| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88172493 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88172493/mark.png |
| LITERAL ELEMENT | N2 |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The Examining Attorney has issued an Office Action dated February 5, 2019 refusing registration under Trademark Act Section 2(e)(1) on the basis that the mark N2 is allegedly merely descriptive of the recited goods, i.e. root canal filling material and sealer used in dentistry. It is alleged in the Action that the applied for mark merely describes a feature or ingredient of Applicant’s goods, and this refusal is based in part on a reference from the Wiley Online Library that allegedly indicates that N2 is a material for root canal treatment. It is further advised in the Action that in addition to “being merely descriptive, the applied for mark appears to be generic in connection with the identified goods. . .”. (Office Action dated February 5, 2019 at page 2).
Applicant respectfully requests reconsideration and withdrawal of this refusal. Applicant maintains that N2 is not merely descriptive of the goods, (and is indeed NOT generic for the goods), and in fact should be regarded as arbitrary as applied to the goods. More specifically, it is submitted that the references relied upon from the Wiley Online Library, and others, are actually referring to Applicant’s own product; and therefore are not appropriate to support a descriptiveness (or genericness) refusal. Indeed, on information and belief, the references cited in the Action as supporting descriptiveness of the N2 mark, actually refer to Applicant’s own product, and as such, are not supportive in any way of the alleged descriptiveness -or genericness- of the subject mark.
In more detail, Applicant is the owner of, inter alia, U.S. Registration no 2,927,469 for the mark N2, registered February 22, 2005, which recites use since 1953 and use in commerce since 1959, for the same goods as are recited in the instant application. The mark N2 has therefore been used for many years by Applicant and its related company, and therefore the mark has appeared frequently over the years in the relevant literature; however, the published references to the mark are actually references to Applicant’s own product. It is also noted that Applicant is the owner of application serial number 86/584,225 for the mark N2 for root canal filling material, which case was allowed (but was abandoned due to Applicant’s failure to file a statement of use which failure was due to circumstances outside the control of Applicant, i.e. FDA regulatory issues, and was NOT due to any intent by Applicant to abandon said mark).
With respect to the merits of the descriptiveness refusal itself, Applicant maintains that the composite term N2 is not merely descriptive of the recited root canal filling material or even a feature of these goods. In order to determine whether a mark is descriptive, one important test utilized is the “imagination test”, i.e., an inquiry is made as to how much imagination on the buyer’s part is required in trying to obtain a direct message from the mark about the quality, ingredients or characteristics of the goods and goods. McCarthy’s on Trademarks and Unfair Competition, Section 11:71 at page 11-135.
In the instant situation, it is submitted that when one utilizes the imagination test, one must find the instant mark, N2, is not descriptive, and is indeed arbitrary. When one views the mark, it is submitted that imagination, thought and perception are required for the consumer to obtain any direct message about the recited root canal filling material and sealer used in dentistry—the term N2 does not forthwith convey any immediate idea of the goods offered by Applicant. It is submitted that when the viewer sees the term N2, they would see a fanciful coined word and not perceive the mark as merely descriptive of Applicant’s root canal filling material and sealer.
Additionally, on the question of descriptive marks, one may also examine whether the mark directly conveys a real and unequivocal idea of some characteristic, function, quality or ingredient of the product or service to a reasonably informed potential buyer McCarthy’s, Section 11:71 at page 11-135. Here, it is submitted that it is not possible to obtain any information about Applicant’s recited goods from the mark N2; there is no evidence that the mark N2 conveys any characteristic, function, quality or ingredient of Applicant’s goods. See Baroness Small Estates, Inc. v. American Wine Trade, Inc. 104 USPQ 2d 1224 (TTAB 2012) (CMS held not merely descriptive for Cabernet, Merlot and Syrah wines).
Applicant also urges that in any descriptiveness analysis, one may look at whether the mark closely tells something about the product so that other sellers of like products or goods would be likely to want or need to use the term. A related inquiry is whether other competitors are actually using the same term to describe their goods. McCarthy’s, Section 11:71 at page 11-135. Here, there is no evidence that other providers of goods which are competitive with those of Applicant want or need to use the term for their goods. Indeed, there are many other third parties that offer root canal fillers that do not utilize the term N2 for their products, see for example, the marks: “Prime-Dent”, see http://www.net32.com/ec/primedent-root-canal-filling-material-cement-8-d-138159; “Endo-REZ” see http://www.ultradent.com/products/categories/endodontics/sealing/endorez “Soft-Core”, “Simpli-Fil”, “Tubli-Seal”, “Sealapex”, see http://www.kerrdental.com/kerr-endodontics/fill-obturation.
