Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  February 25, 2020

 

 

This Office action is in response to applicant’s communication filed on January 28, 2020.

 

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 June 21, 2019 response, the trademark examining attorney previously noted that the following requirement has 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 indicated that applicant and the owner of the mark in U.S. Application No. 88076150 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  Accordingly, the following advisory previously was withdrawn: advisory regarding pending U.S. Application Serial No. 88076150.

 

Moreover, the trademark examining attorney reviewed and considered applicant’s arguments against the Trademark Act Section 2(e)1 refusal, but determined applicant had not overcome the merely descriptive refusal. Additionally, applicant did not satisfy the requirement to provide a valid foreign registration certificate. Therefore, the trademark examining attorney previously continued and maintained 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, in an Office action dated July 30, 2019, the trademark examining attorney issued a New Non Final action and refused registration of the applied-for mark based on the following: Trademark Act Section 44(e) finding that the owner name differed on the U.S. application and foreign registration and the foreign registration provided was not from applicant’s country of origin.

 

 

Based on applicant’s January 28, 2020 response in which applicant deleted its 44(e) filing basis, the trademark examining attorney notes that the following requirement is obviated: requirement to provide a foreign registration certificate.  See TMEP §§713.02, 714.04. 

 

 

In addition, the following refusal is obviated: Trademark Act Section 44(e) refusal.  See TMEP §§713.02, 714.04. 

 

 

Further, the trademark examining attorney reviewed and considered applicant’s additional arguments against the Trademark Act Section 2(e)1 refusal, but finds them unpersuasive.  Thus, the trademark examining attorney maintains and now makes FINAL the Trademark Act Section 2(e)1 refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(e)1 Refusal – Merely Descriptive

 

 

SECTION 2(e)1 REFUSAL – MERELY DESCRIPTIVE

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

 

The refusal to register the applied-for mark is made FINAL because the applied-for mark merely describes a feature 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 and/or services.  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’s mark is EPATCH for “heart monitoring kits comprised primarily of adhesive plasters for medical use and also including wireless sensors for medical and physiological use to be worn by a human to gather human biometric data and micro-electronic sensing systems, namely, sensors for medical and physiological use to be worn by a human to gather human biometric data; but not including drug delivery patches” in International Class 5.

 

 

 

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.  Additionally, the trademark examining attorney has attached evidence from the third-party websites for Computer Hope, The Online Slang Dictionary, WhatIs.com and Wikipedia, which further establish that the prefix “e” is a common designation for electronic goods or goods that are sold or provided electronically.  See:

 

 

• Computer Hope: http://www.computerhope.com/jargon/e/e-.htm
• The Online Slang Dictionary: http://onlineslangdictionary.com/meaning-definition-of/e-
• WhatIs.com: http://whatis.techtarget.com/definition/e
• Wikipedia: http://en.wikipedia.org/wiki/Internet-related_prefixes

 

 

In the present case, applicant’s identification of goods sets forth a feature of applicant’s goods are “wireless sensors” and “micro-electronic sensing systems”.  This indicates that electronic goods and transmitting data electronically are features of applicant’s heart monitoring kits.   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 initial action, the trademark examining attorney 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.”  Applicant contends multiple definitions of patch exist, and as such, marks with multiple plausible meanings in the context of the applied-for goods are not merely descriptive because consumers must exercise thought and imagination to consider the meaning of the mark in relation to the goods.  This position is unavailing.  First, 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.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); 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)).

 

 

 

Moreover, in terms of establishing a term’s likely meaning to consumers, evidence of the current usage may carry more weight than an older dictionary meaning. See In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 (TTAB 2017) (finding modern-day usage of "well-living" more significant than archaic dictionary definition). 

 

 

Importantly, 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 a feature of the relevant goods, and as demonstrated by applicant’s use of the term, not limited to wound coverage. 

 

 

Despite unequivocal reference in the specimen to a feature of its goods as patches, and use of the term “patch” in a non-proprietary manner, applicant maintains the wording PATCH in the applied-for mark is not merely descriptive of a feature of applicant’s goods.  This position is untenable.  Specifically, in response to the action, applicant argues that E and PATCH are not merely descriptive of Applicant’s goods, but suggestive.   This argument is not supported by the evidence in the record.  Indeed, as applicant maintains, 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).

 

 

Thus, in relying upon Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 71 USPQ2D 1173, 1181 (Fed. Cir. 2004) and In re Southern National Bank, 219 USPQ 1231, 1232 (TTAB 1983), applicant correctly notes that descriptive marks “define qualities or characteristics of a product in a straightforward way that requires no exercise of the imagination to be understood.”  However, in this case, such imagination is not required.  First, as discussed previously, by its own admission, applicant, in the specimen of record, refers to a component of its goods as patches.    This notwithstanding, the attached evidence from the third-party websites for BradyDx, Digital Trends, Imec, iRhythm, Healthtech Insider, Medical Device and Diagnostics Industry Newsletter, Medical Plastics News, Postscpaes, Science News, UC San Diego News Center and Wearable Technologies demonstrates that in the medical devices industry, the term “patch” commonly is used to describe adhesive plasters, or small pieces of material used as sensors that can be affixed directly on the skin.  Importantly, the evidence establishes that patches are not merely limited in function to covering wounds, but in the medical field, the term “patch” commonly is used to describe sensors for medical monitoring to transmit biometric data, similar in function to applicant’s sensor patches as described in the specimen of record, or to provide other patient and medical related information.  See:

