Response to Office Action

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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88123031 TRIAGEHF(Standard Characters, see http://uspto.report/TM/88123031/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney refused Registration on the Principal Register under Trademark Act 2(e) (1), stating TRIAGE means ?a process for sorting injured people into groups based on their need for or likely benefit from immediate medical treatment? and that HF stands for ?heart failure.? Therefore, Applicant?s use of TRIAGEHF with software used for data analysis and risk assessment of patients with cardiac conditions and implanted cardiac devices merely describes a function, purpose or use of the services. Applicant respectfully disagrees and requests reconsideration. Applicant?s services are not emergency treatment services which would fall within the scope of the medical definition of ?triage.? The statement below and attached as Exhibit A is the MedicineNet.com medical definition of ?triage,? which is consistent with the Examiner?s definition: Triage: The process of sorting people based on their need for immediate medical treatment as compared to their chance of benefiting from such care. Triage is done in emergency room, disasters, and wars, when limited medical resources must be allocated to maximize the number of survivors. Triage in this sense originated in World War I. Wounded soldiers were classified into one of three groups: those who could be expected to live without medical care, those who would likely die even with medical care, and those who could survive if they received medical care. As a result, ?triage? is understood within the medical industry as an emergency procedure under disaster and combat conditions to determine how best to utilize medical resources to save the most lives. It involves allowing high risk patients to die in order to maximize the number of lower risk patients who can be saved. Applicant?s consumer base of physicians and hospital personnel would certainly recognize this medical definition of the term and associate it with emergency situations and immediate life/death decision-making. Conversely, Applicant?s services are designed to manage data associated with cardiac patients and assess risk associated with implanted cardiac devices. As shown in Exhibit A, ?heart failure? is a non-emergency condition involving the slow deterioration of the heart. There are methods and medical procedures used by cardiologists to treat or slow the advancement of heart failure, so the medical conditions for which Applicant?s services are used do not involve emergency situations or immediate life/death decision-making. Applicant?s services are not used to categorize patients in emergency settings. The very fact that the software is used to analyze patient data and track the performance of implanted devices dictates that this is not a tool used in emergency rooms or in battlefield situations. Rather, it is used by cardiologists to track the performance of implanted devices and the status of patient cardiac conditions in order to better determine a path of treatment for heart failure in moving forward. It is not being used to ration care and decide which patients should be allowed to die for the sake of the greater good. As a result, Applicant respectfully submits TRIAGEHF is not merely descriptive of its service involving a software portal used to track data regarding cardiac patients. A mark does not have to be ?devoid of all meaning in relation to the goods and services? to be registrable on the Principal Register. T.M.E.P. ?1209.01(a). A mark is merely descriptive if it ?forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods [or services].? Abercrombie & Fitch Company v. Hunting World, Incorporated, 537 F.2d 4, 189 U.S.P.Q. 759, 765 (2nd Cir. 1976); see also, In re Abcor Development Corporation, 616 F.2nd 525, 200 U.S.P.Q. 215 (C.C.P.A. 1978). Moreover, in order to be merely descriptive, the mark must immediately convey information as to the ingredients, qualities or characteristics of the goods or services with a ?degree of particularity.? See In re TMS Corporation of the Americas, 200. U.S.P.Q. 57, 59 (TTAB 1978); In re Entenmanns Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff?d, unpub?d, Fed. Cir. February 13, 1991. ?Suggestive marks are those which require imagination, thought, or perception to reach a conclusion as to the nature of the goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services.? See T.M.E.P. ? 1209.01(a); T.M.E.P. ? 