Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 30, 2019

 

This Office action is in response to applicant’s communication filed on June 21, 2019.

 

This Office action is supplemental to and supersedes the previous Office action issued on December 21, 2018 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal:  Refusal based on Trademark Act Section 44(e) because the foreign registration is not from applicant’s country of origin.  Additionally, applicant is not the owner of the foreign registration.   See TMEP §§706, 711.02. 

 

PREVIOUS ACTIONS:  In a previous Office action dated December 21, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)1 finding the applied-for mark merely descriptive.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods, provide a foreign registration certificate.  In addition, applicant previously was provided information regarding pending U.S. Application Serial No. 88076150, which may present a bar to registration of applicant’s mark based on a likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.

 

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: requirement to amend identification of goods.  See TMEP §§713.02, 714.04. 

 

Additionally, applicant filed a Preliminary Amendment on July 2, 2019 that indicates that applicant and the owner of the mark in U.S. Application No. 88076150 have entered into a consent agreement.  The consent agreement sets forth reasons why the parties believe there is no likelihood of confusion and describes the arrangements undertaken by the parties to avoid confusing the public.  Accordingly, the following advisory is withdrawn: advisory regarding pending U.S. Application Serial No. 88076150.

 

Moreover, the trademark examining attorney has reviewed and considered applicant’s arguments against the Trademark Act Section 2(e)1 refusal, but has determined applicant cannot overcome the merely descriptive refusal. Additionally, applicant has not satisfied the requirement to provide a valid foreign registration certificate. Therefore, the trademark examining attorney continues and maintains the Trademark Act Section 2(e)1 Refusal and requirement to provide a foreign registration certificate.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Further, the trademark examining attorney now issues a New Non-Final Action for the reasons set forth below.

 

The following is a SUMMARY OF ISSUES that applicant must address:

• Refusal Under Trademark Act Section 44(e) – Owner Name Differs on U.S. Application and Foreign Registration / Foreign Registration Not From Country Of Origin

Applicant must respond to all issues raised in this Office action and the previous December 21, 2018, Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

REFUSAL UNDER TRADEMARK ACT SECTION 44(e) – OWNER NAME DIFFERS ON U.S. APPLICATION AND FOREIGN REGISTRATION / FOREIGN REGISTRATION NOT FROM COUNTRY OF ORIGIN

 

Registration is refused under Trademark Act Section 44(e) for two reasons.  First, registration is refused under Trademark Act Section 44(e) because applicant was not the owner of the foreign registration on the filing date of the U.S. application.  See 15 U.S.C. §1126(e); TMEP §1005. 

 

In an application filed under Section 44(e), the applicant must be the owner of the foreign registration on the filing date of the U.S. application.  TMEP §1005; see 37 C.F.R. §2.34(a)(3); In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991).  However, in this case, the foreign registration specifies an owner other than the U.S. applicant.  Specifically, the U.S. application sets forth the owner as Braemar Manufacturing, LLC, while the foreign registration sets forth the owner as Delta Dansk Elektronik, Lys & Akustik.

 

If applicant can prove the foreign registration was assigned to applicant on or before the filing date of the U.S. application, the Section 44(e) basis can remain in the application.  See TMEP §1005.  Applicant may establish ownership of the foreign registration by submitting (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign registration was assigned to applicant on or before the filing date of the U.S. application.  See TMEP§§1005, 1006.

 

If applicant did not own the foreign registration on or before the filing date of the U.S. application, applicant may delete the Section 44(e) basis and rely solely on Section 1(a) as the basis for registration.  See TMEP §806.04. 

 

Additionally, registration is refused under Trademark Act Section 44(e) because applicant has not established that the foreign country in which the trademark is registered is the applicant’s country of origin.   Applicant is domiciled in the United States and has asserted a Trademark Act Section 44(e) filing basis in its application.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3).  However, an applicant domiciled in the United States is generally not eligible to register a mark under Section 44(e) unless the applicant (1) owns a trademark registration from a foreign country that is a party to a treaty or agreement relating to trademarks to which the United States is also a party or extends reciprocal rights to nationals of the United States, and (2) can establish that the foreign country in which the trademark is registered is the applicant’s country of origin.  15 U.S.C. §1126(b)-(c); see TMEP §§1002.03-.05.  “Country of origin” refers to a country other than the United States in which an applicant has a bona fide and effective industrial or commercial establishment, or if there is no such establishment, the foreign country in which an applicant is domiciled.  15 U.S.C. §1126(c); TMEP §1002.04-.05.

