Response to Office Action

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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87124853 HEALTH MART(Standard Characters, see http://uspto.report/TM/87124853/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The U.S. Patent and Trademark Office the ?PTO? founds its refusal of registration of U.S. Application Serial No. 87/124853 for the mark HEALTH MART (the ?Applicant?s Mark?) on the proposition that the mark ?immediately names the exact nature and purpose of the goods and does nothing else.? Respectfully, this conclusion does not take into account the suggestive implication of Applicant's Mark in relation to Applicant's goods. HEALTH MART cannot describe the function or purpose of Applicant's products with any degree of precision, because ?HEALTH MART? (and ?MART?) could have a multiplicity of meanings and does not immediately describe the function or purpose of Applicant?s goods. Because thought and imagination is required to understand the exact nature of Applicant's goods, the mark is suggestive, and therefore registrable on the Principal Register. To be deemed merely descriptive, a mark must directly provide the consumer with reasonably accurate knowledge of the characteristics of the product or service in connection with which it is used. If the information about the product or service is indirect or vague, then the mark is considered suggestive, not descriptive. See J. McCarthy, McCarthy on Trademarks and Unfair Competition ?11.19, at 11-26 (4th ed. 1998). Applying these principles, Applicant?s mark is not descriptive. The mark ?HEALTH MART? does not immediately convey to one encountering it the nature of Applicant's goods. See TMEP ? 1209.01(a) (?a descriptive term? immediately tells something about the goods or services?). Applicant's mark is in fact suggestive because ?imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services.? In re Quik-Print Shops, Inc.616 F.2d 523, 525, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980). There is no reason to believe that ?HEALTH MART? has a specific meaning as it relates to Applicant's goods. Such ambiguity demonstrates that the mark is not merely descriptive with respect to Applicant's goods. As the United States Court of Appeals for the Federal Circuit explained in In re Hutchinson Technology Incorporated, 852 F.2d 552, 555 (Fed. Cir. 1988); 7 U.S.P.Q.2D (BNA) 1490, 1492, 1493, a term that can have multiple meanings does not convey the sort of immediate understanding of the goods necessary to classify a mark as merely descriptive. The court found the term "technology" to be a very broad term, encompassing many categories of goods, and that the idea "technology" does not convey an immediate idea of the ?ingredients, qualities, or characteristics of the goods? listed in the application: etched metal electronic components; flexible circuits; actuator bands for disk drives; print bands; increment disks; [and] flexible assemblies for disk drives. Thus, the term ?technology? was not merely descriptive. Similarly, ?health mart? and ?mart? for that matter fails to provide immediate information about Applicant's goods, and therefore is not merely descriptive with respect to those goods. Accordingly, the PTO should withdraw the refusal under Section 2(e)(1).

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for A full line of 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
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/00/2011 and first used in commerce at least as early as 10/00/2011 , and is now in use in such commerce.

Proposed:
Tracked Text Description: A full line of 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; 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 productsClass 005 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
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/00/2011 and first used in commerce at least as early as 10/00/2011 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /anr/     Date: 01/11/2018
Signatory's Name: Auma N. Reggy
Signatory's Position: Chief Trademark Counsel

Signatory's Phone Number: (404) 461-5216

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87124853
Internet Transmission Date: Thu Jan 11 18:06:56 EST 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20180111180656506
402-87124853-51074742ed04492c4cdcc423b29
d68d5f6817c1641dee9d5777d31bbca96444e9-N
/A-N/A-20180111175338033076