In view of the foregoing, it is submitted that the refusal to register on the basis that the mark N2 is merely descriptive (or potentially generic) is unwarranted and should be reconsidered and withdrawn. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /marilyn matthes brogan/ |
| SIGNATORY'S NAME | Marilyn Matthes Brogan |
| SIGNATORY'S POSITION | attorney, New York bar member no. 1871672 |
| SIGNATORY'S PHONE NUMBER | 212 588 0800 |
| DATE SIGNED | 08/02/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Aug 02 12:05:24 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.X-20 190802120524860570-881724 93-620fdd916730e6a9f25d3e 2a046464878913ae175495688 bfa853f2e334c4e72-N/A-N/A -20190802115751818929 |
| 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) |
The Examining Attorney has issued an Office Action dated February 5, 2019 refusing registration under Trademark Act Section 2(e)(1) on the basis that the mark N2 is allegedly merely descriptive of the recited goods, i.e. root canal filling material and sealer used in dentistry. It is alleged in the Action that the applied for mark merely describes a feature or ingredient of Applicant’s goods, and this refusal is based in part on a reference from the Wiley Online Library that allegedly indicates that N2 is a material for root canal treatment. It is further advised in the Action that in addition to “being merely descriptive, the applied for mark appears to be generic in connection with the identified goods. . .”. (Office Action dated February 5, 2019 at page 2).
Applicant respectfully requests reconsideration and withdrawal of this refusal. Applicant maintains that N2 is not merely descriptive of the goods, (and is indeed NOT generic for the goods), and in fact should be regarded as arbitrary as applied to the goods. More specifically, it is submitted that the references relied upon from the Wiley Online Library, and others, are actually referring to Applicant’s own product; and therefore are not appropriate to support a descriptiveness (or genericness) refusal. Indeed, on information and belief, the references cited in the Action as supporting descriptiveness of the N2 mark, actually refer to Applicant’s own product, and as such, are not supportive in any way of the alleged descriptiveness -or genericness- of the subject mark.
In more detail, Applicant is the owner of, inter alia, U.S. Registration no 2,927,469 for the mark N2, registered February 22, 2005, which recites use since 1953 and use in commerce since 1959, for the same goods as are recited in the instant application. The mark N2 has therefore been used for many years by Applicant and its related company, and therefore the mark has appeared frequently over the years in the relevant literature; however, the published references to the mark are actually references to Applicant’s own product. It is also noted that Applicant is the owner of application serial number 86/584,225 for the mark N2 for root canal filling material, which case was allowed (but was abandoned due to Applicant’s failure to file a statement of use which failure was due to circumstances outside the control of Applicant, i.e. FDA regulatory issues, and was NOT due to any intent by Applicant to abandon said mark).
With respect to the merits of the descriptiveness refusal itself, Applicant maintains that the composite term N2 is not merely descriptive of the recited root canal filling material or even a feature of these goods. In order to determine whether a mark is descriptive, one important test utilized is the “imagination test”, i.e., an inquiry is made as to how much imagination on the buyer’s part is required in trying to obtain a direct message from the mark about the quality, ingredients or characteristics of the goods and goods. McCarthy’s on Trademarks and Unfair Competition, Section 11:71 at page 11-135.
In the instant situation, it is submitted that when one utilizes the imagination test, one must find the instant mark, N2, is not descriptive, and is indeed arbitrary. When one views the mark, it is submitted that imagination, thought and perception are required for the consumer to obtain any direct message about the recited root canal filling material and sealer used in dentistry—the term N2 does not forthwith convey any immediate idea of the goods offered by Applicant. It is submitted that when the viewer sees the term N2, they would see a fanciful coined word and not perceive the mark as merely descriptive of Applicant’s root canal filling material and sealer.
Additionally, on the question of descriptive marks, one may also examine whether the mark directly conveys a real and unequivocal idea of some characteristic, function, quality or ingredient of the product or service to a reasonably informed potential buyer McCarthy’s, Section 11:71 at page 11-135. Here, it is submitted that it is not possible to obtain any information about Applicant’s recited goods from the mark N2; there is no evidence that the mark N2 conveys any characteristic, function, quality or ingredient of Applicant’s goods. See Baroness Small Estates, Inc. v. American Wine Trade, Inc. 104 USPQ 2d 1224 (TTAB 2012) (CMS held not merely descriptive for Cabernet, Merlot and Syrah wines).
Applicant also urges that in any descriptiveness analysis, one may look at whether the mark closely tells something about the product so that other sellers of like products or goods would be likely to want or need to use the term. A related inquiry is whether other competitors are actually using the same term to describe their goods. McCarthy’s, Section 11:71 at page 11-135. Here, there is no evidence that other providers of goods which are competitive with those of Applicant want or need to use the term for their goods. Indeed, there are many other third parties that offer root canal fillers that do not utilize the term N2 for their products, see for example, the marks:
“Prime-Dent”, see http://www.net32.com/ec/primedent-root-canal-filling-material-cement-8-d-138159;
“Endo-REZ” see http://www.ultradent.com/products/categories/endodontics/sealing/endorez
“Soft-Core”, “Simpli-Fil”, “Tubli-Seal”, “Sealapex”, see http://www.kerrdental.com/kerr-endodontics/fill-obturation.
In view of the foregoing, it is submitted that the refusal to register on the basis that the mark N2 is merely descriptive (or potentially generic) is unwarranted and should be reconsidered and withdrawn.