| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88336736 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88336736/mark.png |
| LITERAL ELEMENT | 4MEDICA BIG DATA IDENTITY ENRICHMENT |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
RESPONSE This is in response to the Office Action dated May 23, 2019. Reconsideration of this application is respectfully requested in view of the following remarks. REMARKS In the Office Action, the Examining Attorney requested a disclaimer of the term BIG DATA IDENTITY ENRICHMENT apart from the mark as shown. Applicant respectfully disagrees that a disclaimer of the phrase BIG DATA IDENTITY ENRICHMENT is necessary under the circumstances and submits that the phrase is suggestive of Applicant’s software services and not descriptive as alleged in the Office Action. Initially, Applicant notes that the Examining Attorney submitted, as evidence, three Internet articles. The second article references Applicant’s own mark being used as a trademark and, thus, does not show that the phrase BIG DATA IDENTITY ENRICHMENT is descriptive. The remaining two articles do not show that the average consumer would understand the phrase BIG DATA IDENTITY ENRICHMENT, as a whole, to be descriptive of software services or that the individual terms BIG, DATA, IDENTITY or ENRICHMENT are commonly disclaimed in trademark applications. An applicant may be required to disclaim an unregistrable component of an otherwise registrable mark. 15 U.S.C. §1056. According to TMEP §1213.03(a), “[t]ypically, an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, or matter that is merely descriptive or deceptively misdescriptive of the goods or services, or primarily geographically descriptive of them.” In the Office Action, the Examining Attorney states that the phrase BIG DATA IDENTITY ENRICHMENT is unregistrable as it is “merely descriptive of a quality, characteristic, function, feature, purpose, or use of applicant’s services.” A phrase is merely descriptive only if it “immediately describes” Applicant’s goods or services. In re Econoheat Inc., 218 U.S.P.Q. 381, 383 (TTAB 1983). For a phrase to be classified as “merely descriptive,” it must “immediately tell a potential customer what to expect in sum total of these concepts.” Holiday Inns, Inc. v. Monolith Enter., 21 U.S.P.Q. 949, 952 (TTAB 1981). However, if the phrase used provides vague or indirect information about the goods or services, then it is used in a “suggestive” manner. 2 J. Thomas McCarthy, McCarthy on Trademarks §11:19 (4th ed. 2002). See also Glamorene Products Corp. v. Boyle-Midway, Inc., 188 U.S.P.Q. 145 (S.D.N.Y 1975) (finding that the mark SPRAY ‘N VAC is not merely descriptive of a no scrub rug cleaner and stating “a mark is not merely descriptive unless descriptiveness is its principal significance. A mark is not descriptive if it merely suggests the nature or class of the product on which it is used”). In the instant case, the phrase BIG DATA IDENTITY ENRICHMENT does not immediately and directly describe the services Applicant provides in connection therewith. Specifically, it does not immediately convey the impression of software in the healthcare field. Thus, Applicant submits that BIG DATA IDENTITY ENRICHMENT is at least “suggestive” and, therefore, is registrable matter, not subject to a disclaimer. Furthermore, the fact that the individual terms BIG, DATA, IDENTITY and ENRICHMENT are common terms that may be considered descriptive in certain contexts does not mandate a finding that the composite phrase BIG DATA IDENTITY ENRICHMENT is merely descriptive when used in connection with Applicant’s services. See Concurrent Technologies, 12 U.S.P.Q.2d at 1057 (T.T.A.B. 1989) (CONCURRENT TECHNOLOGIES CORPORATION for electronic circuit boards is not a descriptive composite). It is well established that a combination of descriptive words may result in an arbitrary unitary term that may