| 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 | 87232243 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87232243/mark.png |
| LITERAL ELEMENT | HEALTH OPTIMIZATION INDEX |
| 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) | |
|
Request for Information
Applicant can answer the Examining Attorney’s Request for Information as follows:
1) What is the meaning and significance of the wording “optimization index” in relation to applicant’s services?
Applicant’s services are recited as “providing information in the fields of health and wellness.” Applicant has no separate intention to offer an “optimization index” and thus, the “optimization index” wording has no relevant meaning or association to or with Applicant’s recited services.
2) Do applicant’s services involve or rely on an index? NO
a. Please explain how this index is used in providing the services named in the application.
Applicant’s use of INDEX refers to the results of an initial survey conducted into the type and nature of various health and wellness issues encountered by every day consumers.
3) What does applicant’s index measure or record?
Applicant’s survey obtained information and insight into the type and nature of various health issues and concerns encountered by every day consumers.
4) Does applicant’s index measure the ability of consumers to optimize their health? NO.
a. Please explain the data collected by the index.
The data collected by Applicant’s survey is wide ranging and is intended to be used as a basis to provide a wide range of health-related information to consumers. Applicant has not yet further formulated how it may use this data or take steps to obtain additional data for use in connection with the offering of the recited services.
5) Please provide promotional materials that use the wording “health optimization index” and the corresponding URLs or websites addresses, if applicable.
Applicant has not yet produced any promotion materials or other content pertaining to its use of the HEALTH OPTIMIZATION INDEX Mark in connection with the recited services.
6) Do other entities in applicant’s field or industry use the wording “optimization index?”
Yes. Applicant is aware of the existence of several other uses of the wording “optimization index” by third parties in connection with several other undertakings, none of appear to be related to the recited services of “providing information in the fields of health and wellness.”
7) If so, please provide examples of such use(s) and the corresponding URLs or websites addresses, if applicable.
http://www.pymnts.com/x-border-payments-optimization/
http://cisco.impliedlogic.com/public/moi/
http://www.aon.com/risk-services/agcn/global-optimization/default.jsp
http://stackoverflow.com/questions/12989773/postgresql-index-optimization
http://onlinehelp.coveo.com/en/ces/7.0/administrator/about_the_index_self-optimization_process.htm
http://ascelibrary.org/doi/abs/10.1061/%28ASCE%29BE.1943-5592.0000838
Refusal of Registration
The Examining Attorney has refused to register Applicant’s HEALTH OPTIMIZATION INDEX Mark under Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1). In support of his assertion that the terms “HEALTH” “OPTIMIZATION’ and “INDEX” are descriptive for related services, the Examining Attorney provides dictionary definitions for the terms “optimization” and “index” and references to a page from Applicant’s Internet web site purportedly showing:
“uses the proposed mark to refer to “a survey” and indicates that applicant’s services provide “insights from more than 1,000 consumers about the journey to optimizing their health…” The page further explains that the “results showcase the need for a more personalized approach to supporting consumers’ health across all demographics.”
According to the Examining Attorney, the combination of the dictionary definitions and the content referenced from one page of Applicant’s web site shows that the subject “mark merely describes the subject matter and the primary feature and purpose of applicant’s services.”
Applicant respectfully submits that Applicant’s HEALTH OPTIMIZATION INDEX Mark is, at the very least, suggestive rather than descriptive and that the descriptiveness refusal is inappropriate here for several reasons.
A. The HEALTH OPTIMIZATION INDEX Wording Does Not Immediately Convey Idea of Applicant’s Services
The primary test for determining whether the HEALTH OPTIMIZATION INDEX wording is descriptive within the meaning of Section 2(e)(1) of the Lanham Act is whether the wording immediately conveys to consumers the nature of Applicant’s goods and/or services, or whether consumers must use “imagination, thought and perception” to draw that conclusion. See Stix Prod.,Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968); see also In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987) citing In re Qwik-Print Copy Shops, Inc., 616 F.2d 523 (CCPA 1980); In re Cemco, Inc., 2010 TTAB LEXIS 259 (TTAB 2010)(reversing refusal to register after determining mark KOOLER KIOSK was not merely descriptive of a water cooler attachment because mark did not immediately convey to consumer what goods/services the mark pertained to). A merely descriptive mark is literal and points directly to the goods or services with which it is used.
