bring to amputees. The Examining Attorney states that “‘mobility’ is defined as ‘the ability to move a part of your body.’” Then, the Examining Attorney asserts that “[a] benefit of the use of limb lengthening devices is increased mobility for the user” to support the conclusion that “the evidence makes clear [that] a purpose of limb lengthening devices is to increase mobility for the user of the device.” As such the Examining Attorney determined that the mark MOBILITY immediately describes a feature and characteristic of the goods and that, therefore, it is merely descriptive of Applicant’s goods. However, as discussed in detail above, Applicant’s goods do not directly improve the ability to move a part of the body as asserted in the Office Action—instead, they merely lengthen an amputee’s residual limb or stump. There is no immediate connection between the Applicant’s goods and physical mobility. Thus, the mark MOBILITY is at most suggestive and certainly not merely descriptive of the applied for goods. C. The Examining Attorney Has Not Met the Required Burden The Examining Attorney has not met the burden of proving that Applicant’s MOBILITY mark is merely descriptive of Applicant’s goods. Pursuant to T.M.E.P. § 1209.02, “[i]f the examining attorney refuses registration, he or she should support the refusal with appropriate evidence.” The evidence submitted by the Examining Attorney does not show that the mark MOBILITY is merely descriptive of Applicant’s goods. Each and every piece of evidence cited by the Examining Attorney describes the possible benefits provided by lengthening a whole limb. That is to say, for example, mobility may be increased when one abnormally short, whole limb (e.g., a short leg) is lengthened to match a longer counterpart limb (e.g., a normal leg). However, none of the evidence cited by the Office Action supports a conclusion that lengthening a residual limb (i.e., a stump) would increase mobility. Applicant’s goods are specifically listed as being “Residual limb lengthening devices for amputee patients.” The attachments cited by the Office Action have no mention of amputee mobility or of goods for increasing amputee mobility. Accordingly, the articles espoused by the Examining Attorney are inapposite to a determination whether the mark MOBILITY is merely descriptive of Applicant’s goods. Moreover, as explained above, the purpose of Applicant’s goods is not to improve the ability to move a part of the body. Therefore, the Examining Attorney has failed to meet the burden imposed by T.M.E.P. § 1209.02. D. Any Doubt With Respect To The Proper Categorization Of A Mark Must Be Resolved In Favor Of ApplicantIf there exists any doubt as to the proper categorization of a particular mark within the “four classic categories,” such doubt must be resolved in favor of the applicant. In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1986). Specifically, because the line between merely descriptive and only suggestive terms is “so nebulous,” the Trademark Board takes the position that doubt is resolved in favor of the applicant. McCarthy § 11:51; In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972). Therefore, any doubt whether Applicant’s mark is merely descriptive of the listed goods or suggestive must be resolved in favor of Applicant. II. Requirement for Additional Information Pursuant to 37 C.F.R. § 2.61(b) and T.M.E.P § 814 the Examining Attorney has requested that Applicant submit additional product information about the goods. The mark is not presently being used on any commercially available goods. Additionally, no goods of the same type are currently on the market and/or available to consumers. Therefore, Applicant submits for the Examining Attorney’s consideration the attached description that makes clear how the goods operate, their salient features, their prospective customers and channels of trade, and the purpose of the goods. CONCLUSION Applicant submits that it has responded to all outstanding issues raised in the Office Action. Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1732271927-20160201215745188747_._2016-02-01_Appendix_to_Response_-_ELPSE.040T.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\866\051\86605135\xml4\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Attachment responding to Requirement for Additional Information |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /David Dremann/ |
| SIGNATORY'S NAME | David Dremann |
| SIGNATORY'S POSITION | Attorney of record, California bar member |
| SIGNATORY'S PHONE NUMBER | 949-760-0404 |
| DATE SIGNED | 02/01/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Feb 01 22:11:45 EST 2016 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XX-2 0160201221145526759-86605 135-5507ca932f076a749524a fb6193459d6ad311559ff6839 2746fdaec7991a7abe5c-N/A- N/A-20160201215745188747 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
Mark: MOBILITY
Ser. No.: 86/605135
Ref. No.: ELPSE.040T
REMARKS
The following remarks are submitted in response to the Office Action dated July 30, 2015, which refuses registration on the basis that Applicant’s mark is alleged to be merely descriptive of the applied-for-goods.
I. Applicant’s Mark Is Not Merely Descriptive
The Examining Attorney has refused registration pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), alleging that Applicant’s mark MOBILITY merely describes a characteristic of Applicant’s goods. Applicant submits that its MOBILITY mark does not immediately convey descriptive information to the consumer about Applicant’s goods but instead causes consumers to follow a multiple-step thought process and is therefore at most suggestive.