function as a trademark. Philip Morris Inc. v. R.J. Reynolds Tobacco Co., 207 U.S.P.Q. 451, 455 (TTAB 1980). In concluding that the term “SOFT SMOKE” was suggestive and not merely descriptive, the Board in Philip Morris noted that the term “SOFT SMOKE” suggests some characteristic of applicant’s smoking tobacco, but it is a “suggestion that may not be clear or immediately perceptible or even be the same for each user of applicant’s tobacco.” Id. at 456. The Philip Morris case is similar to the case at hand. The phrase BIG DATA IDENTITY ENRICHMENT may provide some suggestion of a feature of Applicant’s services, but because the terms do not immediately describe Applicant’s services, the suggestion is not clear, immediately perceptible or even the same for each potential consumer of Applicant’s services. Specifically, this phrase does not convey that Applicant provides software services in the healthcare industry. This is because neither BIG DATA IDENTITY ENRICHMENT as a composite, nor the individual terms BIG, DATA, IDENTITY or ENRICHMENT, bring to mind Applicant’s services. As such, BIG DATA IDENTITY ENRICHMENT cannot merely describe Applicant’s services. Furthermore, Applicant’s mark is a “coined” phrase created by Applicant. To Applicant’s knowledge, the phrase “BIG DATA IDENTITY ENRICHMENT” cannot be found in a dictionary, has no immediately understandable meaning to consumers and has not been used by anyone other than Applicant. As defined by J. Thomas McCarthy, “fanciful marks consist of ‘coined’ words that have been invented or selected for the sole purpose of functioning as a trademark.” 2 J. Thomas McCarthy, McCarthy on Trademarks §11:5 (4th ed. 2002). Applicant selected a unique combination of terms that results in a phrase “that has no prior use in the language.” Id. Indeed, the Examining Attorney has attached no evidence to the Office Action indicating that “BIG DATA IDENTITY ENRICHMENT” is a common phrase, or that it is a phrase that has been used in a descriptive manner. The phrase BIG DATA IDENTITY ENRICHMENT did not have any existence in the vernacular before Applicant coined it and it is at most suggestive, and not merely descriptive. Further, there is no indication that anyone in the same industry as Applicant would be harmed if Applicant is granted registration of its mark without a disclaimer of BIG DATA IDENTITY ENRICHMENT. Thus, registration of the mark 4MEDICA BIG DATA IDENTITY ENRICHMENT would not serve to preclude “fair use” of the individual words BIG, DATA, IDENTITY or ENRICHMENT by others. As such, competitors would not be unduly deprived by Applicant’s refusal to disclaim this phrase. See Concurrent Technologies, 12 U.S.P.Q. at 1058 (noting that the intent of Section 2(e)(1) is to protect the competitive needs of others-- that is, descriptive words must be left free for public use-- and because no one in the industry needs to use the word combination “Concurrent Technologies” to describe like products, it can be registered as a mark). Obviously, there is often a thin line of demarcation between a suggestive mark/phrase and a merely descriptive one, with the determination of which category it falls into frequently being a difficult matter involving a good measure of subjective judgment. Thus, doubts are to be resolved in favor of applicants. John Harvey & Sons, Ltd., 32 U.S.P.Q.2d 1451 (TTAB 1994). See also In Re Eidetics International, 1996 TTAB LEXIS 259 (August 21, 1996) (VIRTUAL RADAR not descriptive of flight training software). In light of this well-established principle, Applicant respectfully submits that it has made a strong showing as to why the phrase BIG DATA IDENTITY ENRICHMENT is at least suggestive of Applicant’s services and should not be disclaimed. CONCLUSION In view of the above arguments, the Applicant believes that its application is in condition for allowance, and an early publication date is respectfully requested.
