| To: | Essenlix Corporation (esxip@essenlix.com) |
| Subject: | U.S. Trademark Application Serial No. 88298187 - IAP - ESX-T090 |
| Sent: | October 29, 2019 06:09:27 PM |
| Sent As: | ecom113@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88298187
Mark: IAP
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Correspondence Address:
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Applicant: Essenlix Corporation
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Reference/Docket No. ESX-T090
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 29, 2019
This Office action issues in response to applicant’s communication dated October 10, 2019 where applicant:
(1) amended the identification of goods and services;
(2) provided some but not all of the required information; and
(3) argued against the Section 2(e)(1) refusal;
The examining attorney has reviewed the applicant’s response and determined the following:
(1) Applicant’s amendment of the identification of goods and services is unacceptable, and the requirement to amend the identification of goods and services is maintained and continued;
(2) In light of applicant’s amendment of the identification of goods and services, the requirement to clarify the number of classes for which registration is sought is satisfied;
(3) To the extent that applicant provided some of the required information, that information is acceptable and made of record, and the requirement is satisfied in part ONLY; to the extent that applicant failed to provide all of the required information, the requirement for additional information is maintained and continued;
(4) In light of information supplied in the applicant’s Response, the Section 2(e)(1) mere descriptiveness refusal is withdrawn;
(5) In light of information supplied in the applicant’s Response, a new issue has arisen: Section 2(a) Deceptiveness Refusal; and
(6) In light of information supplied in the applicant’s Response, a new issue has arisen: Section 2(e)(1) Deceptively Misdescriptive Refusal
SUMMARY OF ISSUES
(1) Section 2(a) Deceptiveness Refusal
(2) Section 2(e)(1) Deceptively Misdescriptive Refusal
(3) Amendment of Identification of Goods and Services Required
(4) Additional Information Required
The trademark examining attorney incorporates by reference all evidence and arguments in the previous Office action dated April 10, 2019.
SECTION 2(a) DECEPTIVNESS REFUSAL
A term is deceptive when all three of the following criteria are met:
(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods and/or services?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods and/or services?
(3) If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?
In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).
In this case, applicant’s mark consists of the acronym “IAP”, indicating that the goods are used in testing for immunosuppressive acidic protein and that the services include testing for immunosuppressive acidic protein. However, according to the evidence of record, applicant’s goods and/or services do not in fact have or exhibit this feature or characteristic. Specifically, in applicant’s Response dated October 10, 2019, applicant stated that “Applicant’s goods are not related to immunosuppressive acidic protein,” and “Applicant’s services are not related to immunosuppressive acidic protein.”
Consumers would be likely to believe this misdescription in the mark, because the attached evidence from Karger.com, Link.Springer.com, NEPJOL.info, and Journals.SagePub.com, supplements the evidence attached to the previous Office action and shows that patients’ immunosuppressive acidic protein (IAP) levels are tested and analyzed by medical services providers as markers of certain types of tumors.
A misdescriptive feature or characteristic would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product or service more appealing or desirable to prospective purchasers. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d).
In the present case, the attached evidence from Karger.com, Link.Springer.com, shows that the misdescriptive feature or characteristic, namely IAP, renders the goods and/or services more appealing or desirable because testing for IAP levels helps medical services providers to determine whether patients have certain types of tumors, including renal cell carcinoma, ovarian cancers, and brain tumors. Specifically, studies conducted at a time when there were “no reliable tumor markers in renal cell carcinoma,” found that “IAP may serve as a tumor marker in patients with renal cell carcinoma.” There may also be a “connection between serum IAP levels and altered cellular immune competence in brain-tumour patients.” Because tests for IAP and IAP-testing services helps medical services providers to determine whether patients have certain types of tumors, while other tests and testing services would not, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods and/or services.
SECTION 2(e)(1) DECEPTIVELY MISDESCRITPIVE REFUSAL
Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods and/or services that the goods and/or services could plausibly possess but in fact do not. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005); see TMEP §1209.04. To be merely descriptive, a mark must immediately convey knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
The trademark examining attorney provided arguments and attached evidence to the previous Office action establishing the descriptiveness of the acronym IAP. The trademark examining attorney has supplemented that evidence above.
However, as explained above, in this case, it appears the goods and services do not in fact possess this feature or characteristic.
Regarding the second part of the test, the Board has applied the reasonably prudent consumer test in assessing whether consumers are likely to believe the misrepresentation. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).
The trademark examining attorney has provided arguments and attached evidence above which shows that the reasonably prudent consumer is likely to believe the representation.
AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES REQUIRED
For the reasons detailed in the Office action dated April 10, 2019, the applicant was required to amend the identification of goods and services.
For the reasons detailed below, applicant’s amendment of the identification of goods and services is unacceptable, and the requirement to amend the identification of goods and services is maintained and continued.
The identification of goods in International Class 1 must be clarified because the wording “Biological and chemical reagents used for non-medical research or laboratory purposes, namely, in vitro and in vivo scientific use, the testing of bodily fluids, and the detecting and analyzing of cells, proteins, small molecules, and nucleotides” is indefinite. Applicant has included the term “or” in the identification of goods. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods; (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it is unclear whether applicant’s goods are used only for non-medical research, only for laboratory purposes, or for both non-medical research and laboratory purposes.
An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “or” deleted and the goods specified using definite and unambiguous language.
Additionally, the wording “Biological and chemical test kits comprised of biological, chemical, and diagnostic reagents for the detection and identification of nucleic acids, namely, DNA and RNA in a sample, for laboratory or research use” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Please see the above explanation regarding the use of the word “or”.
Additionally, the identification of goods in International Class 10 must be clarified because the wording “Biological and chemical testing kits for personal wellness in the nature of diagnostic test kits consisting primarily of medical diagnostic reagents and assays for the detection of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, and genetic diseases” appears to be misclassified. Such goods are properly classified in Class 5, not Class 10. Moreover, the entry is indefinite because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the means of detection, such as testing of bodily fluids.
The identification of services in International Class 44 must be clarified because “Healthcare services in the field of digital healthcare services.” In the previous Office action, applicant was required to specify the type of healthcare services. Applicant has provided the field of healthcare services but has still failed to specify the type of healthcare services, such as treatment of patients with snoring and sleep apnea disorders.
Additionally, the wording “Wellness services, namely, providing wellness information” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. Applicant must specify the common commercial name for the services, such as providing a website featuring information regarding lifestyle wellness.
Additionally, the wording “Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing, diagnostic testing, and wellness services, all in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. Applicant was required in the previous Office action to specify the common commercial name for the “healthcare testing” services, such as medical testing for treatment purposes. Applicant failed to do so. Applicant was required in the previous Office action to specify the type of diagnostic testing, such as medical diagnostic testing. Applicant failed to do so. Applicant was required in the previous Office action to specify the type of wellness services, such as providing medical testing of fitness and medical consultations to individuals to help the make health, wellness, and nutritional changes in their daily living to improve health. Applicant failed to do so. Applicant is still required to provide such clarification.
Additionally, the wording “Medical testing services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sample” is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It is indefinite because the nature of the services is unclear. Applicant was required in the previous Office action to specify the common commercial name for the services, such as medical testing for diagnostic or treatment purposes. Applicant failed to do so. Applicant is still required to provide such clarification.
Specific guidance for all requirements has been provided below.
Applicant may adopt the following wording, if accurate:
Class 1 Assays for research purposes; Biological and chemical reagents used
for non-medical research or and laboratory purposes, namely, in vitro and in vivo scientific use, the testing of bodily fluids, and the detecting and analyzing of cells,
proteins, small molecules, and nucleotides; Biological and chemical test kits comprised of biological, chemical, and diagnostic reagents for the detection and identification of nucleic acids, namely,
DNA and RNA in a sample, for laboratory or and research use
Class 5 Medical diagnostic reagents and assays for testing of body fluids;
Medical diagnostic reagents and assays for testing cells, proteins, small molecules, nucleotides, and nucleic acids; Medical diagnostic reagents; Diagnostic kits comprised of medical diagnostic
reagents and assays for testing of bodily fluids for use in disease detection, namely, cancers, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious
diseases, viral diseases, and genetic diseases; Diagnostic biomarker reagents for medical purposes; Biological and chemical testing kits for personal wellness in the nature of diagnostic test kits
consisting primarily of medical diagnostic reagents and assays for {specify means of detection, e.g., testing of bodily fluids} for use in disease the detection, namely, of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, and genetic diseases
Class 10 Medical diagnostic apparatus for testing cells, tissue, biomolecules, proteins,
small molecules, and nucleotides; Medical devices for obtaining bodily fluid samples; Medical diagnostic instruments for the analysis of bodily fluids; Medical apparatus for diagnostic use, namely,
medical apparatus for diagnostic testing of health conditions, diseases, or abnormalities, namely, cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases,
