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: 5/1/2018

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS: NO CONFLICTING MARKS

 

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).

 

SUMMARY OF ISSUES:

 

• REFUSAL: SECTION 2(e)(1) - MERELY DESCRIPTIVE
• ADVISORY: APPLIED-FOR MARK APPEARS TO BE GENERIC
• REFUSAL: MARK ON THE DRAWING AND SPECIMEN DIFFER – MATERIAL
• REQUIREMENT: CORRECT CLASSIFICATION OF GOODS
• ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

REFUSAL: SECTION 2(e)(1) - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a characteristic of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

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)). 

 

Applicant has applied to register the mark ORTHO (standard characters) for “mattresses, mattress foundations, adjustable bed bases, mattress covers, pillow covers, pillows” in International Class 20. 

 

Attached at Exhibit A, is evidence from Acronym Finder showing that the word “ORTHO” is an abbreviation for the word “orthopedic.”  The Macmillan Dictionary shows that term “orthopedic” means “designed to be used by people with injuries or diseases affecting their bones and muscles.”  See the dictionary definition at Exhibit B.

 

Applicant’s goods are identified as “mattresses, mattress foundations, adjustable bed bases, mattress covers, pillow covers, pillows” in International Class 20.  These types of goods are commonly “designed to be used by people with injuries or diseases affecting their bones and muscles.”  See the dictionary definition at Exhibit B.  As evidence of this, attached at Exhibit C and excerpted below, is evidence from Wikipedia and Best MattressesReviews explaining what an orthopedic mattresses is.

 

An orthopedic mattress (or orthopaedic mattress) is a mattress designed to support the joints, back and overall body. As its name suggests, an orthopaedic mattress[1] has been influenced by the medical study of orthopaedics which focuses on disorders or deformities of the spine and joints. Orthopaedic mattresses have been created to combat the problems one might experience with a bad back or joints by providing a firm mattress which offers targeted, tailored support.

 

An Orthopedic mattress is a type of mattress designed and structured to support the joints, back, and the overall muscular skeletal body. The Orthopedic mattress is a popular preference among people who are suffering from unceasing back pain and other muscular or skeletal conditions. Still, there are a quite number of people without any such troubling conditions who find the Orthopedic mattress as a comfortable and relaxing sleeping partner.

 

In addition, attached at Exhibit D and excerpted below, is Internet evidence showing third-parties offering orthopedic goods similar to those of the applicant in this case.

 

• Orthopedic Mattresses & Box Springs

Our Orthopedic mattresses and box springs offer superior comfort, support and durability. There are seven models available, ranging from the firmest tight top to the thickest and softest pillow top.

 

• The Beautyrest Orthopedic Mattress Pad with Stain Release adds unique comfort and protection to any bed.

 

• Top 10 Best Orthopedic Mattresses in 2018

…

Check out this round-up of the top 10 orthopedic mattresses as a detailed buying guide before you choose the one that’s suitable for your back problems. We have also written a complete guide about best Orthopedic Pillows.

 

·       Top 10 Best Orthopedic Pillows in 2018

…

We selected the 10 best orthopedic pillows that have proven themselves in alleviating neck pain and resulting morning headaches. These vary across the price range and shapes.

 

·       Orthopedic bed base

Slatted orthopedic adjustable bed base

 

·       Ortho-Fiber 2.0 Premium Orthopedic Bed Pillow from PRO2 Medical Supply Shop aligns the spine, supporting the neck in its natural position to help relieve headaches, joint strain, arthritis or neck injury pain. The plush and hypoallergenic fiber fill is cooler, and softer than foam pillows.

 

·       Perfect Your Sleeping Position with an Orthopedic Pillow

…

Orthopedic pillows come in many sizes and shapes and serve different purposes.

 

The most popular orthopedic pillows are rectangular (usually conforming to the standard pillow dimensions of 20×26″) and are intended to fill the space between your head and the mattress. Not all orthopedic pillows are intended to support your head and neck however. Some are designed for more unique circumstances, like elevating your legs or back. We’ll be looking specifically at orthopedic bed pillows intended to provide head and neck support…

 

·       The D-Core Cervical Orthopedic Support Pillow by Core Products provides users with superior cervical support. Designed with a patented D-shaped center, this orthopedic pillow gently supports the head and neck during sleep; this support helps relieve tension headaches, neck spasms, arthritis and even snoring. By using this pillow, users are able to get restful sleep without having to wake up with a sore neck or shoulder. Buy the D-Core Cervical Orthopedic Support Pillow by Core Products today from ActiveForever!

