To: | 4medica, Inc. (ch.tm@dlapiper.com) |
Subject: | U.S. Trademark Application Serial No. 88336715 - 4MEDICA BIG DATA MPI - 425437-4 |
Sent: | December 17, 2019 03:27:48 PM |
Sent As: | ecom112@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88336715
Mark: 4MEDICA BIG DATA MPI
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Correspondence Address:
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Applicant: 4medica, Inc.
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Reference/Docket No. 425437-4
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: December 17, 2019
This Office action is in response to applicant’s communication filed on 11/25/2019. This is a non-final action on the merits.
Pending applicant’s response, the requirement to disclaim the wording “BIG DATA MPI” apart from the mark is continued and maintained. TMEP §§1213, 1213.03(a).
SECTION 2(f) ACQUIRED DISTINCTIVENESS-IN PART – MARK NOT IN USE
In order to maintain this claim of distinctiveness in part as to BIG DATA MPI, applicant must satisfy the requirements specified below. See TMEP §1212.09(a)-(b).
ADDITIONAL INFORMATION REQUIRED FOR THIS RECORD
An intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) in part before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other services, by submitting evidence such as: (a) ownership of an active prior registration for the same mark for sufficiently similar or related services, (b) a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related services, or (c) actual evidence of acquired distinctiveness for the same mark with respect to the other services; and
(2) Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
Prima Facie Showing Insufficient – Additional Evidence of Distinctiveness Required
Here, applicant asserts a claim of acquired distinctiveness under Trademark Act Section 2(f) in part based on applicant’s prima facie showing of use of the wording “BIG DATA MIP” in commerce with related services for five years prior to the date on which the claim is made. See 15 U.S.C. §1052(f). However, as the attached and previously attached evidence demonstrates, applicant’s prima facie showing based on an allegation of five years’ use is insufficient to show acquired distinctiveness in part because the “big data MPI” is highly descriptive of a function of applicant’s services. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013); TMEP §1212.05(a).
Applicant may respond by providing additional evidence of acquired distinctiveness.
An applicant bears the burden of proving that a mark has acquired distinctiveness in part under Trademark Act Section 2(f). In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01. “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.
To support the claim of acquired distinctiveness, applicant may respond by submitting other evidence. See TMEP §1212.02(g). Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). A showing of acquired distinctiveness in part need not consider all of these types of evidence; no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, the determination involves assessing all of the circumstances involving the use of the mark. See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).
Showing of Likelihood of Transference of Distinctiveness Required
Moreover, applicant must also show, by submission of relevant evidence, a sufficient relationship between the services with which the wording “BIG DATA MPI” has acquired distinctiveness and the services recited in the instant intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the related services when use in commerce begins. In re Rogers, 53 USPQ2d 1741, 1745 (TTAB 1999).
Applicant may demonstrate this likelihood of transference in different ways; including, but not limited to, providing "results of focus groups and market surveys of prospective purchasers, and/or evidence regarding practices in the relevant industry." Id. at 1745 n.5.
If applicant cannot submit this additional evidence to support the claim of acquired distinctiveness in part, applicant may respond to the refusal by arguing in support of registration and/or submitting the required disclaimer of BIG DATA MPI. See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.
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.
Kimberly Boulware Perry
/Kimberly Boulware Perry/
Trademark Attorney, Law Office 112
571-272-9208 (direct)
kimberly.perry@uspto.gov
RESPONSE GUIDANCE