Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

IMPORTANT NOTICE:  APPLICATION IS ABANDONED

Applicant’s Response Is Incomplete

 

 

Issue date:  April 14, 2020

 

 

The application is abandoned because applicant’s response to the 9/23/2019 final Office action dated  is not complete for the reason(s) stated below.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a); TMEP §§718.02, 718.03. 

 

In this case, applicant  did not (1) raise a new issue, (2) resolve all outstanding issue(s) in the final Office action, (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  Additionally, applicant did not timely file a notice of appeal and no time remains in the response period. See attached from the TTAB records.

 

Applicant may file a Petition to the Director Under Trademark Rule 2.146 within two months of the issue date of this notice to request that the abandonment determination be reversed and the application be returned to active status.  TMEP §§715.03(a)(ii)(D), 718.03(b), 1705.04, 1713.01-.02.  However, the Director will grant the petition in rare cases if (1) the USPTO committed a clear procedural error or abuse of discretion, or (2) applicant can show substantial compliance with the response requirements.  TMEP §§715.03(a)(ii)(D), 718.03(b), 1713.01-02.  

 

Applicant is advised that the amendment in the identification is acceptable and has been made of record.

 

 

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.

 

Applicant argues that the mark is not merely descriptive because the term “peer” does not appear in the identification and that addiction treatment services covers a broad spectrum of methods and processes such that other wording could be used to describe these services.

 

However it is not necessary that a term describe all of the purposes, functions, characteristics, or features of a services to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).  Second, even if there are other words that can be used to describe applicant's services, it does not establish that applicant's term is not merely descriptive.  The question is simply whether the term PEER describes applicant's services and not rather if there are better terms to describe those services.  Here the evidence shows that PEER does describe a type of addiction treatment service.

 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101, USPTO

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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United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 14, 2020 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.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101, USPTO

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).

 

 

 

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.”