To: | Aesthetic Medical International Holdings ETC. (spink@omm.com) |
Subject: | U.S. Trademark Application Serial No. 88252004 - AESTHETIC MEDICAL INTERNATIONAL - N/A |
Sent: | October 21, 2019 05:02:06 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88252004
Mark: AESTHETIC MEDICAL INTERNATIONAL
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Correspondence Address:
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Applicant: Aesthetic Medical International Holdings ETC.
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Reference/Docket No. N/A
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: October 21, 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.
This Final Office Action addresses applicant’s response of September 30, 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 the provider of the services at issue. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.
Terms that describe the provider of a product or service may also be merely descriptive of the product and/or service. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q).
Here, applicant seeks registration of “AESTHETIC MEDICAL INTERNATIONAL HOLDINGS GROUP LIMITED” and the Chinese characters that translate to “MEDICAL BEAUTY INTERNATIONAL” in relation to “surgical aesthetic treatment, including eye surgery, nose surgery, breast surgery, and liposuction; minimally invasive surgery, including body and face sculpting, body and face thread lifts; laser treatments for hair removal, skin tightening, skin resurfacing, and spot removal.”
It is plain that the word “AESTHETIC MEDICAL” is descriptive of the services at issue in that applicant’s services include “surgical aesthetic treatment.” Also see attached examples of other entities using “AESTHETIC” in a descriptive sense to describe similar procedures sent with the Initial Office Action.
As to “INTERNATIONAL HOLDINGS GROUP LIMITED” this is merely an entity type or business designation that carries no source identifying value. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40. Also see attached evidence of Holding Company. Taken together applicant’s mark merely denotes the provider of the services at issue, namely, an “AESTHETIC MEDICAL” holding company or group that operates internationally.
Lastly, the addition of the non-Latin Characters to the mark does not alter descriptiveness of the mark. The foreign equivalent of a merely descriptive English term is also merely descriptive. In re N. Paper Mills, 64 F.2d 998, 998, 17 USPQ 492, 493 (C.C.P.A. 1933); In re Highlights for Children, Inc., 118 USPQ2d 1268, 1270 (TTAB 2016) (quoting In re Optica Int’l, 196 USPQ 775, 777 (TTAB 1977)). Under the doctrine of foreign equivalents, marks with foreign terms from common, modern languages are translated into English to determine descriptiveness. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (citing In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983); In re Am. Safety Razor Co., 2 USPQ2d 1459, 1460 (TTAB 1987)); see TMEP §1209.03(g).
Applicant’s mark is in Chinese which is a common, modern language in the United States. In re Oriental Daily News, Ltd., 230 USPQ 637 (TTAB 1986) (Chinese). Specifically, the evidence from Wikipedia shows that Chinese languages are the third most spoken languages in the United States. Therefore, a US consumer will stop and translate the Chinese characters to their English equivalent, namely, Medical Beauty International. Applicant of course offers medical treatment, on an International scale. And as to beauty, in the context of the services at issue, it is a descriptive term used to describe aesthetic medical procedures. See evidence attached to this Final Office Action concerning various “BEAUTY” treatments.
In response applicant argues that the mark is at least suggestive because the terms “aesthetic” and “beauty” do not indicate that applicant performs plastic surgery.
In other words, the analysis flows from the services back to the mark. Here, a person who knows what applicant’s services are will immediately understand the terms “aesthetic medical” and “beauty” to describe the services performed. Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.
Applicant further attaches evidence to try and establish that the term “AESTHETIC” is suggestive as used in the medical industry because the use of the term suggests desirable characteristics of any medical procedure. This argument is also unpersuasive. Not all medical procedures are “aesthetic medical” procedures. For example, one does not hope that the outcome of open heart surgery is “aesthetic” as opposed to life saving. Also, applicant does not perform “all” medical procedures. It instead performs (in the words of its own identification) “surgical aesthetic treatment.”
Finally, applicant submits no evidence legal support for its proposition that the foreign equivalent doctrine does not apply to marks constructed of a foreign term and English wording. Accordingly, the refusal to register pursuant to Section 2(e)(1) of the Trademark Act is made FINAL.
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)
/Siddharth Jagannathan/
Siddharth Jagannathan
Trademark Examining Attorney
USPTO, Law Office 114
571-272-6563 (phone)
Siddharth.Jagannathan@uspto.gov
RESPONSE GUIDANCE