Response to Office Action

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 1957 (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 1957 (Rev 10/2011)

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

Response to Office 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 Office Action dated March 04, 2019 Section 2(e)(1) refusal: The Examining Attorney has 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/." The Examining Attorney cited four websites allegedly discussing peer support or peer therapy addiction treatment services. Applicant respectfully traverses. 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). However, a mark which evokes, or connotes, multiple meanings is registerable because such mark would likely be seen as not "descriptive," due to the fact that a potential consumer would not know which of the meanings the mark actually refers to. In re Colonial Stores, Inc., 55 C.C.P.A. 1049, 1053-54, 394 F.2d 549, 552-53 (C.C.P.A. 1968). In re Colonial Stores involved the mark of "SUGAR AND SPICE," where "SUGAR AND SPICE" was determined to not only "describe" bakery goods but to also "describe" the nursery rhyme "sugar and spice, with everything nice." Id. As such, that mark was determined to be registerable, due to the probable ambiguity that a potential consumer would encounter when reading such mark. Id. Here, as in In re Chamber of Commerce of the U.S. and In re Colonial Stores, the mark PEER is not "descriptive" because it does not "immediately convey[] knowledge of the quality, feature, function, or characteristic of the goods and services." Peer, as defined in either Miriam Webster or Oxford Dictionaries, can either be a verb or a noun. See http://www.lexico.com/en/definition/peer; http://www.merriam-webster.com/dictionary/peer. When defined as a verb, peer means to look at something with ?difficulty or concentration? or to look ?narrowly or curiously.? Id. However, as a noun, peer can be construed to mean ?[a] member of the nobility in Britain or Ireland, comprising the ranks of duke, marquess, earl, viscount, and baron,? or even ?[a] person of the same age, status, or ability as another specified person.? As such, the word peer, in and of itself, does not ?immediately convey? an addiction therapy program or even addiction treatment services as Applicant?s mark PEER refers to. Moreover, since the word peer may be construed, and understood, in multiple ways, the mark PEER is registerable because a potential consumer would not know which definition of peer the mark refers to. See In re Colonial Stores, Inc., 55 C.C.P.A. 1049. Applicant notes that a determination of descriptiveness is not made in the abstract but whether a consumer who knows what the goods or services are will understand the mark to immediately convey information about a quality, purpose, feature, function, or characteristic of the goods or services. The instant mark "PEER" may suggest a quality, purpose, feature, function, or characteristic of the services but a consumer would need to use his or her imagination, some thought or perception to reach a conclusion as to the nature of the services. Accordingly, Applicant respectfully submits that the mark PEER is not descriptive and requests reconsideration and withdrawal of the refusal. CONCLUSION Applicant believes this response to be a full and complete response to the Office Action. Accordingly, favorable reconsideration in view of this response and issuance of notice of allowance are earnestly solicited. If, in the opinion of the Examining Attorney, a telephone conference would expedite the prosecution of the subject application, the Examining Attorney is invited to call the undersigned attorney.

EVIDENCE
Evidence in the nature of Peer, as defined in either Miriam Webster or Oxford Dictionaries, can either be a verb or a noun. has been attached.
Original PDF file:
evi_9624811333-20190904191939225727_._peer_DefinitionofpeerbyLexico.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

The applicant's current attorney information: Edward Frederick Behm. Edward Frederick Behm of DILWORTH LAW LLP, is located at

      3500E
      1500 MARKET STREET
      PHILADELPHIA, Pennsylvania 19102
      US
The docket/reference number is 18-1256.

The phone number is 215-575-7155.

The email address is tmconfirm@dilworthlaw.com

The applicants proposed attorney information: Edward Frederick Behm. Edward Frederick Behm of DILWORTH LAW LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2 Research Way
      Princeton, New Jersey 08540
      United States
The docket/reference number is 18-1256.

The phone number is 6099872282.

The fax number is 6099876651.

The email address is tmconfirm@dilworthlaw.com

Edward Frederick Behm submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: EDWARD FREDERICK BEHM. EDWARD FREDERICK BEHM of DILWORTH LAW LLP, is located at

      3500E
      1500 MARKET STREET
      PHILADELPHIA, Pennsylvania 19102
      US
The docket/reference number is 18-1256.

The phone number is 215-575-7155.

The email address is tmconfirm@dilworthlaw.com; ebehm@dilworthlaw.com

The applicants proposed correspondence information: Edward Frederick Behm. Edward Frederick Behm of DILWORTH LAW LLP, is located at

      2 Research Way
      Princeton, New Jersey 08540
      United States
The docket/reference number is 18-1256.

The phone number is 6099872282.

The fax number is 6099876651.

The email address is tmconfirm@dilworthlaw.com; nkumar@dilworthlaw.com

SIGNATURE(S)
Response Signature
Signature: /Nanda P.B.A. Kumar/     Date: 09/04/2019
Signatory's Name: NANDA P. B. A. KUMAR
Signatory's Position: Attorney at Law

Signatory's Phone Number: 6099872282

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    EDWARD FREDERICK BEHM
   DILWORTH LAW LLP
   3500E
   1500 MARKET STREET
   PHILADELPHIA, Pennsylvania 19102
Mailing Address:    Edward Frederick Behm
   DILWORTH LAW LLP
   2 Research Way
   Princeton, New Jersey 08540
        
Serial Number: 88205666
Internet Transmission Date: Wed Sep 04 19:55:12 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019090419551200
7805-88205666-610a48fdb99dd9c7cbe9881fb3
26db53379325327e349b38d4ad24c18e1b83013-
N/A-N/A-20190904191939225727