infectious diseases, viral diseases, genetic diseases, and endocrine diseases, and other tissue-based diagnostic testing, cytology, and cell based testing; Medical apparatus, devices, and instruments
for wellness testing, health condition testing, and healthcare testing, namely, point-of-care diagnostic devices, at-home diagnostic devices, and portable health monitoring devices that detect health
conditions and diseases in the nature of cancers, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases and genetic diseases;
Medical apparatus, devices, and instruments for the detection and identification of nucleic acids, namely, DNA and RNA in a sample, in the nature of apparatus for DNA and RNA testing for medical
purposes; Biological and chemical testing kits for personal wellness in the nature of diagnostic test kits consisting primarily of medical diagnostic reagents and assays for the detection of
cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, and genetic diseases; Medical diagnostic instruments for the
analysis of body fluids in the nature of biological and chemical test kits for the detection and identification of nucleic acids, namely DNA and RNA in a sample
Class 44 Medical services; Medical assistance; Medical consultations; Medical counseling; Medical information; Healthcare services in the field of digital healthcare services, namely, {specify type of healthcare services, e.g., treatment of patients with snoring and sleep apnea disorders}; Diagnostic services, namely, medical testing for diagnostic purposes; Wellness services, namely, providing wellness information in the nature of {specify the common commercial name for the services, e.g., providing a website featuring information regarding lifestyle wellness}; Medical services, medical assistance, medical consultations, medical counseling, medical information, healthcare testing in the nature of {specify common commercial name for the services, e.g., medical testing for treatment purposes}, {specify type of diagnostic testing, e.g., medical} diagnostic testing, and wellness services in the nature of {specify type of wellness services, e.g., providing medical testing of fitness and medical consultations to individuals to help them make health, wellness, and nutritional changes in their daily living to improve health}, all in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical testing services for the detection and identification of cells, proteins, small molecules, and nucleic acids in a sample in the nature of {specify common commercial name for the services, e.g., medical testing for diagnostic or treatment purposes}
Stylized wording indicates changes.
These suggestions are merely illustrative, not exhaustive of all the types of goods and/or services and proper classifications thereof which applicant might have intended to identify. These suggestions are based upon the examining attorney’s review of the application and determination of some of the goods and/or services applicant is most likely to offer. If applicant intended to identify goods and/or services other than those suggested above, applicant must so specify and classify these goods and/or services accordingly.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
REQUIREMENT FOR ADDITIONAL INFORMATION
Applicant failed to provide information responsive to questions 1 and 2.
In response to questions 1 and 2, applicant claims that its goods and services feature new technology and information regarding competing goods and/or services is not available. In that instance, applicant was required to provide “a detailed factual description of the goods and/or services.” Applicant stated only that “Applicant’s goods relate to a new and propriety technology which includes a physical device employing nanotechnology, chemistry, and biology to detect biomolecules and biochemical in various small volume samples, such as blood, urine, sweat, and condensate.” This one-sentence statement is conclusory and falls far short of the requirement. Moreover, it references only applicant’s goods and provides not explanation regarding the nature of applicant’s services. Applicant was warned in the previous Office action that conclusory statements would not satisfy this requirement.
Applicant must supply responses to these questions.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
SIGNATURE/SUBMISSION CONSTITUTES CERTIFICATION UNDER 37 C.F.R. §11.18(B) – ADVISORY
(1) All statements made in the document of the party’s own knowledge are true, all statements made on information and belief are believed to be true, and all statements made are made with the knowledge that, in any matter within the jurisdiction of the USPTO, any party who knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, is subject to the penalties under 18 U.S.C. §1001, including fines and imprisonment;
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the document is not being presented for any improper purpose;
(3) All allegations or other factual contentions in the document have evidentiary support or are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(4) All denials of factual contentions in the document are warranted on the evidence or are reasonably based on a lack of information or belief.
See 37 C.F.R. §11.18(b); TMEP §§302, 611.01(a).
Violating 37 C.F.R. §11.18(b) may jeopardize the validity of an application and any resulting registration, and may lead the USPTO to impose sanctions and/or take other appropriate actions under 37 C.F.R. §11.18(c), which may include the following: rejecting the relevant document or according it less probative value; referring the practitioner’s conduct to the USPTO’s Office of Enrollment and Discipline for possible disciplinary action; excluding the practitioner or other party from practicing before, or otherwise submitting documents to, the USPTO; and requiring a party to be represented by a qualified practitioner in any current or future trademark matters before the USPTO.
RESPONSE GUIDELINES
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 nonfinal Office action
/Dana Dickson/
Dana Dickson
Examining Attorney
Law Office 113
571.270.7552
Dana.Dickson@USPTO.gov
RESPONSE GUIDANCE
