TEAS Request Reconsideration after FOA

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88205666 PEER(Standard Characters, see http://uspto.report/TM/88205666/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

This is in response to the Final Office Action dated September 23, 2019 (?Office Action?) in U.S. Application Serial No. 88/205,666 by or for Examining Attorney Benji Yue Paradewelai, Esq. Amendment to Services Applicant respectfully submits that there is an obvious typographical error in the identification of services. Specifically, it recites ?[a]ddition? instead of ?Addiction?and, accordingly, Applicant requests the Examining Attorney permit the Applicant to amend the identification of services such that it reads: --Addiction therapy programs, namely, addiction treatment services-- Section 2(e)(1) refusal The Examining Attorney has initially refused registration of Applicant?s mark, PEER, on the basis that the applied for mark merely describes a feature and/or characteristic of Applicant?s services under Section 2(e)(1) of the Lanham Act, 15 U.S.C. ? 1052(e)(1). The Examining Attorney averred that the applied-for mark is "descriptive" because: 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/heroinaddiction/ Applicant respectfully traverses. The Examining Attorney stated that ?[t]he term PEER is defined as ?A person of the same age, status, or ability as another specified person.?? Conversely, if a person undergoing a treatment is not of the same age, status or ability as another specified person, then that person is not a ?PEER.? Those persons that undergo addiction therapy necessarily of different ages, statuses or abilities. They are not necessarily of similar (much less the same) age, status, or ability. Accordingly, regardless of the Applicant?s arbitrary use of the term ?[p]eer group therapy,? the mark PEER does not describe a feature and/or characteristic of Applicant?s services. Moreover, as noted by the Examining Attorney, ?Applicant seeks to register PEER for: Addi[c]tion therapy programs, namely, addiction treatment services.? The terms ?peer therapy? and ?peer-based recovery? do not appear in the identification of services. A term is merely descriptive if it ?immediately conveys knowledge of the quality, feature, function, or characteristic of the goods and services with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed.Cir.2007) (citing In re Gyulay, 820 F.2d 1216, 1217 (Fed.Cir.1987))). (Emphasis added). The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831; In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001); In re Omaha Nat?l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014) . Sources for considering the context in which the mark is or may be used include websites, publications, labels, packages, advertising material, and explanatory text on specimens for the goods and services. See In re N. C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d at 1342; In re Abcor Dev. Corp., 588 F.2d 811 at 814. The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary. See In re Noble Co., 225 USPQ 749, 750 (TTAB 1985). If the examining attorney refuses registration, he or she must support the refusal with appropriate evidence. See generally In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005) . Here, Applicant explicitly defines the services related to its mark PEER as: ?[a]ddi[c]tion therapy programs, namely, addiction treatment services.? As such, even taking the most narrow interpretation of Applicant?s services related to its mark, ?addiction treatment services,? the term PEER is not merely descriptive of Applicant?s services. ?Addiction treatment services? covers a broad spectrum of methods and processes, or the like, which may assist someone who has an addiction, and wants to overcome such addiction. Addiction is typically defined as ?a compulsive, chronic, physiological or psychological need for a habit-forming substance, behavior, or activity having harmful physical, psychological, or social effects and typically causing well-defined symptoms (such as anxiety, irritability, tremors, or nausea) upon withdrawal or abstinence : the state of being addicted.? See Exhibit A. Treatment is typically defined as ?the act or manner or an instance of treating someone or something.? See Exhibit B. Services it generally defined as ?the occupation or function of serving.? See Exhibit C. ?Peer,? on the other hand, and in the meaning that the Examining Attorney finds most closely related to Applicant?s services, can be defined as ?one that is of equal standing with another.? See Exhibit D. However, nowhere in Applicant?s definition of its services is there an explicit or even a remotely implicit description of services which suggest that Applicant offers services where there is ?one that is of equal standing with another? which helps or would assist someone in overcoming an addiction. Moreover, Google searches can typically be representative of common and current trends of words or phrases, in that respect, the Google search for ?addiction treatment services? brings up a majority of search results of entities that can help someone with addiction, not services involving ?one that is of equal standing with another? which helps or would assist in someone overcoming an addiction. See Exhibit E & F. Therefore, Applicant contends that the mark PEER is not descriptive, due to the fact that the word peer has multiple meanings but also because more descriptive marks with the word peer are currently registered. CONCLUSION In view of the foregoing remarks, Applicant submits that the present Application is in condition for allowance and such action is respectfully requested. Applicant respectfully requests the courtesy of a telephone interview should the Examining Attorney have any additional questions with respect to the application.

