To: | CVS Pharmacy, Inc. (sstavish@sheridanross.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86911719 - CVS HEALTH - 8335-103-5 |
Sent: | 3/17/2016 10:36:20 AM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86911719
MARK: CVS HEALTH
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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: CVS Pharmacy, Inc.
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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.
ISSUE/MAILING DATE: 3/17/2016
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, before the application can proceed, the Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Identification of Goods Unacceptable
The purpose of the identification of goods and/or services is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods and/or services. In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
● Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 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.
● In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).
Applicant may adopt the following identification of goods/services, if accurate:
International Class 3: Foot products, NAMELY, foot scrubs; pumice stones FOR PERSONAL USE; cosmetic cream; non-medicated foot socks; non-medicated foot powder; aromatic body care products, NAMELY, BODY LOTION, SHOWER GEL, CUTICLE CREAM, SHAMPOO, CONDITIONER, NON-MEDICATED LIP BALM, SOAP, BODY
POLISH, BODY AND FOOT SCRUB AND NON-MEDICATED FOOT CREAM; wipes impregnated with a cleaning preparation; massage oil; bath oil
International Class 5: diet supplements; dietary supplements; nutritional supplements; liquid protein
supplements; protein dietary supplements; whey protein supplements; diet pills; nutritional supplement for eliminating toxins from the body; foot supplement, NAMELY, NUTRITIONAL SUPPLEMENTS FOR FEET;
MEDICATED creams and powders for foot care; medicated foot lotion; medicated foot balm; wart removing preparations; corn and callus creams; antifungal preparations; bunion pads; corn pads; moleskin
for medical purposes; cotton wool for medical purposes; odor neutralizing sprays for foot odor; athlete's foot powders; medicated foot powder; Epsom salts; athlete's foot preparations; chewing gum
for medical purposes; medicated lozenges; tobacco and smoking cessation preparations that temporarily reduce the desire to smoke; transdermal patches featuring smoking cessation preparations; gels
used for personal lubricant
International Class 8: Foot care instruments, NAMELY, (Applicant must specify the common commercial name of the instruments); foot care implements, namely, foot scrapers; nail clippers; pedicure instruments, NAMELY, (Applicant must specify the common commercial name of the instruments); manicure instruments, NAMELY, (Applicant must specify the common commercial name of the instruments); callus cutters; hand tools, NAMELY, (Applicant must specify the common commercial name of the tools); hand tool, namely, a reacher to extends one's reach to grab and grip objects
International Class 10: Heel cushions; medical products for feet, NAMELY, (Applicant must specify the common commercial name of the
products); compression socks for medical or therapeutic use; splints; arch supports for footwear; supports for feet and toes for medical use; physical rehabilitation, physical therapy and sports
medicine equipment all designed specifically for medical use, NAMELY, (Applicant must specify the common commercial name of the equipment); therapeutic hot and cold therapy packs; massage apparatus,
NAMELY, (Applicant must specify the common commercial name of the apparatus); support bandages; medical products; bags for the collection and disposal of emesis waste; medical
products, namely, therapeutic mattresses, beds, seats and cushions, canes for medical purposes; crutches; slings FOR MEDICAL USE; cervical collars; rollators; walkers TO AID IN MOBILITY; crutch
accessory kits containing crutch tips, crutch pads, crutch cushions, crutch hand grips; walker accessories; walker accessories, namely, walker glide skis, walker replacement
parts, NAMELY, (Applicant must specify the common commercial name of the parts)
International Class 25: Clothing, NAMELY, socks and insoles; NON-MEDICATED FOOT SOCKS
International Class 30: Food thickeners, NAMELY, THICKENING AGENTS FOR USE IN COOKING
Disclaimer
A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark; a disclaimer of unregistrable matter does not affect the appearance of the mark or physically remove disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. An unregistrable component of a mark includes wording and designs that are descriptive in relation to the goods or services. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq. Such words or designs need to be freely available for other businesses to market comparable goods or services and should not become the proprietary domain of any one party. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
Applicant must disclaim the wording “HEALTH” because it is a descriptive term when used in relation to Applicant’s goods. Please see the attached evidence demonstrating the descriptiveness of the word HEALTH.
Applicant should submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “HEALTH” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
If the applicant has any questions or needs assistance in responding to this Office action, please email the assigned examining attorney or call the trademark helpline at 571-272-9250.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Theodore McBride/
Law Office 103
HELP LINE: 571-272-9250
theodore.mcbride1@uspto.gov
phone: 571-272-9281
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.