Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  March 04, 2020

 

This Office action is in response to applicant’s communication filed on 02/24/2020.

 

In the 09/03/2019 Office Action the examining attorney raised the following issues:

 

1)      Refusal – Amendment to the Supplemental Register Unacceptable

2)      Section 2(e)(1) Merely Descriptive Refusal – Continued and Maintained

 

Applicant responded with arguments against the Section 2(e)(1) Refusal and an amendment to the Supplemental Register.  The Section 2(e)(1) Refusal and Refusal as to the amendment to the Supplemental Register are now both made FINAL.

 

REFUSAL – AMENDMENT TO SUPPLEMENTAL REGISTER UNACCEPTABLE - §1(b) – FINAL

 

Registration is refused on the Supplemental Register because the proposed mark is not in lawful use in commerce, as required by Trademark Act Section 23.  See 15 U.S.C. §1091(a); 37 C.F.R. §2.47(a); TMEP §714.05(a)(i).  Specifically, this application is based on applicant’s bona fide intention to use the mark in commerce under Section 1(b), and applicant has not yet submitted an amendment to allege use under 37 C.F.R. §2.76.  See 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.

 

This refusal will be withdrawn if applicant (1) deletes the amendment to the Supplemental Register, or (2) submits an amendment to allege use that meets the requirements of 37 C.F.R. §2.76(b), (c).  See TMEP §§815.02, 1102.03.

 

If applicant maintains the amendment to the Supplemental Register and provides an acceptable amendment to allege use, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

Based on the foregoing the Amendment to Supplemental Register Refusal is now made FINAL.

 

SECTION 2(e)(1) MERELY DESCRIPTIVE REFUSAL

 

Registration is refused because the applied-for mark merely describes a characteristic of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Here, the mark is merely descriptive of a characteristic of the goods, namely that they are a multi-purpose pharmaceutical preparation design to regulate vaginal pH.  Please see the previously attached Internet evidence defining the following:

 

MULTIPURPOSE:    designed to have several different purposes

VAGINAL:                of, relating to, or affecting the genital vagina

pH:                              a number from 0 to 14 that describes how acid or alkaline a substance is

REGULATOR:          one that regulates

 

Please also see the previously attached an excerpt from applicant’s website (http://www.evofem.com/products/) stating “As a Multipurpose Vaginal pH Regulator (MVP-R) Amphora has been to designed to regulate vaginal pH within the normal range of 3.5 to 4.5 even in the presence of semen.”  The evidence shows the wording as descriptive for the pharmaceutical preparations applied for.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.  Specifically, VAGINAL PH REGULATOR does not create a separate non-descriptive meaning.

 

Applicant’s Arguments

 

Applicant argues the mark is suggestive as “it is not difficult to conclude that Applicant’s mark…is at best suggestive, and not merely descriptive, of the on which the Applicant’s mark is used.  Applicant concludes stating “Applicant’s mark should be allowed and placed on the Supplemental Register.”

 

Examining Attorney’s Response

 

The examining attorney has carefully considered Applicant’s arguments but has found them unpersuasive for the following reasons.  First, a mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a).  Here VAGINAL PH REGULATOR directly conveys to the consumer to function of the product.  Please see attached the following third party website evidence (http://www.theimpt.org/blog-impt/item/evofem-biosciences-to-advance-the-mpt-market-with-amphora) stating the following:

 

Evofem Biosciences’ lead product candidate, Amphora® is an MPT – more specifically, a Multipurpose Vaginal pH Regulator (MVP-RTM) – that is being developed for the prevention of pregnancy and certain sexually transmitted infections (STIs), including chlamydia and gonorrhea.

 

Amphora is a non-hormonal, acid-buffering vaginal gel designed to regulate a woman’s vaginal pH to within the normal range of 3.5 to 4.5. This maintains an acidic environment, even after the introduction of semen during intercourse. An acidic environment is inhospitable to sperm as well as certain viral and bacterial pathogens associated with sexually transmitted infections, but it is integral to the survival of healthy bacteria in the vagina.

 

Second, please also see attached third party registrations with the term REGULATOR on the Supplemental Register or on the Principal based on Section 2(f) Acquired Distinctiveness.  The examining attorney notes VAGINAL PH is also disclaimed by the Applicant.  Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register.  E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).  Here the registrations and evidence show the terms REGULATOR and MULTIPURPOSE as descriptive for goods that have a regulating function and have a variety of uses. 

 

Finally, the examining attorney notes the Applicant has argued the mark is not descriptive but has also asked for the mark be amended to the Supplemental Register.  The Supplemental Register is for descriptive marks which have source indicating capacity.  Id.

 

Based on the foregoing the Section 2(e)(1) Refusal is now made FINAL.

 

 

 

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How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Kapil K. Bhanot/

Examining Attorney

Law Office 108

571.270.1516

Kapil.Bhanot@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 04, 2020 for

U.S. Trademark Application Serial No. 88199100

 

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. 

 

 

/Kapil K. Bhanot/

Examining Attorney

Law Office 108

571.270.1516

Kapil.Bhanot@uspto.gov

 

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 March 04, 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.”