A. Standard For Descriptiveness And Suggestiveness
To be merely descriptive, a mark must immediately convey “knowledge of a quality, feature, function, or characteristic of the goods or services.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 U.S.P.Q.2d 1828, 1831 (Fed. Cir. 2007) (emphasis added). On the other hand, if one must exercise mature thought or follow a multi-step reasoning process in order to understand what characteristics of Applicant’s goods the mark describes or if a term has multiple meanings, then the term is suggestive, rather than merely descriptive. Consolidated Products Co., 76 U.S.P.Q. 73, 74 (Comm’r of Patents 1948). See, e.g., Levi Strauss & Co. v. R. Josephs Sportswear, Inc., 28 U.S.P.Q.2d 1464 (T.T.A.B. 1993) (ACTION SLACKS not merely descriptive of pants); Citibank N.A. Citibanc Group, Inc., F.2d 1540, 222 U.S.P.Q. 292 (11th Cir.) reh’g denied, 731 F.2d 8901 (11th Cir. 1984) (CITIBANK is at most suggestive, and not merely descriptive, of an urban bank); Ex parte Candle Vase, Inc. 105 U.S.P.Q. 73, 74 (Comm’r of Patents 1965) (CANDLE VASE not merely descriptive of flower holder adapted for fitting around the base of a candle); In re Scott Paper Co. 180 U.S.P.Q. 283 (T.T.A.B. 1973) (MICRO-WIPES for small paper wipes held “merely suggestive”).
It is well established that suggestiveness is not a bar to registration on the Principal Register. In this regard, T.M.E.P. § 1209.01(a) provides in pertinent part: “a designation does not have to be devoid of all meaning relative to the goods or services to be registrable.” It is not prohibited that a mark have the capacity to draw attention to what the goods are. The C.C.P.A. has held that a suggestive and therefore registrable mark may even go so far as to possess a “descriptive connotation” that conveys an impression of the goods. “The simple presence of that type of descriptive connotation, like the presence of suggestiveness, will not preclude registration where the mark is not merely descriptive of the goods.” The Coca-Cola Co. v. Seven-Up. Co., 497 F.2d 1351, 182 U.S.P.Q. 207, 209 (C.C.P.A. 1974) (holding UNCOLA not merely descriptive of noncola soft drinks).
In sum, Applicant submits that the mark MOBILITY is at most suggestive as used in connection with the applied-for goods, as the meaning of the term does not immediately describe Applicant’s goods. Rather, to understand the applicability of the mark MOBILITY as applied to applicants goods, relevant consumers must go through a multi-step reasoning process. In particular, the applied-for-goods do not directly increase the physical mobility of the user of the goods. The applied-for goods can make it more comfortable for the user of the goods to sit comfortably in a wheelchair or possibly may be used to allow greater access to a prosthetic device. However, the applied-for goods do not directly increase mobility in any way.
That said, the mark MOBILITY does increase the mental mobility of the user of the goods in that the benefits of use of the applied-for-goods include aesthetic improvements as to the appearance of the residual limb, as well as practical benefits related to the purchase of clothing to wear over the residual limb. In other words, the mark MOBILITY connotes to the user of the applied-for-goods a new found psychological freedom that assists the user of the goods to “move” forward despite physical disability. The mark is suggestive, at most, and not merely or immediately descriptive of the applied-for-goods.
The nexus between MOBILITY and Applicant’s goods is too tenuous to support a descriptiveness refusal and a consumer viewing Applicant’s mark must go through a complex, multi-step reasoning process in order to perceive the connection, if any, between the mark MOBILITY and Applicant’s goods. These necessary, significant, and multiple mental steps make the mark at most suggestive, not merely descriptive of the applied for goods.
Applicant’s goods, in International Class 10, are listed as being: “Residual limb lengthening devices for amputee patients.” An example good on which Applicant seeks to use the MOBILITY mark is a non-invasively adjustable intramedullary nail for increasing the length of residual limbs. Stated another way, the goods on which Applicant would like to use the MOBILITY mark are non-invasively adjustable growing nails for addressing amputation stumps.
Applicant is an industry leader in magnetically-driven non-invasively adjustable orthopedic devices. For example, it has developed non-invasively adjustable scoliosis rods that prevent the pain and expense of multiple adjustment surgeries in children suffering from scoliosis. Additionally, it has developed non-invasively adjustable intramedullary nails that help address limb length discrepancy, for example after cancerous bone resection. Now, Applicant is developing a non-invasively adjustable rod to specifically address residual limbs.
Residual limbs result after the majority of the limb has been lost. Limbs may be lost for many reasons. In this country, some of the most common reasons for limb loss include auto, industrial, and motorcycle accidents. However, sadly, one of the most common reasons for limb loss is military combat. Far too frequently combat veterans return to civilian life missing a portion of one or more limbs.
