UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87124853
MARK: HEALTH MART
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Health Mart Systems, Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 2/6/2018
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on January 11, 2018.
The applicant has 1) argued against the Section 2(e)(1) refusal and 2) proposed an amendment to the identification of goods. Neither is acceptable.
The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).
In addition, the proposed amendment to the identification of goods is unacceptable and needs further amendment.
FINAL REFUSAL - MERE DESCRIPTIVENESS
Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods. The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.
The applicant has applied to register the mark HEALTH MART for “Non-prescription and over the counter pharmaceutical and first aid products, namely, analgesics, nutritional supplements, smoking cessation preparations, vitamins, and advanced wound care, baby care, diabetic, diagnostic, digestive health, eye and ear care, family planning, feminine care, first aid, incontinence, oral care, skin care and upper respiratory products.” In the initial Office action, the examining attorney determined that the mark was merely descriptive of the goods because the mark clearly identified a feature, characteristic, purpose, or provider of the goods. To support the descriptiveness finding, the examining attorney attached dictionary evidence and registrations showing descriptive treatment of the terms “HEALTH” and “MART” in similar contexts.
In its response to the descriptiveness refusal, the applicant has primarily argued that the evidence for the refusal is insufficient, asserting that: (1) the mark does not immediately name the exact nature and purpose of the goods, 2) the mark is suggestive, and 3) the wording in the mark has more than one meaning.
The examining attorney has reviewed the applicant’s position on the descriptiveness issue, but is unpersuaded. While the examining attorney agrees with the applicant’s statement of the well-established principle that the descriptiveness determination must be made in the context of the goods or services for which registration is sought, the examining attorney finds that this principle clearly supports the descriptiveness refusal in this case.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, the applicant provides health care products including pharmaceuticals and first aid products. The nature of the entity or provider of the goods is a mart or retail establishment.
The term “HEALTH” is commonly used in the pharmaceutical and health care industries to refer to products intended to improve or assist with health care. Please see attached excerpted articles from the examining attorney’s search in the on the Internet. The term “MART” simply refers to the provider of the goods. Terms that describe the provider of a product or service may also be merely descriptive of the product and/or service. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q).
In addition, in this case, there is no incongruity, and no imagination is needed to figure out exactly what the goods are. The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); 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, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In light of the evidence of record in this case (including the third-party registration evidence attached to the initial Office action), the examining attorney finds that consumers who encounter the applicant’s mark in commerce in the context of the identified goods would immediately perceive the wording HEALTH MART as identifying the fact that the applicant’s goods pertain to health care products including pharmaceuticals and first aid products provided and offered at a mart or retail establishment. And while the applicant correctly stated the general principle that all doubts as to descriptiveness must be resolved in favor of the applicant, in this case the examining attorney simply has no doubts with respect to the descriptiveness of the mark at issue. Here, there is no question that the goods are health products and the nature of the applicant’s entity type is a mart or retail establishment.
Accordingly, for the above reasons, the examining attorney again concludes that the applied-for mark is merely descriptive of the identified services, and is unpersuaded by the applicant’s arguments to the contrary. Accordingly, the refusal to register under Section 2(e)(1) is hereby maintained and made FINAL.
FINAL - IDENTIFICATION OF GOODS
The applicant has amended the identification to delete the designation of a “full line” however, the applicant failed to specify the actual products for the following goods: “advanced wound care, baby care, diabetic, diagnostic, digestive health, eye and ear care, family planning, feminine care, first aid, incontinence, oral care, skin care and upper respiratory products.” Applicant must specify the type of products using common commercial terms because this wording is overly broad and indefinite.
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. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a). Similarly, the term “products” is indefinite and must be further specified.
Applicant may adopt the following wording, if accurate:
Class 5
Non-prescription and over the counter pharmaceutical and first aid products, namely, analgesics, nutritional supplements, smoking cessation preparations, vitamins, and _____________ [applicant must specify the goods intended by the wording “advanced wound care, baby care, diabetic, diagnostic, digestive health, eye and ear care, family planning, feminine care, first aid, incontinence, oral care, skin care and upper respiratory products” using common commercial terms], in International Class 5.
TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Accordingly, the requirement to amend the identification of goods is maintained and made FINAL.
PROPER RESPONSE TO FINAL REFUSAL
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
Meier, Sharon
/Sharon A. Meier/
Trademark Attorney, LO 112
571-272-9195 - phone
571-273-9112 - fax
sharon.meier1@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.