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:  September 23, 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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

  

 

 

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APPLICATION STATUS

This Office action is in response to applicant’s communication filed on 9-4-2019.

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).   

 

 

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.

 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  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)).  

 

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 previously 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 websites of record 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/

 

Using monitored drug and alcohol recovery homes, addiction peer groups, and addiction recovery accountability, Sober Living Houston has become a top-rated sober living program in Houston.  We seek to assist in the growth, and increase the hopes, of anyone suffering from addiction to drugs, alcohol or other substances.  Our programs follow a 12-step program and offer homes with support, accountability, and guidance from other men and women who are successfully fighting battles with addiction.

http://soberlivinghouston.com/

 

 

In an effort to decrease the number of opioid-associated overdoses (ODs) and OD deaths, West Virginia Peers Enhancing Recovery and Survival (WV PEERS), an addiction peer recovery program, launched in the Monongalia community in March 2018.

http://www.ascensionrs.com/the-climb/substance-abuse-peer-recovery-program-wv-peers-launches  

 

At Lake Shore Health Care Center, chemical dependency in a family affair, where family members are considered part of the patient’s care team. Group therapy in a common space is a vital part of addiction treatment and promotes peer group support. Individual therapy sessions help uncover sources of stress, anxiety and depression. Experienced counselors support patients in processing emotions and self-regulating in a healthy way.

http://tlchealth.org/departments-services/substance-use/  

 

Drug or alcohol addiction almost always leads a person into isolation. Isolation brings its own mental health problems. Given that the substance-addicted person is living a detached life, it isn’t surprising that re-connecting to a group or community will help address important issues when it comes to recovery. Clinical studies have shown that group therapy sessions are equally as effective as individual therapy in promoting long-term sobriety.

Benefits to Group Therapy

Group therapy, also known as peer group therapy, provides several important elements to the recovery process.

http://bluestonerecovery.com/group-therapy/  

 

People who have experienced addiction or trauma often have difficulty forming positive friendships. Peer group therapy and 12-Step facilitation builds positive, trusting friendships with others. Recreational activities like group hikes or experiential therapy provide a natural source of pleasure while reinforcing self-esteem and promoting trust.

Group therapy is one of the core components of a holistic addiction treatment program. In group counseling, the members of a session share their experiences, fears and strategies for success. They develop social skills by learning how to communicate openly and respectfully with other members. Group therapy is a powerful recovery tool that provides a number of important benefits:

http://blackbearrehab.com/health-wellness-addiction-recovery/  

 

 

FOR ADULTS STRUGGLING WITH DRUG & ALCOHOL ABUSE

Unique in approach, Frontline places a strong emphasis on adults between the ages of 18-38. Frontline offers vital support through peer group sessions, art & music recovery programs, and individual treatment plans facilitated by professional substance abuse counselors and program coordinators.

http://www.frontlinefoundations.com/main/

 

Applicant argues that the mark is not merely descriptive since it can mean different things; specifically applicant argues that peer can be a verb (as meaning, to look very carefully) or noun (as meaning, member of the nobility in Britain or Ireland). However descriptiveness must be determined in relation to the services for which registration is sought. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). Therefore, the fact that a term may have a different meaning(s) in a different context is not controlling. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012) ; In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984) ; In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979) ; In re Champion Int’l Corp., 183 USPQ 318, 320 (TTAB 1974). 

 

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).

 

Here, consumers who know that the services are addiction treatment would understand the mark peer to refer to a type of treatment, namely addiction peer group therapy.

 

In view of the foregoing, the refusal to register under Section 2(e)(1) of the Trademark Act is continued and made FINAL.

 

 

 

 

SUPPLEMENTAL REGISTER - Section 1(b) Application Not Eligible for Supplemental Register Until Acceptable Allegation of Use is Filed (Advisory)

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  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.

 

 

Filing an AAU to Convert 1(b) Application to 1(a)

 

To amend an intent-to-use application under Trademark Act Section 1(b) to use in commerce, an applicant must file, prior to approval of the mark for publication, an acceptable amendment to allege use.  See 15 U.S.C. §1051(c); 37 C.F.R. §2.76; TMEP §§806.01(b), 1103.  An amendment to allege use must satisfy the following requirements:

 

(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

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(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.

 

Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  

 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101

United States Patent and Trademark Office

Direct Dial: (571) 272-1658

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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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 September 23, 2019 for

U.S. Trademark Application Serial No. 88205666

 

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. 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101

United States Patent and Trademark Office

Direct Dial: (571) 272-1658

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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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 September 23, 2019, 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.”