To: | 180 Innovations LLC (docketing-dv@dorsey.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88309321 - FEVER ALARM - T280853.US.0 |
Sent: | 5/8/2019 4:28:04 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88309321
MARK: FEVER ALARM
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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: 180 Innovations LLC
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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: 5/8/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
REFUSAL – APPLIED-FOR MARK IS GENERIC
Registration is refused because the applied-for mark is generic for applicant’s goods. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127; see TMEP §§1209.01(c) et seq., 1209.02(b). Thus, applicant’s claim of acquired distinctiveness under Trademark Act Section 2(f) is insufficient to overcome the refusal because “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.” Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 989-90, 228 USPQ at 530; In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is generic requires a two-step inquiry:
(1) What is the genus of goods and/or services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of goods and/or services?
In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).
Regarding the first part of the inquiry, the genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services. See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).
In this case, the application identifies the goods as “An alert feature sold as a component of thermometers for medical purposes”, which adequately defines the genus at issue.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553). In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers. The attached evidence from, www.businessinsider.com, http://tempir.com, www.cimarronmedical.com, www.rockvillemedicalsupplies.com, http://momlovesbest.com, www.gurleysmedicalsupply.com, www.littlemartinsdrawer.com, and http://justhomemedical.com shows that the wording “fever alarm” in the applied-for mark means a thermometer component that alerts users when a fever is detected, i.e., when the thermometer detects a temperature above 99.5-100 degrees, and thus the relevant public would understand this designation to refer primarily to that genus of goods because a “fever alarm” is essentially an alert feature sold as a component of thermometers for medical purposes, applicant’s applied-for goods.
Accordingly, the mark FEVER ALARM is generic for applicant’s goods, and registration is properly refused under Trademark Act Sections 1, 2, and 45.
Applicant should note the following alternative ground for refusal.
REFUSAL IN THE ALTERNATIVE – APPLIED-FOR MARK IS MERELY DESCRIPTIVE
In the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then registration is refused because the applied-for mark is merely descriptive of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987). Determining whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Bayer AG, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 217-18 (C.C.P.A. 1978); TMEP §1209.01(b).
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).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.
The attached dictionary evidence from www.macmillandictionary.com and www.merriam-webster.com indicates the terms in applicant’s mark are defined as follows:
FEVER: “a medical condition in which the temperature of your body is very high and you feel sick”
ALARM: “a signal (such as a loud noise or flashing light) that warns or alerts”
Individually these terms describe the function of applicant’s goods, and the composite result does not create a nondescriptive meaning in relation to the goods. Consumers who encounter applicant’s mark will immediately presume that the mark is for a signal system that alerts you when the temperature of your body is very high.
The attached Internet evidence also demonstrates that the mark, FEVER ALARM, is merely descriptive of applicant’s goods. Specifically, the evidence shows the wording “fever alarm” used to describe components of thermometers that alert users when their body temperature reaches fever levels. Websites and webpages are generally a competent source for determining how the public perceives the mark in connection with applicant’s goods and/or services. See In re N.C. Lottery, 866 F.3d 1363, 1367-68, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986)); TMEP §1209.01(b).
Accordingly, the mark FEVER ALARM is merely descriptive of the function of applicant’s goods, and registration is properly refused on the Principal Register under Section 2(e)(1).
In addition, applicant’s claim of acquired distinctiveness in the application is a concession that the mark sought to be registered is merely descriptive of applicant’s goods. In re Leatherman Tool Grp., Inc., 32 USPQ2d 1443, 1444 (TTAB 1994); see Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).
APPLICANT’S EVIDENCE OF ACQUIRED DISTINCTIVENESS IS INSUFFICIENT
Applicant asserted in the application a claim of acquired distinctiveness under Section 2(f). See 15 U.S.C. §1052(f). The following evidence was provided in support of such claim: an allegation of five years’ use. See 37 C.F.R. §2.41.
If the applied-for mark is ultimately determined to be merely descriptive and not generic, the Section 2(f) evidence is insufficient to show acquired distinctiveness because, as the evidence of record demonstrates, the mark, FEVER ALARM, is highly descriptive of applicant’s goods and applicant has not provided evidence demonstrating that the relevant public understands the primary significance of the mark as identifying the source of a service rather than the service itself.
The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026, 2030 (TTAB 2010); TMEP §1212.01. An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; a more descriptive term requires more evidence. Royal Crown Co. v. Coca-Cola Co., 892 F.3d at 1365, 127 USPQ2d at 1045 (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).
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.
/Chioma (Bata) Oputa/
Examining Attorney
Law Office 103
(571) 272-5234
chioma.oputa@uspto.gov
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.