A suggestive mark, however, merely alludes to such goods or services. “Generally speaking, if the mark imparts information directly, it is descriptive. If it stands for an idea which requires some operation of the imagination to connect it with the goods or services, it is suggestive.” Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir. 1976), cert. denied, 429 U.S. 830 (1976)(emphasis added); Bliss Salon Day Spa v. Bliss World LLC, 2000 U.S. Dist. LEXIS 18871 (N.D. Ill. Dec. 22, 2000). A key attribute of a suggestive mark is that the viewer can interpret the mark to suggest a variety of goods or services in addition to those goods and services that the applicant uses the mark to identify. “The primary criterion is the imaginativeness involved in the suggestion ... that is, how immediate and direct is the thought process from the mark to the particular product ... one might conjure up images of appellant’s [products], yet a number of other images might also follow.” AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979)(finding that SLICKCRAFT is not descriptive for boats and is thus registrable); see also Lahoti v. Vericheck, 2010 U.S. Dist. LEXIS 35323, 20-21 (W.D. Wash. Apr. 9, 2010)(“the 'primary criterion' for distinguishing between a suggestive and a descriptive mark 'is the imaginativeness involved in the suggestion, that is, how immediate and direct is the thought process from the mark to the particular product.'")(quoting Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 911 (9th Cir. 1995)). Thus, courts have recognized that "[a] mark is suggestive if imagination or a mental leap is required in order to reach a conclusion as to the nature of the product being referenced." Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1147 n.3 (9th Cir. 1999)(emphasis added).
The HEALTH OPTIMIZATION INDEX Mark is not merely descriptive of Applicant’s services and does not immediately convey to consumers the nature or purpose of Applicant’s services. In support of the descriptiveness refusal, the Examining Attorney provided various definitions of the terms “optimization” and “index.” Applicant notes that the term “health” refers to a variety of conditions, such as soundness, vitality or wellness. However, the term “health” can also be used to describe additional specific types of status, such as: financial health, spiritual health, mental health, women’s health, and community health. In these instances, the term is used to describe more than just physical well-being and connotes more than just a physical state. Additionally, the term can describe the absence of disease, mental wellbeing, social wellbeing, and financial stability or success, etc. Most people agree it is possible to have mental health, physical health, and social health, for example, and understand the nuances of each of the uses of the term “health” in these examples. In order to grasp the context of the use of the term “health,” other terms are needed to better refine its particular use in connection with particular goods/services.
It is telling to note that while the Examining Attorney has provided definitions for the terms “index” and “optimization”, the composite term “health optimization” does not lend itself to any description of a specific function, good or service. For instance, a search for the phrase “health optimization” reveals a variety of uses of the phrase, including metabolic bio typing, holistic health remedies, dog food, behavioral health-related therapies, etc.
Ultimately, upon viewing the HEALTH OPTIMIZATION INDEX Mark, numerous conflicting ideas might come to the mind of the consumer. For example, HEALTH OPTIMIZATION INDEX might trigger ideas associated with exercise or perhaps better eating habits. Or in the alternative, a consumer might think of a test to see whether they are engaged in a healthy lifestyle, perhaps a process of calculating how much sleep is appropriate based on caloric intake, exercise and age; or even a system that calculates a person’s optimal body mass index (BMI) based on their weight and height. None of the foregoing uses are related to the provision of “information in the fields of health and wellness.” Thus, as the consumer is required to use imagination and multistage reasoning to understand the mark's significance, the mark should be considered suggestive rather than descriptive. See Zobmondo Entm't, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010). In view of the foregoing, it is Applicant’s position that the mark is, at the very least, suggestive of the services.
