To: | Regenacell Therapy, Inc. (trademarks@richmaylaw.com) |
Subject: | U.S. Trademark Application Serial No. 88245691 - CELLFUSE - 040282.0001 |
Sent: | September 11, 2019 01:13:05 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88245691
Mark: CELLFUSE
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Correspondence Address:
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Applicant: Regenacell Therapy, Inc.
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Reference/Docket No. 040282.0001
Correspondence Email Address: |
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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 11, 2019
This Office action is in response to applicant’s communication filed on August 19, 2019.
In a previous Office action dated April 25, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for the mark being merely descriptive. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirement have been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
For the reasons stated below, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
FINAL REFUSAL – Section 2(e)(1) Refusal – Mark is Merely Descriptive
Applicant has applied for the mark “CELLFUSE” in standard characters for use in connection with “medical apparatus for the delivery of the combination of bone marrow, autologous bone dowels and bone graft material to the surgical site” among others, in International Class 10. As stated in the initial Office Action, and explained here, the mark is merely descriptive of a feature, characteristic, purpose, or function of applicant’s goods.
As explained in the previous Office action, the term “CELLFUSE” merely describes applicant’s goods and does not serve as an indicator of source. As the previously attached evidence demonstrated, the term “cell” is defined as “the basic structural unit of all organisms.” Further, the term “fuse” means “to become united or blended” together. Both of these terms are merely descriptive and together merely reference the intended use or function of applicant’s goods, namely, the combination of cells and other materials, namely, bone marrow, to a surgical site. Additionally, the previously attached evidence showed that bone marrow is made up of, among other things, both white and red blood cells. Thus the mark is descriptive of goods whose purpose it is to combine or fuse cells (from bone marrow) to a particular surgical site.
In applicant’s response, applicant argued that the term “fuse” is not descriptive of applicant’s goods because the term holds a different definition in the medical field than the one used in the previous Office action. Applicant argued that, the term “hydration” is used in the medical field to describe what is generally thought of as “fusion” in a non-medical sense (i.e., when items are united or blended together). Therefore, because the term “fusion” holds a different meaning in the medical field, it cannot be considered descriptive of applicant’s goods. However, descriptiveness is considered in relation to the relevant goods. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). Thus, the fact that the term “fusion” holds a different meaning in the medical context is irrelevant. The term’s ordinary meaning is descriptive of the intended use or function of applicant’s goods. Additionally, the attached evidence from applicant’s response demonstrates that in the medical context, the term “fusion” can mean “the merging or coherence of adjacent parts or bodies.” This definition would similarly seem to describe the intended use or function of applicant’s goods (i.e., a device that merges cells from a variety of materials, including bone marrow, to a surgical site).
Applicant also argued that “although cells are contained in bone marrow and bone dowels, the Applicant’s product harvests among other things matrix material, growth factors, proteins, exosomes and other active biologic ingredients.” Thus, “it is not accurate to say that the purpose of the product is to harvest cells.” However, as previously stated, “a mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only 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); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371. Because cells are “the basic structural unit of all organisms,” it stands to reason that all of applicant’s referenced materials are made up of and contain cells. Thus, a significant function of applicant’s applied-for goods is the collection of cells from a variety of materials. Therefore, the mark is descriptive of goods whose purpose it is to merge or combine the cells from those materials to a surgical site.
Accordingly, for these and the reasons stated above, the refusal to register under Section 2(e)(1) is hereby maintained and made FINAL.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Comments
Please call or email the assigned trademark examining attorney with questions about this Office action. 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.
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)
/Faucette, Max/
Trademark Examining Attorney
Law Office 107
(571)270-5655
max.faucette@uspto.gov
RESPONSE GUIDANCE