To: | L. Perrigo Company (trademark@honigman.com) |
Subject: | U.S. Trademark Application Serial No. 88279570 - QUALITY, AFFORDABLE SELF-CARE - 200407444796 |
Sent: | November 12, 2019 01:37:19 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88279570
Mark: QUALITY, AFFORDABLE SELF-CARE
|
|
Correspondence Address: 39400 WOODWARD AVENUE, SUITE 101
|
|
Applicant: L. Perrigo Company
|
|
Reference/Docket No. 200407444796
Correspondence Email Address: |
|
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: November 12, 2019
This Office action is in response to applicant’s communication filed on October 14, 2019.
In a previous Office action(s) dated April 18, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for being merely descriptive of the applied-for goods and services. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and/or services.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identifications provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal. See 37 C.F.R. §2.63(b); TMEP §714.04.
SECTION 2(e)(1) FINAL REFUSAL - MERELY DESCRIPTIVE
Applicant’s mark is QUALITY, AFFORDABLE SELF-CARE PRODUCTS for “Non-medicated cosmetic and deodorant products, namely, feminine hygiene wash, depilatories, toothpaste and mouthwash, tooth whitening preparations” in International Class 3, “Allergy relief medications; antacids; antihistamines; antitussive preparations; anti-diarrheal preparations namely, antidiarrheal medications; cough syrups, cough expectorants, decongestants, decongestant nasal sprays; disposable test strips for measuring blood glucose levels; eye drops; laxatives; medicated smoking cessation gums and lozenges; medicinal gastrointestinal preparations, namely, medicines for the treatment of gastrointestinal diseases and disorders; medicated pads, namely, first aid wipes for anti-itch and anti-infective purposes, wipes for treatment of hemorrhoids and wipes for treatment of skin fungal infections; nutritional supplements; oral analgesics; personal lubricants; pharmaceuticals for treating vaginal infections; pharmaceuticals for contraceptive purposes being contraceptive preparations; sleeping pills or tablets; suppositories; topical analgesics; topical antibiotic creams and ointments; topical preparations for the treatment of alopecia; Topical pharmaceutical and medical preparations, namely, antibiotic creams and ointments, anti-itch creams and ointments, anti-fungal preparations, creams for treatment of cold sores, hair regrowth treatments, lidocaine spray for male desensitization; infant formulas; oral electrolyte beverages for medical purposes; weight loss products, namely, supplements for weight loss or weight management; topical human antiparasitic products, namely, antiparasitics; medicated cosmetics; pregnancy diagnostic kits and tests; infant formula and food; sinus medications for the treatment of sinus congestion; medications and topical ointments for the treatment of foot conditions” in International Class 5, “Medical apparatus and instruments, namely, glucose meters, pen needles for diabetes management, menstrual cups, and lice combs” in International Class 10, “Printed materials, namely, flyers, newsletters, pamphlets, reports, banners and product inserts in the field of healthcare and healthcare products” in International Class 16, “Dental apparatus and instruments, namely, manual toothbrushes, dental floss and flossers, electric toothbrushes and accessories, interdental picks” in International Class 21, and “Business management services in relation to wholesale and retail of pharmaceutical, cosmetic, and hygiene products for human and veterinary use, food supplements and medical apparatus and instruments; demonstration of goods for promotional purposes; distribution of advertising material in the nature of samples; import and export agency services; providing commercial information in the field of pharmaceutical, cosmetic and hygiene products; sales promotion for others; promotional and advertising services” in International Class 35.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
Finally, the previously attached evidence shows “SELF-CARE” refers to improving one’s own well-being and preserving health. Thus, this wording merely describes a feature or characteristic of the applied-for hygeniene, medications, medical apparatus, healthcare literature, and dental products and corresponding business management and advertising services. That is, applicant’s goods and services are all used in the furtherance of self-care behaviors. The attached evidence from ahdictionary.com shows that wording PRODUCTS is generic for the applied-for goods and service.
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Taken in its entirety, the mark means hygeniene, medications, medical apparatus, healthcare literature, and dental products and corresponding business management and advertising services which are of a high degree of excellence and are financially available to consumers.
Applicant seemingly argues that the mark is not informational. Further, the applicant argues that it should not be required to submit a disclaimer. The basis for this refusal is that the entire mark is merely descriptive. Thus, the entire mark has been refused on the principal register.
For these reasons, the applied-for mark is FINALLY refused under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
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)
/Brendan J. Ketchum/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 125
(571)272-5397
brendan.ketchum@uspto.gov
RESPONSE GUIDANCE