To: | Sinclair Pharmaceuticals Limited (tmparalegal3@owe.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88303206 - MICRO-SUSPENSION TECHNOLOGY - GILSI 00021 |
Sent: | 5/6/2019 12:47:55 PM |
Sent As: | ECOM110@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 Attachment - 36 Attachment - 37 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88303206
MARK: MICRO-SUSPENSION TECHNOLOGY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Sinclair Pharmaceuticals Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/6/2019
REFUSAL BASED ON DESCRIPTIVENESS – TRADEMARK ACT SECTION 2(e)(1)
The examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of the identified goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
In this case, applicant’s mark, “MICRO-SUSPENSION TECHNOLOGY” is a descriptive characteristic of the goods. The applicant’s goods are “Sutures, suture needles and suture threads for cosmetic and reconstructive procedures; sutures for wound closure, tissue approximation, tissue support, suspension and fixation, and installation needles therefor.” The applicant’s mark merely describes a feature, quality or characteristic of applicant’s goods. “MICRO-” is defined as “small: minute//microcapsule”. www.merriamwebster.com. “TECHNOLOGY” is defined as “the practical application of knowledge especially in a particular area: engineering sense//medical technology.” Id. Referring to the term “suspension sutures” is common. The excerpted evidence from the GOOGLE research database, retrieved on May 6, 2019, shows that the term “suspension” with regard to “sutures” appeared 14,500 times. www.GOOGLE.com. Only a representative sampling of hits is attached because of the large number of hits responsive to the search request and the duplicative or irrelevant nature of some of the stories. The evidence demonstrates that the term “suspension” is frequently used to describe a type of sutures. For example, “While some authors have advocated for nonabsorbable clear monofilament suture to provide a lasting suspension effect, in general absorbable suture material is adequate and may mitigate some of the concerns related to leaving a nonabsorbable foreign body in place for an extended period of time.” http://accessemergencymedicine.mhmedical.com/content.aspx?bookid=2076§ionid=156454021; “Suspension sutures are used to fix the closure line at the junction of cosmetic units, to prevent distortion of free margins secondary to wound contraction (e.g., ectropion or eclabium), to reform a fold that would be obliterated by the motion of tissue, and to prevent tenting across concavities,” http://www.ncbi.nlm.nih.gov/pubmed/12656818. In this case, the applicant’s goods are small suspension sutures using medical technology, therefore, each term in the proposed mark describes a characteristic of the goods.
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” 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. Each term in the proposed mark describes a characteristic of the goods the entire mark is descriptive based on Trademark Act Section 2(e)(1).
Joining the word “MICRO-SUSPENSION” to “TECHNOLOGY” does not change the meaning of TECHNOLOGY, it merely further describes a characteristic of the goods. Thus, the proposed mark is descriptive.
Finally, there is nothing incongruous or indefinite about the term “MICRO-SUSPENSION TECHNOLOGY.” Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for a significant portion of the purchaser’s of applicant’s goods to readily perceive the merely descriptive significance of the mark as it relates to “Sutures, suture needles and suture threads for cosmetic and reconstructive procedures; sutures for wound closure, tissue approximation, tissue support, suspension and fixation, and installation needles therefor.” Such significance in regard to the proposed mark would be immediately apparent. In re Gould Paper Corp., 5 USPQ2d 1110, 1112 (Fed. Cir. 1987).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
SUPPLEMENTAL REGISTER ADVISORY
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
SEARCH OF THE RECORDS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
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.
/Caroline E. Wood/
Examining Attorney
Law Office 110
571-272-9243
caroline.wood@uspto.gov
(responses are not accepted via e-mail)
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.