1209.01(b)(4). If the mark clearly does not tell the potential customer only what the goods are, their function, characteristics, use or ingredients, then the mark is not merely descriptive and deserves registration on the Principal Register. See In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 U.S.P.Q. 505, n. 7 (C.C.P.A. 1980) (?merely? means ?only?). Based on the above, the fact the term ?triage? has some meaning in connection with emergency medical procedures does not mean it is automatically descriptive in connection with non-emergency medical tracking and assessment services. Since medical consumers are well aware of the medical definition of ?triage,? it would necessarily take them imagination and mental pause to associate the term with Applicant?s TRIAGEHF software for use in non- emergency situations. Applicant is simply not using the term ?triage? in a manner which would be interpreted descriptively by its medical consumers, who are very familiar with the true meaning of the term. Applicant chose its mark to evoke images of medical training, smart resource allocation and saving lives. However, it necessarily does not involve any element of a medical ?triage? procedure. As shown in Exhibit B, the acronym HF stand for heart failure, and heart failure is a non-emergency, treatable cardiac condition. Applicant?s services are not used to determine which patients must be left to die so that others can live. As a result, Applicant?s consumers are required to make several mental leaps to associate the term ?TRIAGEHF? with Applicant?s non- emergency software services. They must first consider the definition of the term ?triage? and their experiences with emergency medicine, consider the nature of heart failure as a treatable non-emergency disease, and then reconcile some meaning of the term with respect to Applicant?s software services designed to manage data involving implantable cardiac devices and treatment procedures. Such mental gymnastics are a hallmark of a suggestive phrase. Furthermore, the fact a term may have different meanings in other contexts is not controlling on the question of descriptiveness. In re Chopper Industries, 222 U.S.P.Q. 258 (TTAB 1984); In re Bright-Crest, Ltd., 204 U.S.P.Q. 591 (TTAB 1979); In re Champion International Corp., 183 U.S.P.Q. 318 (TTAB 1974); TMEP ? 1209.03(e). As a result, even though consumers are likely to recognize the term ?triage? in Applicant?s mark as a medical term for an emergency medical procedure, this would not provide any descriptive significance in connection with Applicant?s non-emergency data management portal. The known medical meaning of the term simply does not have any descriptive meaning in connection with Applicant?s services. Moreover, ?the concept of mere descriptiveness must relate to general and recognizable word formations and meanings, either in a popular or technical usage context, and 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.? See In re Shutts, 217 U.S.P.Q. 363 (TTAB 1983). A mark is registrable if it is not the usual or normal manner in which the purpose of the goods or services would be described. See In re Pennwalt Corporation, 173 U.S.P.Q. 317 (TTAB 1972) (DRI-FOOT is obviously not the usual or normal manner to describe the purpose of an anti-perspirant and deodorant for the feet); In re J. Ray McDermott & Co., Inc., 170 U.S.P.Q. 524 (TTAB 1971) (SWIVEL-TOP is suggestive but not merely descriptive of a particular feature of the buoy). It is clear from the record that the term ?triage? is not the normal way in which to describe a data management tool for non-emergency cardiac patients. There is simply no evidence to suggest consumers recognize such software in connection with the term ?triage.? As a result, TRIAGEHF is clearly not the normal or usual manner in which the purpose of the services would be described, so the mark is not ?merely descriptive? of the services. Furthermore, Applicant respectfully submits that the incongruity of its mark TRIAGEHF provides a strong indication that the mark is, at most, suggestive. Incongruity is a strong indication that a mark is suggestive rather than merely descriptive. In re Tennis in the Round Inc., 199 U.S.P.Q. 496, 498 (TTAB 1978) (TENNIS IN THE ROUND held not merely descriptive for providing tennis facilities, the Board finding that the association of applicant?s marks with the phrase ?theater-in-the-found? created an incongruity because applicant?s tennis facilities are not at all analogues to those used in a ?theater-in-the-round?). The Board has described incongruity in a mark as ?one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark,? and 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.?? In re Shutts, 217 U.S.P.Q. 362, 364-5 (TTAB 1983) (SNO0RAKE held not merely descriptive of a snow-removal hand tool); see also In re Vienna Sausage Mfg. Co., 156 U.S.P.Q. 155, 156 (TTAB 1967) (FRANKWURST held not merely descriptive for wieners, the Board finding that although ?frank? may be synonymous with ?wiener,? and ?wurst? is synonymous with ?sausage,? the combination of the terms is incongruous and results in a mark that is no more than suggestive of the nature of the goods); In re John H. Breck, Inc., 150 U.S.P.Q. 397, 398 (TTAB 1966) (TINT TONE held suggestive for hair coloring, the Board finding that the words overlap in significance and their combination is somewhat incongruous or redundant and does not immediately convey the nature of the product); cf. In re Getz Found., 227 U.S.P.Q. 571, 572 (TTAB 1985) (MOUSE HOUSE held fanciful for museum services featuring mice figurines made up to appear as human beings, the Board finding that the only conceivable meaning of ?mouse house,? i.e., a building at a zoo in which live and/or stuffed mice are displayed, is incongruous). TMEP ? 