To: | Evofem Biosciences, Inc. (adskale@mintz.com) |
Subject: | U.S. Trademark Application Serial No. 88199100 - MULTIPURPOSE VAGINAL PH REGULATOR - 054498409T01 |
Sent: | March 04, 2020 03:04:53 PM |
Sent As: | ecom108@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88199100
Mark: MULTIPURPOSE VAGINAL PH REGULATOR
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Correspondence Address: |
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Applicant: Evofem Biosciences, Inc.
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Reference/Docket No. 054498409T01
Correspondence Email Address: |
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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
This refusal will be withdrawn if applicant (1) deletes the amendment to the Supplemental Register, or (2) submits an amendment to allege use that meets the requirements of 37 C.F.R.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
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.
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.
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