B. Applicant’s Mark Combines Wording to Create a Unique Commercial Impression
The combination of the terms “health,” “optimization” and “index” also creates new commercial language with a unique and distinctive impression. TMEP § 1209.03(d) states that even “a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, non-descriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods.” See In re Colonial Stores., 394 F.2d 549 (C.C.P.A. 1968)(SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983)(SNO-RAKE held not merely descriptive of a snow removal hand tool); see also In re Cemco, Inc., 2010 TTAB LEXIS 259 (TTAB 2010)(KOOLER KIOSK not merely descriptive). As noted above, the HEALTH OPTIMIZATION INDEX Mark is susceptible to different meanings, and thus presents an incongruity. As a result, when considered as a whole, the HEALTH OPTIMIZATION INDEX Mark creates a unique commercial impression worthy of registration on the Principal Register.
C. Third-Party Registrations of Unitary Composite Marks Support Registration of Applicant’s Mark
In fact, the concept of Applicant’s mark is not unlike other marks that the PTO has registered on the Principal Register. Applicant notes there are Principal Registrations that contain the term “optimization” and disclaim a different portion of the mark, and/or disclaim the mark in connection with another term where appropriate. For example, ROOM OPTIMIZATION, Reg. No. 3313764 disclaims the term “room;” LIFECYCLE OPTIMIZATION TOOLS, Reg. No. 3379494 disclaims the term “tools;” and THE WEALTH OPTIMIZATION ADVANTAGE mark, Reg. No. 3254895 disclaims the term “Wealth Optimization.” Although the registered mark may include one or two terms which by themselves might be deemed descriptive, the marks were ultimately registered in part because they represented a unitary combination of two or three distinct words in a unique fashion. Therefore, it is submitted that the foregoing third-party registrations constitute probative evidence in support of the registration of the HEALTH OPTIMIZATION INDEX Mark.
D. Doubt Should Be Resolved in Favor of Applicant
Finally, because the distinction between merely descriptive and suggestive terms is “nebulous,” and because competitors have the opportunity to oppose registration once a mark is published, the Board’s practice is to resolve any doubts as to whether a mark or wording is merely descriptive or suggestive in favor of the Applicant. See In re Schutts, 217 U.S.P.Q. at 364 (invoking rule that doubt as to whether a mark is descriptive should be resolved in favor of Applicant); see also In re Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB 1981)(The Board's practice is "to resolve doubts in applicant's favor and publish the mark for opposition"); see also In re Murad, Inc., 2010 TTAB LEXIS 31 (TTAB 2010). Because the HEALTH OPTIMIZATION INDEX Mark is susceptible to multiple meanings and thus does not immediately convey to the consumer what the related goods or services are, and because the term requires the consumer to make a “mental leap” to connect the term to Applicant’s intended services, Applicant requests that any doubt as to whether the HEALTH OPTIMIZATION INDEX Mark is merely descriptive should be decided in its favor.
CONCLUSION
Based upon the foregoing, Applicant respectfully submits that its use of the HEALTH OPTIMIZATION INDEX Mark is not merely descriptive because it does not immediately describe a specific feature or characteristic of the recited services. Rather, the term requires the consumer to make a “mental leap” to connect the term to Applicant’s branded services. In the event the Examining Attorney maintains any doubt as to the extent of the mental leap a consumer must make to determine the nature of the HEALTH OPTIMIZATION INDEX Mark’s services, any such doubt should be resolved in Applicant’s favor. Accordingly, Applicant respectfully requests withdrawal of the descriptiveness refusal and approval of the subject application for publication. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /michael leonard/ |
| SIGNATORY'S NAME | Michael J. Leonard |
| SIGNATORY'S POSITION | Attorney of Record, PA Bar Member |
| DATE SIGNED | 08/16/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Aug 16 15:41:20 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20170816154120432774-8723 2243-510b0254c66bad6021b9 66b879838f1cb5b94cad23362 d88d26bfa97b91a50cdd5-N/A -N/A-20170816153940914456 |
| 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) |
Request for Information
Applicant can answer the Examining Attorney’s Request for Information as follows:
1) What is the meaning and significance of the wording “optimization index” in relation to applicant’s services?