 

• BradyDx: http://www.bardydx.com/solutions/cam/
• Digital Trends: http://www.digitaltrends.com/cool-tech/stick-on-patch-biometrics/
• Imec: http://www.imec-int.com/en/circuitry-sensor-hubs/disposable-health-patch
• Healthtech Insider: http://healthtechinsider.com/2017/10/18/biometric-patch-allows-remote-patient-monitoring/
• iRhythm: http://www.irhythmtech.com/products-services/zio-xt
• Medical Device and Diagnostics Industry Newsletter: http://www.mddionline.com/new-qualcomm-patch-can-monitor-patients-cheaper-lunch-fast-food-joint
• Medical Plastics News: http://www.medicalplasticsnews.com/news/qualcomm-develop/
• Postscapes: http://www.postscapes.com/iot-healthcare/
• Science News: http://www.sciencenews.org/article/wireless-patches-can-comfortably-monitor-sick-babies-health
• UC San Diego News Center: http://ucsdnews.ucsd.edu/pressrelease/flexible_wearable_electronic_skin_patch_offers_new_way_to_monitor_alcohol_l
• Wearable Technologies: http://www.wearable-technologies.com/2019/01/very-thin-tattoo-like-wearable-patch-monitors-and-diagnoses-health-problems-from-sweat/

 

 

Here, the evidence from the third-party websites demonstrates the wording “patch” is merely a descriptive term for adhesive plasters or small pieces of material affixed to the skin as sensors to transmit a range of information. Such webpages are generally a competent source for determining how the public perceives the mark in connection with applicant’s goods and/or services.  See In re N.C. Lottery, 866 F.3d 1363, 1367-68, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986)); TMEP §1209.01(b).  As such, the wording PATCH in the applied-for mark merely describes a feature of applicant’s goods, specifically applicant’s wireless biometric sensors. 

 

Thus, consumers would understand the wording “PATCH” in the applied-for mark to convey information about the sensors that applicant provides.  Specifically, purchasers reading instructions such as that provided in applicant’s specimen of use would clearly think applicant’s wireless sensors are electronic goods of which a patch is a feature.  Applicant should note that the determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, 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).  “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).   Thus, applicant’s reference to other sensors and microelectronic sensing systems that may take many forms is not relevant here. 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 the goods in the application, the evidence establishes that the wording EPATCH is readily understood. 

 

Further, applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.

 

As demonstrated by the evidence of record, the combined wording “EPATCH” in the applied-for mark merely describes a feature of applicant’s goods, specifically, sensors that incorporate patches that are affixed to the skin that transmit biometric data electronically using wireless technology.

 

 

Nevertheless, applicant maintains that the USPTO already has determined that EPATCH is inherently distinctive.  In particular, applicant offers as evidence the application in Serial No. 88076150, which has been published for opposition and has been issued a Notice of Allowance.  First, third-party applications are evidence only that the applications were filed; they are not evidence of use of the mark.  In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); see In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); TBMP §1208.02; TMEP §710.03.    Accordingly, the application will not be considered.

 

 

Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).  Here, applicant’s reference to third-party registrations that have been registered with the wording PATCH do not provide support for applicant’s position.  Instead, the registrations demonstrate why refusal is appropriate here.   Notably, applicant has not offered a registered mark comparable to the applied-for mark.  For example, applicant relies upon HABIT-PATCH (Reg. No. 3336881), NUTRI-PATCH (Reg. No. 5032762) and PATCH-IT PURE (Reg. No. 5827578).  A review of the three marks demonstrates use of the wording PATCH in a unitary phrase containing non descriptive wording, as such, a disclaimer and/or merely descriptive refusal was not at issue in those cases.  See TMEP §1213.05(a)(ii).  In addition, applicant relies upon SALONSPAS GEL-PATCH HOT SOOTHING (a design mark in Reg. No. 2806669).  In that case, the wording GEL-PATCH was disclaimed in that mark.  As such, applicant’s reliance on the cited registrations is unavailing.  First, applicant’s submission of evidence in the nature of unitary marks that have registered are not analogous to the applied-for mark for comparison purposes.  Further the disclaimer of the wording GEL-PATCH in Reg. No. 2806669 demonstrates why refusal is appropriate in this case.  Specifically, in Reg. No. 2806669 and this case, the marks consists of a combination of descriptive terms that each retain their descriptive meaning in relation to the respective goods provided under the mark. 

 

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. 

 

 

Accordingly, the applied-for mark is merely descriptive of a feature of applicant’s goods and the Section 2(e)(1) refusal is maintained and made FINAL.

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/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 February 25, 2020 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 February 25, 2020, 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.”