To: | GMH Tequesta Holdings, Inc. (tmconfirm@dilworthlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88205666 - PEER - 18-1256 |
Sent: | 3/4/2019 11:35:20 AM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88205666
MARK: PEER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: GMH Tequesta Holdings, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/4/2019
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
SEARCH OF OFFICE RECORDS (Advisory)
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Applicant should note the following ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature and/or characteristic of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).
In the present case, applicant seeks to register PEER for: Addition therapy programs, namely, addiction treatment services
The term PEER is defined as "A person of the same age, status, or ability as another specified person." See attached definition.
As applied to the services, the mark immediately convey to the consumer a feature of the services, i.e., applicant’s addiction treatment features peer therapy. Applicant’s website indicate that it provides peer group therapy: “A successful treatment plan for heroin abuse involves… Peer group therapy to help you build a support network of recovering addicts” http://futuresrecoveryhealthcare.com/knowledge-center/heroin-addiction/
The examining attorney refers to the attached websites discussing peer support or peer therapy addiction treatment services:
How our team provides top-notch drug use disorder support services for Houston
At the Houston Recovery Center, we know the importance of reaching our clients where they are. That is why we offer a diverse array of peer-based drug use disorder support services designed to support our clients in the Houston community.
http://houstonrecoverycenter.org/drug-use-disorder-recovery-support-services-houston/
Turning Point Center of Central Vermont has been operating since 2003 and has the mission to help people find, maintain and enhance their substance abuse recovery by providing peer-based recovery supports to individuals and families; conducting educational programs that aid in building and enriching a healthy life; and maintaining a safe haven for sober recreation and social activities. At any given day there could be up to 30 guests at the Barre facility, which operates 50 hours a week, Monday through Saturday. The center functions on a shoestring budget with part time dedicated staff and volunteers who are passionate about helping participants maintain recovery.
http://www.montpelierbridge.com/2015/11/granite-city-groove-grateful-for-addiction-recovery-services/
PEER GROUP THERAPY FOR TEENS WITH ADDICTION ISSUES
Peer group therapy can begin as early as the detox phase and continue throughout substance abuse treatment. Support groups and self-help meetings are also vital in the aftercare stage, when the skills learned in rehab must be applied in a “real life” setting. In order to be effective, peer group therapy should be structured and facilitated by experienced addiction specialists. Groups are conducted by a therapist, counselor or psychiatrist who is credentialed in both adolescent development and addiction treatment.
http://muirwoodteen.com/treatment-topics/treatment-therapies/peer-group-therapy-for-teens-with-addiction-issues/
Incorporating Group Therapy
Most addiction treatment programs give you the opportunity to participate in group sessions. Although one-on-one meetings with a therapist have a place in your curriculum, healing also calls for peer interactions. An opioid addiction treatment program may use experiential eco-therapy, for example, to help you hone coping skills. As you work together as a group, you develop a strong sense of self-sufficiency.
http://www.redoakrecovery.com/young-adult-rehab-programs/opioid-addiction-treatment-program/
In view of the foregoing, registration on the Principal Register is refused under Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal(s) to register, applicant should note the following issue(s) and requirement(s) set forth below.
SUPPLEMENTAL REGISTER - Section 1(b) Application Not Eligible for Supplemental Register Until Acceptable Allegation of Use is Filed (Advisory)
Filing an AAU to Convert 1(b) Application to 1(a)
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
Benefits of Supplemental Registration
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
CLOSING
If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney. For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.
/Benji Paradewelai/
Trademark Attorney
Law Office 101
U.S. Patent & Trademark Office
Tel: (571) 272-1658
Email: benji.paradewelai@uspto.gov (for informal inquiries)
http://www.uspto.gov (for filing Official responses)
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TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.