| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 11/30/2023) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88010994 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | DEVICELINK |
| 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 RECONSIDERATION Introduction This is a Request for Reconsideration in response to the Final Office Action dated June 30, 2020 issued in connection with U.S. Trademark Application Serial No. 88/010,994 for the mark DEVICELINK for use in connection with the following goods and services:
Summary of Issues Presented By The Examiner The Examining Attorney initially refused registration on the Principal Register of the mark DEVICELINK pursuant to Section 2(e)(1) of the Trademark Act. Upon reconsideration the Examining Attorney has withdrawn the Section 2(e)(1) refusal as it relates to Applicant’s services listed in International Class 42. The Examining Attorney has maintained the position that the mark DEVICELINK merely describes a characteristic of Applicant’s International Class 9 goods. Request to Divide Application Applicant hereby requests that the application as it pertains to International Class 42 be divided from the present application and is simultaneously filing a Request to Divide Application form along with the requisite filing fee. The remainder of this Request for Reconsideration shall pertain to the continued refusal in connection with the mark DEVICELINK for the goods in International Class 9. Further Amendment to the Goods in International Class 9 Pursuant to the Examining Attorney’s request, Applicant hereby amends the identification of goods for International Class 9 from “Laboratory apparatus, namely, a connectivity kit network hardware device, for use in wireless remote monitoring and collecting data related to biological material storage environments” to “Laboratory apparatus, namely, an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments.” Arguments in Support of Registration Applicant respectfully reiterates its argument that the DEVICELINK mark, as a whole, is not merely descriptive, but rather a suggestive unitary mark capable of registration on the Principal Register. The mark DEVICELINK creates an incongruity beyond the literal meaning of the individual components, indicating that the mark is at least suggestive. TMEP § 1213.05(d). Also, the mark DEVICELINK, as a whole, is indirect, vague and ambiguous, having no meaning in connection with “laboratory apparatus, namely, an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments.” Therefore, the mark cannot be merely descriptive of Applicant’s goods as identified in the application. Indeed, in order for purchasers and prospective customers of Applicant's laboratory apparatus, to ascribe any connotation or meaning to the mark, a multi-stage reasoning process or imagination is necessary to reach the suggestion that it is an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments. The mark DEVICELINK, as applied to the identified laboratory apparatuses, does not describe what is being linked, why it is being linked or in what manner it is linked, rendering the mark at least suggestive of some sort of connection involving a laboratory apparatus. See e.g., In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (TTAB 1978) (TENNIS IN THE ROUND held to be suggestive as a service mark used in connection with tennis facilities in a round building); In Re Panasonic Avionics Corp., No. 86499954, 2017 WL 227720, at *5 (Jan. 5, 2017) (Finding FLIGHTLINK suggestive of some sort of weather-related communications connection involving aircrafts); In re Reynolds Metals Company, 178 U.S.P.Q. 296 (C.C.P.A. 1973) (BROWN-N-BAG for plastic film cooking bags in "informational" and therefore suggestive of the goods); In re Shop-Vac Corporation, 219 U.S.P.Q. 470 (TTAB 1983) (THE DRIVING FORCE held suggestive of truck driving services since some imagination is required to reach a conclusion about the nature of the services); and Philip Morris Incorporated v. R.J. Reynolds Tobacco Company, 207 U.S.P.Q. 451 (TTAB 1980) (SOFT SMOKE is suggestive of smoking tobacco as no characteristic is immediately perceived). In addition, a mark that is "incongruous" is unitary by definition. See TMEP § 1213.05(d). According to the Trademark Trial and Appeal Board, "[i]ncongruity is a strong indication that a mark is suggestive rather than merely descriptive." TMEP § 1209.01(a) (citing In re Tennis in the Round Inc., at 498). Incongruity in a mark is "one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark," and the Board has noted that the "concept of mere descriptiveness "should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and 'mental pause.'" Id. (citing In re Shutts, 217 USPQ 363, 364-5 (TTAB 1983) (holding SNO-RAKE not merely descriptive of a snow- removal hand tool)). Applicant's DEVICELINK mark requires such "mental pause" for “laboratory apparatus, namely, an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments”, and is such an incongruous unitary mark. The mark DEVICELINK does not convey or describe an ingredient, quality, characteristic, function, feature, purpose, or use of laboratory apparatuses. Nor does it immediately convey to a prospective