Applicant’s services are recited as “providing information in the fields of health and wellness.” Applicant has no separate intention to offer an “optimization index” and thus, the “optimization index” wording has no relevant meaning or association to or with Applicant’s recited services.
2) Do applicant’s services involve or rely on an index? NO
a. Please explain how this index is used in providing the services named in the application.
Applicant’s use of INDEX refers to the results of an initial survey conducted into the type and nature of various health and wellness issues encountered by every day consumers.
3) What does applicant’s index measure or record?
Applicant’s survey obtained information and insight into the type and nature of various health issues and concerns encountered by every day consumers.
4) Does applicant’s index measure the ability of consumers to optimize their health? NO.
a. Please explain the data collected by the index.
The data collected by Applicant’s survey is wide ranging and is intended to be used as a basis to provide a wide range of health-related information to consumers. Applicant has not yet further formulated how it may use this data or take steps to obtain additional data for use in connection with the offering of the recited services.
5) Please provide promotional materials that use the wording “health optimization index” and the corresponding URLs or websites addresses, if applicable.
Applicant has not yet produced any promotion materials or other content pertaining to its use of the HEALTH OPTIMIZATION INDEX Mark in connection with the recited services.
6) Do other entities in applicant’s field or industry use the wording “optimization index?”
Yes. Applicant is aware of the existence of several other uses of the wording “optimization index” by third parties in connection with several other undertakings, none of appear to be related to the recited services of “providing information in the fields of health and wellness.”
7) If so, please provide examples of such use(s) and the corresponding URLs or websites addresses, if applicable.
http://www.pymnts.com/x-border-payments-optimization/
http://cisco.impliedlogic.com/public/moi/
http://www.aon.com/risk-services/agcn/global-optimization/default.jsp
http://stackoverflow.com/questions/12989773/postgresql-index-optimization
http://onlinehelp.coveo.com/en/ces/7.0/administrator/about_the_index_self-optimization_process.htm
http://ascelibrary.org/doi/abs/10.1061/%28ASCE%29BE.1943-5592.0000838
Refusal of Registration
The Examining Attorney has refused to register Applicant’s HEALTH OPTIMIZATION INDEX Mark under Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1). In support of his assertion that the terms “HEALTH” “OPTIMIZATION’ and “INDEX” are descriptive for related services, the Examining Attorney provides dictionary definitions for the terms “optimization” and “index” and references to a page from Applicant’s Internet web site purportedly showing:
“uses the proposed mark to refer to “a survey” and indicates that applicant’s services provide “insights from more than 1,000 consumers about the journey to optimizing their health…” The page further explains that the “results showcase the need for a more personalized approach to supporting consumers’ health across all demographics.”
According to the Examining Attorney, the combination of the dictionary definitions and the content referenced from one page of Applicant’s web site shows that the subject “mark merely describes the subject matter and the primary feature and purpose of applicant’s services.”
Applicant respectfully submits that Applicant’s HEALTH OPTIMIZATION INDEX Mark is, at the very least, suggestive rather than descriptive and that the descriptiveness refusal is inappropriate here for several reasons.
