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. 88199083 VAGINAL PH REGULATOR(Standard Characters, see http://uspto.report/TM/88199083/mark.png) has been amended as follows:

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

The Examiner has refused registration under Trademark Act Section 2(e)(1) ? Merely Descriptive Refusal ? in the alternative. Trademark Act Section 2(e)(1) ? Merely Descriptive Refusal It is uncontested that the distinctiveness of words in a mark cannot be determined in the abstract, but can only be determined by reference to the goods or services upon or with which the mark is used or is intended to be used. See J. McCarthy, McCarthy on Trademarks and Unfair Competition, ?11:64 (2003). As McCarthy notes, the hypothetical mark BRILLIANT may be ?descriptive? on diamonds, ?suggestive? on furniture polish, and ?arbitrary? on canned applesauce. Moreover, what constitutes a ?descriptive? mark and a ?suggestive? mark is often difficult to ascertain. ?Suggestive? marks are the middle ground between fanciful marks and descriptive marks, and have been described as follows: Between these two extremes lies a middle ground wherein terms of mingled qualities are found. It cannot be said that they are primarily descriptive or that they are purely arbitrary or fanciful without any indication of the nature of the goods which they denominate. Such terms may shed some light upon the characteristics of the goods, but so applied they involve an element of incongruity, and in order to be understood as descriptive, they must be taken in a suggestive or figurative sense through an effort of the imagination on the part of the observer. General Shoe Corp. v. Rosen, 111 F.2d 95, 45 USPQ 196 (4th Cir. 1940), reh?g denied, 112 F.2d 561, 45 USPQ 590 (5th Cir. 1940). In contrast, a descriptive term directly and clearly conveys information about the ingredients, qualities, or characteristics of a product or service. See, e.g., Educational Div. Corp. v. Economy Co., 562 F.2d 26, 196 USPQ 482 (10th Cir. 1977). A suggestive word only indirectly suggests such things. Id. If one must ?exercise mature thought or follow a multi-stage reasoning process? in order to determine the attributes of a product or service, the term is suggestive and not descriptive. In re Tennis in the Round Inc., 199 USPQ 496 (TTAB 1978). Utilizing this ?imagination test? it is not difficult to conclude that Applicant?s mark -- SMARTDRILL ? is at best suggestive, and not merely descriptive, of the goods on which the Applicant?s mark is used. Thus, for the above reasons, the Applicant?s Mark should be allowed and placed on the Supplemental Register.

EVIDENCE
Evidence has been attached: Argument
Original PDF file:
evi_381422258-20200224100 226911132_._ROA.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Evofem Biosciences, Inc., a corporation of Delaware, having an address of

            Suite 600      12400 High Bluff Drive
      San Diego, California 92130
      United States

Proposed: Evofem Biosciences, Inc., a corporation of Delaware, having an address of
      Suite 600
      12400 High Bluff Drive
      San Diego, California 92130
      United States
      Email Address: XXXX
Correspondence Information (current):
      Andrew D. Skale
      PRIMARY EMAIL FOR CORRESPONDENCE: adskale@mintz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jddib@mintz.com; ipdocketingbos@mintz.com; ACRomanini@mintz.com

The docket/reference number is 054498410T01.
Correspondence Information (proposed):
      Andrew D. Skale
      PRIMARY EMAIL FOR CORRESPONDENCE: adskale@mintz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jddib@mintz.com; ipdocketingbos@mintz.com; ACRomanini@mintz.com

The docket/reference number is 054498410T01.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Andrew D. Skale/     Date: 02/24/2020
Signatory's Name: Andrew D. Skale
Signatory's Position: Attorney of record

Signatory's Phone Number: 8583141506

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Andrew D. Skale
   MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
   SUITE 300
   3580 CARMEL MOUNTAIN ROAD
   SAN DIEGO, California 92130
Mailing Address:    Andrew D. Skale
   MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
   SUITE 300
   3580 CARMEL MOUNTAIN ROAD
   SAN DIEGO, California 92130
        
Serial Number: 88199083
Internet Transmission Date: Mon Feb 24 10:03:42 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200224100342425
237-88199083-710cf5556c742c6c1453f2d978c
a79085727547b564cab6d2b285a3a9e5cb2da-N/
A-N/A-20200224100226911132