UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 1/29/2018

 

STATUS

 

This is in response to the applicant’s communication filed on January 1, 2018.  Therein, the applicant: 1) noted the cancellation of cited Registration No. 3956152; and 2) argued against the 2(e)(1) descriptiveness refusal.

The trademark examining attorney previously refused registration of the applied-for mark under Trademark Act Section 2(d) because of a likelihood of confusion with the mark in U.S. Registration No. 3956152.  However, USPTO records indicate that the cited registration has since been cancelled and/or expired and is no longer a bar to registration of applicant’s mark.  Therefore, the Section 2(d) refusal is withdrawn with respect to this particular registration. 

The following new issue, however, has come to the attention of the examining attorney.  The 2(e)(1) misdescriptive refusal is now issued along with the descriptiveness refusal being continued and maintained, along with an information request.

SECTION 2(E)(1) REFUSAL -  MERELY DESCRIPTIVE

Registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001); TMEP §1209.04.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, 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).

Applicant’s proposed mark is WEDGE for “Medical devices, namely, catheters for use in endovascular procedures.”

In this case, the mark is descriptive of applicant’s goods and does not create a unique, incongruous, or nondescriptive meaning in relation to the goods.  Specifically, the term “wedge” is descriptive of a type of catheter. See evidence preciously attached from Teleflex, Medexsupply, and NCBI.nlm.nih.gov showing descriptive use of the term “wedge” for goods similar to applicant’s goods. Additionally, attached is evidence from Benthamopen.com showing the term “wedge” is used to describe the purpose of goods similar to applicant’s goods: “Pushing the excluder body to the wedged renal artery balloon catheter,” “Micro-balloon catheter is wedged into the lower renal artery along the 0.014-inch guide-wired.”

Additionally evidence attached from Mondofacto.com shows the term “wedge” means to press closely, similar to the purpose of applicant’s goods. The proposed mark merely corresponds to wording that is not arbitrary, but bears a logical relationship to the goods provided by the applicant. 

Applicant argues “Applicant’s catheter functions to help lessen the gap that would otherwise be present between a guidewire and the overlaying access catheter through which the guidewire passes. The WEDGE products rests between the guidewire and the access catheter.” “Rather, they act as a conduit to allow placement of devices.” Evidence attached shows the purpose of catheters is often to “wedge” between spaces related to the guidewire, to rest between the spaces, and to lessen the gap.

Accordingly, since the applicant’s mark “WEDGE” is merely descriptive of applicant’s goods, the mark is refused registration on the Principal Register under Section 2(e)(1). Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

ALTERNATIVE REFUSAL - SECTION 2(e)(1) DECEPTIVELY MISDESCRIPTIVE

 

Registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001); TMEP §1209.04.

 

The test for determining whether a mark is deceptively misdescriptive has two parts:  (1) whether the mark misdescribes the goods; and if so, (2) whether consumers are likely to believe the misrepresentation.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)); TMEP §1209.04. 

 

Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods that the goods could plausibly possess but in fact do not.  In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005); see TMEP §1209.04.  To be merely descriptive, a mark must immediately convey knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).

 

The attached evidence and previously attached evidence show that the mark describes a purpose and characteristic of the goods.  It is plausible that the goods would possess such a feature or characteristic because the attached and previously attached evidence shows the term “wedge” used to describe the purpose and characteristic of goods similar to applicant’s goods.  However, applicant indicates the goods do not function as a “wedge.”

 

Regarding the second part of the test, the Board has applied the reasonably prudent consumer test in assessing whether consumers are likely to believe the misrepresentation.  In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)). 

 

In this case, the attached, and previously attached evidence shows that the reasonably prudent consumer, of goods similar to applicant’s, is likely to believe the representation because the term “wedge” is often used in relation to those goods.

 

A mark that has been refused registration under Trademark Act Section 2(e)(1) on the ground of deceptive misdescriptiveness may be registrable on the Principal Register under Section 2(f), upon a showing of acquired distinctiveness, or on the Supplemental Register.  15 U.S.C. §§1052(f), 1091; TMEP §1209.04.  However, a mark that is deceptive under Section 2(a) is not registrable on either the Principal or Supplemental Register under any circumstances.  TMEP §1209.04.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUEST FOR INFORMATION

 

The nature of the goods with which applicant intends to use or is using the mark is not clear from the present record and additional information is required.  To permit proper examination of the application, applicant must provide the following:

 

(1)        A sample of advertisements or promotional materials featuring the goods and a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph> of similar goods. 

 

(2)        A written statement describing in detail the nature, purpose, and channels of trade of the goods.

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant website information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

 

 

Gretta Yao

/gy/

Attorney

United States Patent & Trademark Office

Law Office 118

Gretta.Yao@uspto.gov

571.272.9313

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/29/2018 FOR U.S. APPLICATION SERIAL NO. 87411171

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 1/29/2018 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.