Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  July 13, 2020

 

This Office action is in response to applicant’s communication filed on 6/14/2020.

 

Upon further review of the application record and consideration of applicant’s communication, the following requirement is maintained and continued: disclaimer requirement for “BIG DATA MPI”.  See 37 C.F.R. §2.63(b).

 

A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

 

SECTION 2(f) ACQUIRED DISTINCTIVENESS

 

Applicant has asserted a claim of acquired distinctiveness in part as to BIG DATA MPI under Trademark Act Section 2(f) based on use of this wording in commerce with the associated services for five years prior to the date on which the claim is made.  See 15 U.S.C. §1052(f).  In support thereof, applicant has provided an affidavit from Gregg Church, President of Applicant, as well as evidence of advertising, use and promotion of the of the phrase BIG DATA MPI  to “demonstrate that the relevant public understands the primary significance” of this phrase “as identifying the source of Applicant’s services”. See Response.  Such evidence is, however, not dispositive of an applicant’s claim of distinctiveness.  See 15 U.S.C. §1052(f).  Evidence of advertising and promotion may demonstrate applicant’s efforts to develop distinctiveness; but does not establish  that the mark has actually acquired distinctiveness.  See In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1757-58 (TTAB 1991).

 

 

Moreover, the Office has determined that the allegation of five years’ use is insufficient to show acquired distinctiveness in this case because, as shown by the attached evidence and evidence previously made of record,  the wording “BIG DATA MPI” appears to be generic in the context 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); In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *11-12 (TTAB 2019); TMEP §1212.05(a).  “Big Data” is the designation for a large volume of structured and unstructured data and “MPI” is an acronym for “master patient index”. See attached definitions.

 

 

A term is generic if the relevant public understands the term as referring to the category or genus of the goods and/or services in question.  In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); see TMEP §1209.01(c).  “[A] term [also] is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole.”  Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358, 1367-68, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018) (quoting In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“the term ‘pizzeria’ would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants”)). 

 

The test for determining whether an applied-for mark is generic is its primary significance to the relevant public.  Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553-54 (Fed. Cir. 1991) (citing In re Montrachet S.A., 878 F.2d 375, 376, 11 USPQ2d 1393-94 (Fed. Cir. 1989)).  Making this determination involves 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 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of the services may be defined by an applicant’s identification.  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 at 640, 19 USPQ2d at 1552); 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 services as “software in the field of healthcare for the purposes of collection, editing, organizing, modifying, book marking, storage, sharing, processing, and transmission of electronic health records; software as a service (SaaS) services featuring software for application and database integration in the healthcare field; software as a service (SaaS) services featuring software for controlling and managing patient medical information”;  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 and/or services.  The Loglan Inst. Inc. v. The Logical Language Grp., 962 F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises healthcare organizations who purchase applicant’s software for collection, editing, organizing, modifying, book marking, storage, sharing, processing, and transmission of big data in the healthcare field and for use in managing patient medical information, because there are no restrictions or limitations to the channels of trade or classes of consumers.  The attached evidence shows that this relevant public would understand that the wording “big data mpi” in the applied-for mark to refer primarily to that genus of services.  

 

It is well settled that “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.”  Id. at 1370, 127 USPQ2d at 1048 (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).

 

Therefore, although the application has been amended to seek registration on the Principal Register pursuant to a claim of distinctiveness in part under Trademark Act Section 2(f), applicant must  disclaim “big data mpi” because such wording appears to be generic in the context of applicant’s services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

Applicant may respond by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “BIG DATA MPI” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

To expedite approval, applicant is invited call or email the assigned trademark examining attorney to authorize entry of the required disclaimer via EXAMINER’S AMENDMENT. 

 

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

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 13, 2020 for

U.S. Trademark Application Serial No. 88336715

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Attorney, Law Office 112

571-272-9208 (direct)

kimberly.perry@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 13, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”