 

·       Orthopedic Plush

One of the best sellers in our lineup, this double-sided plush mattress also uses the 390 Bonnell spring unit.  The extra foam included in the quilting on both sides brings additional comfort.  Cost effective with a medium-firm feel, this mattress is a must have for your collection.

 

·       Orthopedic Classic hit the market about 30 years ago. It is our original plush top mattress. We handcraft this classic two-sided bed, the same way we have the past 30 years

 

Also, the term “ORTHO” appears to be commonly used in the bedding industry in connection with goods that are orthopedic.  As evidence of this, attached at Exhibit E and excerpted below, is Internet evidence showing third-parties using the term “ORTHO” in connection with goods similar to those of the applicant in this case, where the goods are orthopedic.

 

·       Quality sleep, value pricing with Super Standard Mattress. Marjan Ortho is a firm orthopedic support mattress designed to deliver fabulous sleep each night. The special jacquard fabric quilting and high standard medical foam provide the perfect environment for comfortable sleep.

 

·       Presenting, the best orthopaedic mattresses online that will have a therapeutic impact on your daily life and promise the great body support and back pain relief. The most wonderful feature of these ortho mattress online is that they provide ample spine support but are comfortable at the same time.

 

·       Ortho Chiro Pillowtop King Mattress Set…The super plush orthopedic king mattress collection features reinforced border support, a 1" padded top, and 1" core filling.

 

·       Ortho Support Mattresses

Mattress Guide Ideal for those who suffer from back problems or who just prefer a firmer sleep surface, MattressesWorld’s selection of orthopaedic mattresses has something for everyone. Whether you prefer a pocket sprung mattress or coil sprung, foam or memory foam, our range of ortho mattresses will provide plenty of top quality options.

 

·       Orthopedic Pillows and Sleep Position

Ortho pillows come in a variety of styles, which each different style targeting a different part of the body.

 

As addition evidence that the term “ORTHO” is merely descriptive of goods similar to those of the applicant in this case, attached at Exhibit F, are third-party registrations showing marks disclaiming the term “ORTHO” for goods similar to those of the applicant in this case.  Third-party registrations featuring goods the same as or similar to applicant’s goods are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register.  E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).

 

Therefore, registration must be refused under Trademark Act Section 2(e)(1) because the applied-for mark, ORTHO, is merely descriptive of a characteristic of the applicant’s identified goods, namely, indicating that the goods are orthopedic or designed to support the joints, back and overall body.

 

ADVISORY: APPLIED-FOR MARK APPEARS TO BE GENERIC

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods.  In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

REFUSAL: MARK ON THE DRAWING AND SPECIMEN DIFFER - MATERIAL

 

Registration is refused because the specimen does not show the applied-for mark in the drawing in use in commerce in International Class 20.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  Specifically, the specimen displays the mark as ORTHO HYBRID; however, the drawing displays the mark as ORTHO. 

 

The drawing shows the mark sought to be registered, and must be a substantially exact representation of the mark as used on or in connection with the goods, as shown by the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a).  Because the mark in the drawing is not a substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for mark in commerce on or in connection with applicant’s goods.  See TMEP §807.12(a).

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

Regarding whether applicant may submit an amended drawing in response to this refusal, applicant is advised that the drawing of a mark can be amended only if the amendment does not materially alter the mark as originally filed.  37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq.  In this case, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration and would not be accepted, because the difference between the mark in the specimen and the drawing is significant and each mark creates a different commercial impression.  Specifically, the mark on the specimen of use is shown as ORTHO HYBRID.  However, the applied-for mark is ORTHO only.  The addition of the word “HYBRID” alters the commercial impression of the mark and is a mark that is different than the applied-for mark which would require a different search of the Office records.

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)  Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the applied-for mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.

 

(2)  Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen at a subsequent date.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/J3_1.jsp.

 

REQUIREMENT: CORRECT CLASSIFICATION OF GOODS

 

Applicant has classified the following goods in International Class 20:  “mattress covers, pillow covers.”  However, the proper classification for each item is as follows: 

 

IC 24: mattress covers, pillow covers

 

Additionally, applicant has provided the application fee for only 1 international class.  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen is not acceptable for any international class.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

           

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

ADVISORY: RESPONDING TO THIS OFFICE ACTION

 

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.  

 

OFFICE ACTION QUESTIONS: If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

P: 571-272-8864

E: tina.brown@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/1/2018 FOR U.S. APPLICATION SERIAL NO. 87756468

 

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 5/1/2018 (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.