 

If applicant intends to rely on Section 44(e) as a basis for registration, applicant must submit the following:

 

(1)       A true copy, photocopy, certification or certified copy of the foreign trademark registration upon which applicant is relying for U.S. registration, along with an English translation if the foreign registration certificate is not written in English.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.05, 1004 et seq.  If applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01; and

 

(2)       A written statement that applicant has a bona fide and effective industrial or commercial establishment in the foreign country in which its mark is registered.  See 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.04-.05.

 

If applicant cannot satisfy the above requirements for a Section 44(e) basis, applicant can amend the application to substitute a Section 1(a) or Section 1(b) basis, if applicant can satisfy all of the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); 37 C.F.R. §2.35(b), TMEP §806.03.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

ADVISORY – TRADEMARK ACT SECTION 2(e)1 REFUSAL CONTINUED AND MAINTAINED

 

In a previous Office action dated December 21, 2018, the trademark examining attorney refused registration under Trademark Act Section 2(e)1 finding the applied-for mark merely descriptive.

 

Despite reference to its goods as patches, applicant argues in the response that E and PATCH are not merely descriptive of Applicant’s goods, but suggestive.   This argument is not persuasive.  First, a mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a).

 

 

In the previous action, the trademark examining attorney provided evidence from The American Heritage Dictionary, which explains the letter “e” used as a prefix has become recognized as a common designation for goods and/or services that are electronic in nature or are sold or provided electronically. 

 

Applicant should note that descriptiveness is considered in relation to the relevant goods and/or services.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e).  “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”  In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).  In the present case, applicant’s identification of goods sets forth a feature of applicant’s goods are “wireless sensors”.  This indicates that a feature of applicant’s goods is transmitting data electronically.   Accordingly, use of the prefix “E” in the applied-for mark is merely descriptive of the electronic feature of applicant’s goods.

 

Moreover, as discussed in the prior action, when a mark consists of the “e” prefix coupled with a descriptive word or term for electronic goods and/or services, then the entire mark may be considered merely descriptive under Trademark Act Section 2(e)(1).  See In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (holding E-AUTODIAGNOSTICS merely descriptive of an electronic engine analysis system comprised of a hand-held computer and related computer software); In re Styleclick.com Inc., 57 USPQ2d 1445(TTAB 2000) (holding E FASHION merely descriptive of software for consumer use in shopping via a global computer network and of electronic retailing services); TMEP §1209.03(d). 

 

In the previous action, the trademark examining attorney also attached evidence from The American Heritage Dictionary which defines the wording “patch” as “a small piece of material affixed to another, larger piece to conceal, reinforce, or repair a worn area, hole, or tear.”  Moreover, the trademark examining attorney previously noted that the wording “patch” is encompassed in applicant’s identification of goods, in that the goods include “adhesive plasters”, which are described in applicant’s specimen as “patches”.  Specifically, the instructions in the specimen of record state “your monitoring kit includes a . . . patch” and the instructions further direct users to “remove the top white paper from the patch.”  Therefore, the wording “PATCH” in the mark is generic for the relevant goods, and as demonstrated by applicant’s use of the term.

 

“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).  Importantly, the question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).   In this case, someone who knows what applicant’s goods are will understand the wording PATCH in the mark to convey information about the goods, particularly, plasters to be affixed to the skin that are the primary component of applicant’s heart monitoring kits.

 

Thus, contrary to applicant’s contention that some thought or imagination is required to understand the nature of it’s goods, the evidence establishes that the wording EPATCH is readily understood. 

 

The trademark examining attorney still believes the wording in the applied-for mark is merely descriptive of a feature of applicant’s goods.  Accordingly, the Trademark Act Section 2(e)1 Refusal is continued and maintained.  Furthermore, as discussed in the Trademark Act Section 44(e) refusal set forth above, although applicant has provided a foreign registration certificate, applicant does not appear to be the owner of the foreign registration and the certificate is not from applicant’s country of origin, thus, the requirement to provide a valid foreign registration certificate has not been satisfied.  As such, the requirement also is continued and maintained.

 

 

RESPONSE GUIDELINES 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571)270-7210

oreoluwa.alao@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 30, 2019 for

U.S. Trademark Application Serial No. 88097728

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571)270-7210

oreoluwa.alao@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 30, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”