Reconsideration Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  June 30, 2020

 

This Office action is in response to applicant’s communication filed on 6/15/20.

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Applicant has submitted substitute specimens consisting of an article, photographs from a trade show display, advertising materials, software screenshots and photographs of boxes. 

 

Applicant has argued that the article shows “use of ULAB mark in relation to computer software used for planning proposed treatments in orthodontics or dentistry.”  The article does reference ULAB software, however advertising is not acceptable as a specimen for goods.  See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).

 

The second page of the article includes a screenshot which depicts the stylized letter U which is the applied-for mark in applicant’s copending application SN 88159334.  The U is circled and referred to as being ULAB stylized.  However, the applied-for mark ULAB does not appear on the screenshot. 

 

The third page of the article shows the stylized U on a machine used to trim aligners.  Again, the applied-for mark does not appear on the machine and the article states that the machine is a prototype.

 

The fourth page of substitute specimens is a “picture from company display at American Association of Orthodontists annual meeting showing the ULAB mark in association with onscreen images of the software projected onto monitors for public display.”  The applied-for mark is clearly visible on signage surrounding the display.  It does not appear on the screenshot.  A display must be associated directly with the goods offered for sale.  See In re Kohr Bros., Inc., 121 USPQ2d 1793 (TTAB 2017).   The display must be related to the sale of the goods such that an association of the two is inevitable.   See In re Bright of Am., Inc., 205 USPQ 63 (TTAB 1979) , and cases cited therein;  see also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980) ;  cf. In re Shipley Co., 230 USPQ 691 (TTAB 1986);  In re Jones,216 USPQ 328 (TTAB 1982).  In this case, the display is not associated directly with the goods offered for sale.  There is no indication that consumers could purchase the applicant’s software or appliances from the display.

 

Page 5 of the substitute specimens is an enlarged screenshot from the display which shows the stylized U on the screen but does not show the applied-for mark ULAB on the screen.

 

Pages 6 thru 26 of the substitute specimens are described as a “Start Guide provided to purchasers of ULAB software.”  The pages refer to ULAB software, ULAB systems workflow, etc.  Again, these pages are merely advertising material.  They do not show the applied-for mark in use in commerce for software or orthodontic appliances.  The pages advertise applicant’s system which allows purchasers of applicant’s software to create custom-made orthodontic appliances.  The specimens do not show the applied-for mark in use on “Computer software for planning proposed treatments in orthodontics or dentistry; computer software for depicting tooth movements and proposed treatment plans in orthodontics or dentistry; computer application software for mobile phones, tablets, computers, and personal electronic devices, namely, software for planning proposed treatments in orthodontics or dentistry” or “Orthodontic appliances.”  The applicant clearly does not sell orthodontic appliances.  Instead, applicant sells a system used to create orthodontic appliances.  Likewise, the specimens do not show the applied-for mark used in the sale or advertising of “Custom manufacture of orthodontic appliances; custom manufacture and trimming of orthodontic appliances.”  Instead, the specimens how the applied-for mark used in advertising a system which allows orthodontists to manufacture and trim orthodontic appliances.  A process or system is only a way of doing something, and is not generally a service.  TMEP §1301.02(e).  An applied-for mark that identifies only a process, style, method, or system is therefore not registrable as a service mark.  In re HSB Solomon Assocs., LLC, 102 USPQ2d at 1270; In re Hughes Aircraft Co., 222 USPQ 263, 264 (TTAB 1984). 

 

Pages 51 thru 53 of the substitute specimens are “pictures of box labels for shipping orthodontic appliances to consumers.”  This statement is contradicted by all of the advertising materials applicant has submitted which very clearly describe the applicant’s system.  The system allows users to create orthodontic appliances which are subsequently branded with the name of the orthodontist’s practice.  This is clearly evidenced by page 9 of the 6/15/20 response which states “uBrand: Brand your aligners with your practice’s name.”  The applied-for mark is not in use as a trademark on orthodontic appliances.  Instead, the applied-for mark is used in advertising a system.   A process or system is only a way of doing something, and is not generally a tangible product.  Cf. TMEP §1301.02(e).  An applied-for mark that identifies only a process, style, method, or system is therefore not registrable as a trademark.  Cf. In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1270 (TTAB 2012); In re Hughes Aircraft Co., 222 USPQ 263, 264 (TTAB 1984).  Thus the evidence of record clearly indicates that while the boxes may be used to ship machines used to manufacture orthodontic appliances (Class 7 goods), they are not used to ship orthodontic appliances.   

 

Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated 12/13/19 are maintained and continued: 

 

            •  Refusal under Trademark Act Sections 1 and 45 because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Class(es) 9, 10 and 40 in the statement of use.  See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); 37 C.F.R. §2.63(b).

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

 

/RonaldMcMorrow/

Examining Attorney

Law Office 118

ronald.mcmorrow@uspto.gov

(571) 272-9306

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 30, 2020 for

U.S. Trademark Application Serial No. 88159321

 

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. 

 

 

/RonaldMcMorrow/

Examining Attorney

Law Office 118

ronald.mcmorrow@uspto.gov

(571) 272-9306

 

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 June 30, 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.”