purchaser that the goods are an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables or specifically for use in wireless remote monitoring and collecting data related to biological material storage environments. Applicant acknowledges that the determination of descriptiveness is made in relation to the goods as identified in an application and respectfully submits that the mark DEVICELINK does not immediately convey information about the goods with the requisite degree of particularity. The Examining Attorney points to the meaning of the word “device” and the word “link” but does not address that either word is commonly understood to refer to laboratory apparatus, hardware devices, or monitoring and collecting data related to biological material storage environments in particular. The Examining Attorney also points to a portion of Applicant’s website highlighting the KEY FEATURES AND BENEFITS for the goods and uses language to describe a device that collects data from monitored equipment and then transmits that data to a computer or mobile phone. Applicant explained in its original response that it would “need to explain Applicant’s goods offered under its mark to consumers before they are understood, as consumers confronted with Applicant’s mark will be placed in a “mental pause” situation similar to that in In Re Shutts, as these two terms are not ordinarily associated with one another in such a manner.” Hence the language the Examining Attorney pulled from Applicant’s website is an attempt to do just that, to quell a consumer’s wonderment. Even if the use of the mark DEVICELINK on Applicant’s website could be somehow considered as descriptive of Applicant's goods, one isolated use would not evidence widespread descriptive use to support a descriptiveness refusal. See In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1995). Furthermore, the issue of whether a combination of descriptive terms is registerable depends not on the descriptiveness of the terms individually but whether the combination thereof creates a new and different commercial impression. See, e.g., In re Colonial Stores Inc., 394 F.2d 549, 552-53, 157 U.S.P.Q. 382, 384-85 (C.C.P.A. 1968). The mark DEVICELINK is not a defined term nor does it have a commonly understood meaning for laboratory apparatuses. See the screenshots of empty search results of online dictionary definitions from Merriam-Webster and Lexico/Oxford Dictionary attached hereto as Exhibit A. As noted above, in order for purchasers and prospective customers of Applicant's laboratory apparatus to ascribe any connotation or meaning to the mark, a multi-stage reasoning process or imagination is necessary to reach the suggestion that it is an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments. As also noted above, the mark DEVICELINK, as applied to the identified laboratory apparatuses, does not describe what is being linked, why it is being linked or in what manner it is linked, rendering the mark at least suggestive of some sort of connection involving a laboratory apparatus. The evidence of record by the Examiner does not have sufficient weight to illustrate that the mark, DEVICELINK, as a whole, is merely descriptive, and that it would be perceived as having a known meaning when viewed by prospective purchasers of laboratory apparatuses. Finally, there is a "very thin line" in determining whether a mark is descriptive or suggestive and if there is doubt as to which side of the thin, subjective line distinguishing suggestive from merely descriptive marks, that doubt should be resolved in "applicant's behalf and the mark should be published for opposition." In re Bed Check Corp., 226 U.S.P.Q. 946, 948 (TTAB 1985). Therefore, Applicant respectfully submits that the Section 2(e)(1) descriptiveness refusal should be withdrawn and requests that the application for the mark DEVICELINK for “laboratory apparatus, namely, an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments” in International Class 9 be deemed in condition for allowance and promptly passed to publication. |
|
| ATTORNEY INFORMATION (current) | |
| NAME | Alan M. Doernberg |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | THERMO FISHER SCIENTIFIC |
| STREET | 300 INDUSTRY DRIVE |
| CITY | PITTSBURGH |
| STATE | Pennsylvania |
| POSTAL CODE | 15275 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 760-476-6945 |
| FAX | 760-476-6048 |
| TFS-TrademarkDocketing@thermofisher.com | |
| DOCKET/REFERENCE NUMBER | TMO1031US942 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | Alan M. Doernberg |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Thermo Fisher Scientific |
| STREET | 300 Industry Drive |
| CITY | Pittsburgh |
| STATE | Pennsylvania |
| POSTAL CODE | 15275 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 760-476-6945 |
| FAX | 760-476-6048 |
| alan.doernberg@thermofisher.com | |
| DOCKET/REFERENCE NUMBER | TMO1031US942 |
| OTHER APPOINTED ATTORNEY | Kenya Williams; Monica Baig-Silva; Steven Yee; Scott Miller |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | ALAN M. DOERNBERG |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | TFS-TrademarkDocketing@thermofisher.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | katie.horn@thermofisher.com |