A. The HEALTH OPTIMIZATION INDEX Wording
Does Not Immediately Convey Idea of Applicant’s Services
The primary test for determining whether the HEALTH OPTIMIZATION INDEX wording is descriptive within the meaning of Section 2(e)(1) of the Lanham Act is whether the wording immediately conveys to consumers the nature of Applicant’s goods and/or services, or whether consumers must use “imagination, thought and perception” to draw that conclusion. See Stix Prod.,Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968); see also In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987) citing In re Qwik-Print Copy Shops, Inc., 616 F.2d 523 (CCPA 1980); In re Cemco, Inc., 2010 TTAB LEXIS 259 (TTAB 2010)(reversing refusal to register after determining mark KOOLER KIOSK was not merely descriptive of a water cooler attachment because mark did not immediately convey to consumer what goods/services the mark pertained to). A merely descriptive mark is literal and points directly to the goods or services with which it is used.
A suggestive mark, however, merely alludes to such goods or services. “Generally speaking, if the mark imparts information directly, it is descriptive. If it stands for an idea which requires some operation of the imagination to connect it with the goods or services, it is suggestive.” Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir. 1976), cert. denied, 429 U.S. 830 (1976)(emphasis added); Bliss Salon Day Spa v. Bliss World LLC, 2000 U.S. Dist. LEXIS 18871 (N.D. Ill. Dec. 22, 2000). A key attribute of a suggestive mark is that the viewer can interpret the mark to suggest a variety of goods or services in addition to those goods and services that the applicant uses the mark to identify. “The primary criterion is the imaginativeness involved in the suggestion ... that is, how immediate and direct is the thought process from the mark to the particular product ... one might conjure up images of appellant’s [products], yet a number of other images might also follow.” AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979)(finding that SLICKCRAFT is not descriptive for boats and is thus registrable); see also Lahoti v. Vericheck, 2010 U.S. Dist. LEXIS 35323, 20-21 (W.D. Wash. Apr. 9, 2010)(“the 'primary criterion' for distinguishing between a suggestive and a descriptive mark 'is the imaginativeness involved in the suggestion, that is, how immediate and direct is the thought process from the mark to the particular product.'")(quoting Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 911 (9th Cir. 1995)). Thus, courts have recognized that "[a] mark is suggestive if imagination or a mental leap is required in order to reach a conclusion as to the nature of the product being referenced." Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1147 n.3 (9th Cir. 1999)(emphasis added).
The HEALTH OPTIMIZATION INDEX Mark is not merely descriptive of Applicant’s services and does not immediately convey to consumers the nature or purpose of Applicant’s services. In support of the descriptiveness refusal, the Examining Attorney provided various definitions of the terms “optimization” and “index.” Applicant notes that the term “health” refers to a variety of conditions, such as soundness, vitality or wellness. However, the term “health” can also be used to describe additional specific types of status, such as: financial health, spiritual health, mental health, women’s health, and community health. In these instances, the term is used to describe more than just physical well-being and connotes more than just a physical state. Additionally, the term can describe the absence of disease, mental wellbeing, social wellbeing, and financial stability or success, etc. Most people agree it is possible to have mental health, physical health, and social health, for example, and understand the nuances of each of the uses of the term “health” in these examples. In order to grasp the context of the use of the term “health,” other terms are needed to better refine its particular use in connection with particular goods/services.
It is telling to note that while the Examining Attorney has provided definitions for the terms “index” and “optimization”, the composite term “health optimization” does not lend itself to any description of a specific function, good or service. For instance, a search for the phrase “health optimization” reveals a variety of uses of the phrase, including metabolic bio typing, holistic health remedies, dog food, behavioral health-related therapies, etc.
Ultimately, upon viewing the HEALTH OPTIMIZATION INDEX Mark, numerous conflicting ideas might come to the mind of the consumer. For example, HEALTH OPTIMIZATION INDEX might trigger ideas associated with exercise or perhaps better eating habits. Or in the alternative, a consumer might think of a test to see whether they are engaged in a healthy lifestyle, perhaps a process of calculating how much sleep is appropriate based on caloric intake, exercise and age; or even a system that calculates a person’s optimal body mass index (BMI) based on their weight and height. None of the foregoing uses are related to the provision of “information in the fields of health and wellness.” Thus, as the consumer is required to use imagination and multistage reasoning to understand the mark's significance, the mark should be considered suggestive rather than descriptive. See Zobmondo Entm't, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010). In view of the foregoing, it is Applicant’s position that the mark is, at the very least, suggestive of the services.
