To: | Stetrix, Inc. (SJAdocket@hbiplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88133994 - PANNI - 2689-5 |
Sent: | 3/1/2019 9:56:25 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88133994
MARK: PANNI
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Stetrix, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/1/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on February 13, 2019.
In a previous Office action dated November 29, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1)—Mark is Merely Descriptive.
In applicant’s response, applicant provided arguments against the Trademark Act Section 2(e)(1) refusal. While these arguments are appreciated, they have not been found persuasive. See TMEP §§713.02, 714.04.
Thus, the trademark examining attorney maintains and now makes FINAL the 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—Mark is Merely Descriptive
Applicant’s Mark is:
In the present case, “PANNI”, the plural of “PANNUS”, describes a feature and purpose of applicant’s goods. The previously attached evidence from the Free Dictionary by Farlex website shows that “PANNI” is the plural of “PANNUS”, and that “PANNUS” may refer to “an inflammatory exudate overlying synovial cells on the inside of a joint capsule, usually occurring in rheumatoid arthritis or related articular rheumatism.” Additionally, the Merriam Webster website, previously attached, shows that “PANNUS” may refer to “a sheet of inflammatory granulation tissue that spreads from the synovial membrane and invades the joint in rheumatoid arthritis ultimately leading to fibrous ankyloses.” Additionally, the previously attached evidence from the Healthline website shows that a panniculectomy is a surgery in which a patient’s excess skin and tissue, i.e. the pannus, is removed. Additionally, the attached evidence from applicant’s own website shows that applicant provides “pannus retraction” for post-partum patients, and depicts the identified goods being used for positioning of a patient’s skin. The attached evidence from the Your Dictionary also confirms that “PANNI” is the plural of “PANNUS”, which is a flap of skin or tissue. As applicant provides surgical devices for the management and positioning of body tissue, it is evident that “PANNI” is descriptive of a feature and purpose of applicant’s goods in that the goods are meant to be used in connection with tissue, i.e. PANNI, and may be used for the purpose of altering or removing the pannus
In applicant’s response, applicant argues that “PANNUS” and “PANNI” have different commercial impressions in that they look and sound different. Applicant argues that only a “limited population” would have knowledge of obscure medical terms. This argument is inapposite. First, the words look similar in that they share the wording “PANN”, and sound similar in that the first half of these words sound identical. Even if this weren’t true, though, the word “PANNI” would still be descriptive of applicant’s goods. A plural word does not have to sound and/or look like the singular form of that word in order for consumers to recognize it as a plural. Applicant’s goods are specifically for “surgical use” and in the postpartum management of skin. Thus, consumers of these very specific surgical goods may be familiar with surgery, and may be looking to accomplish anatomical positioning of the pannus. Additionally, “PANNUS” is not an obscure term. The attached evidence from the Livestrong website features an article entitled “How to Flatten the Lower Pannus”. This refers to the skin on one’s stomach as the pannus, and does so casually.
Applicant also argues that the definition of “PANNUS” is remote from applicant’s goods, and may actually refer to an inflammatory exudate occurring during arthritis. This argument is not persuasive. First, while “PANNUS” may refer to an inflammatory exudate occurring in rheumatoid arthritis, it doesn’t always. This is shown in the Your Dictionary website, attached, as well as applicant’s own website. Further, applicant should note that descriptiveness is considered in relation to the relevant goods. 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)). “PANNUS” refers to tissue. “PANNI” is the plural of “PANNUS”. Applicant’s goods are for the anatomical positioning of tissue. Thus, the wording is immediately descriptive of a feature and purpose of applicant’s goods, in the goods may control the pannus or panni of multiple patients.
In light of the foregoing, applicant’s and registrant’s marks are likely to be confused. Applicant may provide arguments in support of registration.
Supplemental Register Advisory
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Response to Final Office Action
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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.
Rosen, Amanda
/Amanda Rosen/
Examining Attorney
Law Office 121
571-270-5984
Amanda.Rosen@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.