1213.05(d). Likewise, Applicant?s use of TRIAGE in connection with HF creates a disconnect in the minds of its medical consumers- an incongruity which causes the consumer to think of the entire phrase as a whole and not as a mere combination of terms. See, e.g., American Home Products Corp. v. Johnson Chemical Co., 589 F.2d 103, 200 U.S.P.Q. 417 (2d Cir. 1978) (ROACH MOTEL for insect trap held not descriptive: ?[I]t?s very incongruity is what catches one?s attention?). See, also, CORPORATE FUEL for ?business management and advisory services,? in which the descriptive term CORPORATE and the arbitrary word FUEL combine to create a unitary phrase that is a play on actual types of fuel, like jet fuel or diesel fuel. Id. Just like ROACH MOTEL and CORPORATE FUEL, consumers would not expect to see such unusual and perceived incompatible terms like TRIAGE and HF used together. One is an emergency procedure and the other is a non-emergency condition. Applicant?s medical consumers would be very aware of the meanings of both terms and recognize that they don?t fit together and that a ?triage? procedure has no utility in the world of heart failure. As a result, the combination of the terms creates an incongruency which causes consumers to view the mark as a whole, rather than dissect them to search for descriptive significance. Moreover, the use of the mark TRIAGEHF does not preclude the use of ordinary descriptive terms needed by competitors in order to properly describe their own services. See In re Pennwalt Corporation, 173 U.S.P.Q. 317 (TTAB 1972), The Fleetwood Company v Mitchem Company, 139 U.S.P.Q. 116 (C.C.P.A. 1963), In re Sunbeam Corporation, 152 U.S.P.Q. 116 (C.C.P.A. 1967). The public policy behind the descriptiveness doctrine is intended to ensure that there is no competitive need for a term in the marketplace. While Applicant uses TriageHF to specifically identify itself as the source of its services, competitors have a virtually limitless number of merely descriptive words to truthfully describe their own services, including ?cardiac tracking software,? ?heart failure care management,? and ?pacemaker tracker,? etc. Finally, and perhaps most importantly, it has long been acknowledged that there is often a very narrow line between terms which are merely descriptive and those which are suggestive, and the borderline between the two is hardly a clear one. See In re Atavio Inc., 25 USPQ2d 1361 (TTAB 1192). If there is doubt about the ?merely descriptive? character of a mark, that doubt should be resolved in favor of the publication of the mark for opposition. See, e.g. In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994); In re Conductive Systems, Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983); In re Morton-Norwich Products, Inc., 209 U.S.P.Q. 791, 791 (TTAB 1981). Based on the above, there is a lack of descriptive significance associated with the term TRIAGEHF in the relevant industry and in connection with Applicant?s services. Based on the foregoing, Applicant respectfully submits that its mark is a coined term without any descriptive significance in connection with the services and respectfully requests the Examining Attorney withdraw the 2(e) refusal. Applicant believes the application is now in condition for allowance. Notice thereof is courteously solicited.

EVIDENCE
Evidence in the nature of snapshots of web pages has been attached.
Original PDF file:
evi_14415255227-20190318130602940136_._exhibit_A.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_14415255227-20190318130602940136_._exhibit_B.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

SIGNATURE(S)
Response Signature
Signature: /Stephen W. Bauer/     Date: 03/31/2019
Signatory's Name: Stephen W. Bauer
Signatory's Position: Senior Director and Legal Counsel

Signatory's Phone Number: 763.526.0939

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88123031
Internet Transmission Date: Mon Apr 01 09:02:16 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201904010902163
34960-88123031-620690b85d10d878442bdf92c
26bd5cbcea37798ecab8493fd7e360ddffd9a4e4
-N/A-N/A-20190318130602940136