| DOCKET/REFERENCE NUMBER | TMO1031US942 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Alan M. Doernberg |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | alan.doernberg@thermofisher.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | TFS-TrademarkDocketing@thermofisher.com |
| DOCKET/REFERENCE NUMBER | TMO1031US942 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | / Alan M. Doernberg / |
| SIGNATORY'S NAME | Alan M. Doernberg |
| SIGNATORY'S POSITION | Attorney of record, Pennsylvania bar member |
| SIGNATORY'S PHONE NUMBER | 724-517-2451 |
| DATE SIGNED | 12/29/2020 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Dec 29 14:31:34 ET 2020 |
| TEAS STAMP | USPTO/RFR-XXX.XXX.XXX.XXX -20201229143134740798-880 10994-7501241fe7058fda664 3edf969a85ef6b29efef2ee2e 4a39d5122e56449c4b55-N/A- N/A-20201229141959042739 |
| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 11/30/2023) |
REQUEST FOR RECONSIDERATION
Introduction
This is a Request for Reconsideration in response to the Final Office Action dated June 30, 2020
issued in connection with U.S. Trademark Application Serial No. 88/010,994 for the mark
DEVICELINK for use in connection with the following goods and services:
Laboratory apparatus, namely, a connectivity kit network hardware device, for use in wireless remote monitoring and collecting data related to biological material storage environments (IC 009)
Software as a service (SAAS) services featuring software for controlling the transmission of data related to biological material storage environmental conditions (IC 042)
Summary of Issues Presented By The Examiner
The Examining Attorney initially refused registration on the Principal Register of the mark DEVICELINK pursuant to Section 2(e)(1) of the Trademark Act. Upon reconsideration the Examining Attorney has withdrawn the Section 2(e)(1) refusal as it relates to Applicant’s services listed in International Class 42. The Examining Attorney has maintained the position that the mark DEVICELINK merely describes a characteristic of Applicant’s International Class 9 goods.
Request to Divide Application
Applicant hereby requests that the application as it pertains to International Class 42 be divided from the present application and is simultaneously filing a Request to Divide Application form along with the requisite filing fee.
The remainder of this Request for Reconsideration shall pertain to the continued refusal in connection with the mark DEVICELINK for the goods in International Class 9.
Further Amendment to the Goods in International Class 9
Pursuant to the Examining Attorney’s request, Applicant hereby amends the identification of goods for International Class 9 from
“Laboratory apparatus, namely, a connectivity kit network hardware device, for use in wireless remote monitoring and collecting data related to biological material storage environments”
to
“Laboratory apparatus, namely, an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments.”
Arguments in Support of Registration
Applicant respectfully reiterates its argument that the DEVICELINK mark, as a whole, is not merely descriptive, but rather a suggestive unitary mark capable of registration on the Principal Register. The mark DEVICELINK creates an incongruity beyond the literal meaning of the individual components, indicating that the mark is at least suggestive. TMEP § 1213.05(d).
Also, the mark DEVICELINK, as a whole, is indirect, vague and ambiguous, having no meaning in connection with “laboratory apparatus, namely, an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments.” Therefore, the mark cannot be merely descriptive of Applicant’s goods as identified in the application. Indeed, in order for purchasers and prospective customers of Applicant's laboratory apparatus, to ascribe any connotation or meaning to the mark, a multi-stage reasoning process or imagination is necessary to reach the suggestion that it is an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments. The mark DEVICELINK, as applied to the identified laboratory apparatuses, does not describe what is being linked, why it is being linked or in what manner it is linked, rendering the mark at least suggestive of some sort of connection involving a laboratory apparatus. See e.g., In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (TTAB 1978) (TENNIS IN THE ROUND held to be suggestive as a service mark used in connection with tennis facilities in a round building); In Re Panasonic Avionics Corp., No. 86499954, 2017 WL 227720, at *5 (Jan. 5, 2017) (Finding FLIGHTLINK suggestive of some sort of weather-related communications connection involving aircrafts); In re Reynolds Metals Company, 178 U.S.P.Q. 296 (C.C.P.A. 1973) (BROWN-N-BAG for plastic film cooking bags in "informational" and therefore suggestive of the goods); In re Shop-Vac Corporation, 219 U.S.P.Q. 470 (TTAB 1983) (THE DRIVING FORCE held suggestive of truck driving services since some imagination is required to reach a conclusion about the nature of the services); and Philip Morris Incorporated v. R.J. Reynolds Tobacco Company, 207 U.S.P.Q. 451 (TTAB 1980) (SOFT SMOKE is suggestive of smoking tobacco as no characteristic is immediately perceived).