Applicant’s residual limb lengthening devices are inserted into the intramedullary canal of a residual limb. The intramedullary canal is the “hollow” in one of the leg bones (i.e., the femur/thigh bone or the tibia/shin bone). Normally, that hollow is filled with marrow. However, Applicant’s device may be inserted into that hole and non-invasively expanded to “stretch” the amputee’s bone stump. The device does not “regrow” the limb. Instead, the device merely makes the stump slightly longer to more closely visually match a normal limb – e.g., the device can make a short stump slightly longer.
The benefits of increasing stump length can be significant, including, for example, reducing the need to alter and/or tailor normal clothing to compensate for the amputated limb. However, more significant benefits that may not be ignored are aesthetic and psychological. Increasing residual limb length may make the limb’s absence less notable thereby decreasing passerby notice (e.g., unwanted staring). But, even more importantly, improving the residual limb can beneficially improve amputee confidence in themselves making it easier to accept, and then move past the loss. Additionally, some amputees have residual limbs (e.g., stumps) that are too short to sit comfortably in a wheelchair or accept a conventional prosthetic. Applicant’s goods may help some of these individual to sit comfortably, without pain, in their wheelchairs or may allow greater access to a prosthetic. Indeed, if Applicant’s goods ever increase the physical mobility of a user of Applicant’s goods, it would be steps removed from Applicant’s goods (e.g., Applicants goods may allow access to a prosthetic, somehow improving the user’s mobility).
As already explained, the Applicant’s goods do not directly improve mobility. Instead, Applicant’s mark MOBILITY in connection with the specific applied-for-goods connotes psychological mobility or freedom on the part of the amputee receiving the implant. These devices help amputees to psychologically address and shed the burden of their loss and then to “move” forward mentally as they take control of the situation. MOBILITY connotes a fresh, unfettered outlook that Applicant seeks to bring to amputees.
The Examining Attorney states that “‘mobility’ is defined as ‘the ability to move a part of your body.’” Then, the Examining Attorney asserts that “[a] benefit of the use of limb lengthening devices is increased mobility for the user” to support the conclusion that “the evidence makes clear [that] a purpose of limb lengthening devices is to increase mobility for the user of the device.” As such the Examining Attorney determined that the mark MOBILITY immediately describes a feature and characteristic of the goods and that, therefore, it is merely descriptive of Applicant’s goods. However, as discussed in detail above, Applicant’s goods do not directly improve the ability to move a part of the body as asserted in the Office Action—instead, they merely lengthen an amputee’s residual limb or stump. There is no immediate connection between the Applicant’s goods and physical mobility.
Thus, the mark MOBILITY is at most suggestive and certainly not merely descriptive of the applied for goods.
C. The Examining Attorney Has Not Met the Required Burden
The Examining Attorney has not met the burden of proving that Applicant’s MOBILITY mark is merely descriptive of Applicant’s goods. Pursuant to T.M.E.P. § 1209.02, “[i]f the examining attorney refuses registration, he or she should support the refusal with appropriate evidence.” The evidence submitted by the Examining Attorney does not show that the mark MOBILITY is merely descriptive of Applicant’s goods.
Each and every piece of evidence cited by the Examining Attorney describes the possible benefits provided by lengthening a whole limb. That is to say, for example, mobility may be increased when one abnormally short, whole limb (e.g., a short leg) is lengthened to match a longer counterpart limb (e.g., a normal leg). However, none of the evidence cited by the Office Action supports a conclusion that lengthening a residual limb (i.e., a stump) would increase mobility.
Applicant’s goods are specifically listed as being “Residual limb lengthening devices for amputee patients.” The attachments cited by the Office Action have no mention of amputee mobility or of goods for increasing amputee mobility. Accordingly, the articles espoused by the Examining Attorney are inapposite to a determination whether the mark MOBILITY is merely descriptive of Applicant’s goods. Moreover, as explained above, the purpose of Applicant’s goods is not to improve the ability to move a part of the body.
Therefore, the Examining Attorney has failed to meet the burden imposed by T.M.E.P. § 1209.02.
If there exists any doubt as to the proper categorization of a particular mark within the “four classic categories,” such doubt must be resolved in favor of the applicant. In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1986). Specifically, because the line between merely descriptive and only suggestive terms is “so nebulous,” the Trademark Board takes the position that doubt is resolved in favor of the applicant. McCarthy § 11:51; In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565 (T.T.A.B. 1972). Therefore, any doubt whether Applicant’s mark is merely descriptive of the listed goods or suggestive must be resolved in favor of Applicant.
II. Requirement for Additional Information
Pursuant to 37 C.F.R. § 2.61(b) and T.M.E.P § 814 the Examining Attorney has requested that Applicant submit additional product information about the goods. The mark is not presently being used on any commercially available goods. Additionally, no goods of the same type are currently on the market and/or available to consumers. Therefore, Applicant submits for the Examining Attorney’s consideration the attached description that makes clear how the goods operate, their salient features, their prospective customers and channels of trade, and the purpose of the goods.
CONCLUSION
Applicant submits that it has responded to all outstanding issues raised in the Office Action. Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned.