B. Applicant’s Mark Combines Wording to
Create a Unique Commercial Impression
The combination of the terms “health,” “optimization” and “index” also creates new commercial language with a unique and distinctive impression. TMEP § 1209.03(d) states that even “a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, non-descriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods.” See In re Colonial Stores., 394 F.2d 549 (C.C.P.A. 1968)(SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983)(SNO-RAKE held not merely descriptive of a snow removal hand tool); see also In re Cemco, Inc., 2010 TTAB LEXIS 259 (TTAB 2010)(KOOLER KIOSK not merely descriptive). As noted above, the HEALTH OPTIMIZATION INDEX Mark is susceptible to different meanings, and thus presents an incongruity. As a result, when considered as a whole, the HEALTH OPTIMIZATION INDEX Mark creates a unique commercial impression worthy of registration on the Principal Register.
C. Third-Party Registrations of Unitary Composite
Marks Support Registration of Applicant’s Mark
In fact, the concept of Applicant’s mark is not unlike other marks that the PTO has registered on the Principal Register. Applicant notes there are Principal Registrations that contain the term “optimization” and disclaim a different portion of the mark, and/or disclaim the mark in connection with another term where appropriate. For example, ROOM OPTIMIZATION, Reg. No. 3313764 disclaims the term “room;” LIFECYCLE OPTIMIZATION TOOLS, Reg. No. 3379494 disclaims the term “tools;” and THE WEALTH OPTIMIZATION ADVANTAGE mark, Reg. No. 3254895 disclaims the term “Wealth Optimization.” Although the registered mark may include one or two terms which by themselves might be deemed descriptive, the marks were ultimately registered in part because they represented a unitary combination of two or three distinct words in a unique fashion. Therefore, it is submitted that the foregoing third-party registrations constitute probative evidence in support of the registration of the HEALTH OPTIMIZATION INDEX Mark.
D. Doubt Should Be Resolved in Favor of Applicant
Finally, because the distinction between merely descriptive and suggestive terms is “nebulous,” and because competitors have the opportunity to oppose registration once a mark is published, the Board’s practice is to resolve any doubts as to whether a mark or wording is merely descriptive or suggestive in favor of the Applicant. See In re Schutts, 217 U.S.P.Q. at 364 (invoking rule that doubt as to whether a mark is descriptive should be resolved in favor of Applicant); see also In re Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB 1981)(The Board's practice is "to resolve doubts in applicant's favor and publish the mark for opposition"); see also In re Murad, Inc., 2010 TTAB LEXIS 31 (TTAB 2010). Because the HEALTH OPTIMIZATION INDEX Mark is susceptible to multiple meanings and thus does not immediately convey to the consumer what the related goods or services are, and because the term requires the consumer to make a “mental leap” to connect the term to Applicant’s intended services, Applicant requests that any doubt as to whether the HEALTH OPTIMIZATION INDEX Mark is merely descriptive should be decided in its favor.
CONCLUSION
Based upon the foregoing, Applicant respectfully submits that its use of the HEALTH OPTIMIZATION INDEX Mark is not merely descriptive because it does not immediately describe a specific feature or characteristic of the recited services. Rather, the term requires the consumer to make a “mental leap” to connect the term to Applicant’s branded services. In the event the Examining Attorney maintains any doubt as to the extent of the mental leap a consumer must make to determine the nature of the HEALTH OPTIMIZATION INDEX Mark’s services, any such doubt should be resolved in Applicant’s favor. Accordingly, Applicant respectfully requests withdrawal of the descriptiveness refusal and approval of the subject application for publication.