In addition, a mark that is "incongruous" is unitary by definition. See TMEP § 1213.05(d). According to the Trademark Trial and Appeal Board, "[i]ncongruity is a strong indication that a mark is suggestive rather than merely descriptive." TMEP § 1209.01(a) (citing In re Tennis in the Round Inc., at 498). Incongruity in a mark is "one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark," and the Board has noted that the "concept of mere descriptiveness "should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and 'mental pause.'" Id. (citing In re Shutts, 217 USPQ 363, 364-5 (TTAB 1983) (holding SNO-RAKE not merely descriptive of a snow- removal hand tool)). Applicant's DEVICELINK mark requires such "mental pause" for “laboratory apparatus, namely, an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments”, and is such an incongruous unitary mark.
The mark DEVICELINK does not convey or describe an ingredient, quality, characteristic, function, feature, purpose, or use of laboratory apparatuses. Nor does it immediately convey to a prospective purchaser that the goods are an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables or specifically for use in wireless remote monitoring and collecting data related to biological material storage environments. Applicant acknowledges that the determination of descriptiveness is made in relation to the goods as identified in an application and respectfully submits that the mark DEVICELINK does not immediately convey information about the goods with the requisite degree of particularity. The Examining Attorney points to the meaning of the word “device” and the word “link” but does not address that either word is commonly understood to refer to laboratory apparatus, hardware devices, or monitoring and collecting data related to biological material storage environments in particular. The Examining Attorney also points to a portion of Applicant’s website highlighting the KEY FEATURES AND BENEFITS for the goods and uses language to describe a device that collects data from monitored equipment and then transmits that data to a computer or mobile phone. Applicant explained in its original response that it would “need to explain Applicant’s goods offered under its mark to consumers before they are understood, as consumers confronted with Applicant’s mark will be placed in a “mental pause” situation similar to that in In Re Shutts, as these two terms are not ordinarily associated with one another in such a manner.” Hence the language the Examining Attorney pulled from Applicant’s website is an attempt to do just that, to quell a consumer’s wonderment. Even if the use of the mark DEVICELINK on Applicant’s website could be somehow considered as descriptive of Applicant's goods, one isolated use would not evidence widespread descriptive use to support a descriptiveness refusal. See In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1995).
Furthermore, the issue of whether a combination of descriptive terms is registerable depends not on the descriptiveness of the terms individually but whether the combination thereof creates a new and different commercial impression. See, e.g., In re Colonial Stores Inc., 394 F.2d 549, 552-53, 157 U.S.P.Q. 382, 384-85 (C.C.P.A. 1968). The mark DEVICELINK is not a defined term nor does it have a commonly understood meaning for laboratory apparatuses. See the screenshots of empty search results of online dictionary definitions from Merriam-Webster and Lexico/Oxford Dictionary attached hereto as Exhibit A. As noted above, in order for purchasers and prospective customers of Applicant's laboratory apparatus to ascribe any connotation or meaning to the mark, a multi-stage reasoning process or imagination is necessary to reach the suggestion that it is an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments. As also noted above, the mark DEVICELINK, as applied to the identified laboratory apparatuses, does not describe what is being linked, why it is being linked or in what manner it is linked, rendering the mark at least suggestive of some sort of connection involving a laboratory apparatus. The evidence of record by the Examiner does not have sufficient weight to illustrate that the mark, DEVICELINK, as a whole, is merely descriptive, and that it would be perceived as having a known meaning when viewed by prospective purchasers of laboratory apparatuses.
Finally, there is a "very thin line" in determining whether a mark is descriptive or suggestive and if there is doubt as to which side of the thin, subjective line distinguishing suggestive from merely descriptive marks, that doubt should be resolved in "applicant's behalf and the mark should be published for opposition." In re Bed Check Corp., 226 U.S.P.Q. 946, 948 (TTAB 1985). Therefore, Applicant respectfully submits that the Section 2(e)(1) descriptiveness refusal should be withdrawn and requests that the application for the mark DEVICELINK for “laboratory apparatus, namely, an internet connectivity kit comprised of computer networking hardware in the nature of a network communication hub, power cord and cables, for use in wireless remote monitoring and collecting data related to biological material storage environments” in International Class 9 be deemed in condition for allowance and promptly passed to publication.