EVIDENCE
Evidence has been attached: Evidence submitted establishes dictionary definitions for "addiction," "treatment," "services," and "peer." Evidence submitted also shows general Google search results for "addiction treatment services."
Original PDF file:
evi_96245155207-202003231 55226364784_._t_A_-_Addic tion___Definition_of_Addi ction_by_Merriam-Webster.pdf
Converted PDF file(s) ( 8 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8
Original PDF file:
evi_96245155207-202003231 55226364784_._t_B_-_Treat ment___Definition_of_Trea tment_by_Merriam-Webster.pdf
Converted PDF file(s) ( 10 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10
Original PDF file:
evi_96245155207-202003231 55226364784_._bit_C_-_Ser vices___Definition_of_Ser vices_by_Merriam-Webster.pdf
Converted PDF file(s) ( 15 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15
Original PDF file:
evi_96245155207-202003231 55226364784_._Exhibit_D_- _Peer___Definition_of_Pee r_by_Merriam-Webster.pdf
Converted PDF file(s) ( 12 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12
Original PDF file:
evi_96245155207-202003231 55226364784_._it_E_-_addi ction_treatment_services_ -_Google_Search_-_Page_1.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_96245155207-202003231 55226364784_._it_F_-_addi ction_treatment_services_ -_Google_Search_-_Page_2.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 044 for Addition therapy programs, namely, addiction treatment services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Addition therapy programs, namely, addiction treatment services; Addiction therapy programs, namely, addiction treatment servicesClass 044 for Addiction therapy programs, namely, addiction treatment services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: GMH TEQUESTA HOLDINGS LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      701 OLD DIXIE HIGHWAY
      TEQUESTA, Florida 33469
      United States

Proposed: GMH TEQUESTA HOLDINGS LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      701 OLD DIXIE HIGHWAY
      TEQUESTA, Florida 33469
      United States
      Email Address: XXXX
Correspondence Information (current):
      Edward Frederick Behm
      PRIMARY EMAIL FOR CORRESPONDENCE: tmconfirm@dilworthlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): nkumar@dilworthlaw.com

The docket/reference number is 18-1256.
Correspondence Information (proposed):
      Edward Frederick Behm
      PRIMARY EMAIL FOR CORRESPONDENCE: tmconfirm@dilworthlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): nkumar@dilworthlaw.com

The docket/reference number is 18-1256.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Nanda P Kumar/     Date: 03/23/2020
Signatory's Name: Nanda P Kumar
Signatory's Position: Attorney of Record

The signatory has confirmed that an authorized U.S. licensed attorney has been appointed to represent the owner/holder; that he/she has been granted reciprocal recognition under 37 C.F.R. §11.14(c)(1) by the USPTO's Office of Enrollment and Discipline; and, that he/she is an authorized signatory based on 37 C.F.R. §11.14(c)(2).

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Edward Frederick Behm
   DILWORTH LAW LLP
   
   2 Research Way
   Princeton, New Jersey 08540
Mailing Address:    Edward Frederick Behm
   DILWORTH LAW LLP
   2 Research Way
   Princeton, New Jersey 08540
        
Serial Number: 88205666
Internet Transmission Date: Mon Mar 23 16:20:16 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XXX-202003231620163
04921-88205666-71083606cf315905a646a4c9f
aa177bef3c2e15e2d647c25c2cec2f5cb6285dad
b-N/A-N/A-20200323155226364784