|
|
| ATTORNEY SECTION (current) | |
| NAME | Gina Durham |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | DLA Piper LLP (US) |
| STREET | P.O. Box 64807 |
| CITY | Chicago |
| STATE | Illinois |
| POSTAL CODE | 60664-0807 |
| COUNTRY | US |
| PHONE | 312.368.4000 |
| FAX | 312.236.7516 |
| ch.tm@dlapiper.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 425437-4 |
| ATTORNEY SECTION (proposed) | |
| NAME | Gina Durham |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | DLA Piper LLP (US) |
| STREET | P.O. Box 64807 |
| CITY | Chicago |
| STATE | Illinois |
| POSTAL CODE | 60664-0807 |
| COUNTRY | United States |
| PHONE | 312.368.4000 |
| FAX | 312.236.7516 |
| ch.tm@dlapiper.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 425437-4 |
| OTHER APPOINTED ATTORNEY | Keith Medansky, Hilary H. Remijas, Michael A. Geller, Nicole A. Chaudhari and Eugenia Schontag |
| CORRESPONDENCE SECTION (current) | |
| NAME | Gina Durham |
| FIRM NAME | DLA Piper LLP (US) |
| STREET | P.O. Box 64807 |
| CITY | Chicago |
| STATE | Illinois |
| POSTAL CODE | 60664-0807 |
| COUNTRY | US |
| PHONE | 312.368.4000 |
| FAX | 312.236.7516 |
| ch.tm@dlapiper.com; nicole.chaudhari@dlapiper.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 425437-4 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Gina Durham |
| FIRM NAME | DLA Piper LLP (US) |
| STREET | P.O. Box 64807 |
| CITY | Chicago |
| STATE | Illinois |
| POSTAL CODE | 60664-0807 |
| COUNTRY | United States |
| PHONE | 312.368.4000 |
| FAX | 312.236.7516 |
| ch.tm@dlapiper.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 425437-4 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Nicole Chaudhari/ |
| SIGNATORY'S NAME | Nicole Chaudhari |
| SIGNATORY'S POSITION | Associate attorney, DLA Piper, IL bar member |
| SIGNATORY'S PHONE NUMBER | 312-368-4000 |
| DATE SIGNED | 11/22/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Nov 22 22:10:30 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.X.XX-201 91122221030157549-8833673 6-700f6906ca0996562352c87 86cb81286dbc8fa698571a1de 588b8c95a46fb5d1fb-N/A-N/ A-20191122220133079579 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
RESPONSE
This is in response to the Office Action dated May 23, 2019. Reconsideration of this application is respectfully requested in view of the following remarks.
REMARKS
In the Office Action, the Examining Attorney requested a disclaimer of the term BIG DATA IDENTITY ENRICHMENT apart from the mark as shown. Applicant respectfully disagrees that a disclaimer of the phrase BIG DATA IDENTITY ENRICHMENT is necessary under the circumstances and submits that the phrase is suggestive of Applicant’s software services and not descriptive as alleged in the Office Action. Initially, Applicant notes that the Examining Attorney submitted, as evidence, three Internet articles. The second article references Applicant’s own mark being used as a trademark and, thus, does not show that the phrase BIG DATA IDENTITY ENRICHMENT is descriptive. The remaining two articles do not show that the average consumer would understand the phrase BIG DATA IDENTITY ENRICHMENT, as a whole, to be descriptive of software services or that the individual terms BIG, DATA, IDENTITY or ENRICHMENT are commonly disclaimed in trademark applications.
An applicant may be required to disclaim an unregistrable component of an otherwise registrable mark. 15 U.S.C. §1056. According to TMEP §1213.03(a), “[t]ypically, an unregistrable component of a registrable mark is the name of the goods or services, other matter that does not indicate source, or matter that is merely descriptive or deceptively misdescriptive of the goods or services, or primarily geographically descriptive of them.” In the Office Action, the Examining Attorney states that the phrase BIG DATA IDENTITY ENRICHMENT is unregistrable as it is “merely descriptive of a quality, characteristic, function, feature, purpose, or use of applicant’s services.” A phrase is merely descriptive only if it “immediately describes” Applicant’s goods or services. In re Econoheat Inc., 218 U.S.P.Q. 381, 383 (TTAB 1983). For a phrase to be classified as “merely descriptive,” it must “immediately tell a potential customer what to expect in sum total of these concepts.” Holiday Inns, Inc. v. Monolith Enter., 21 U.S.P.Q. 949, 952 (TTAB 1981). However, if the phrase used provides vague or indirect information about the goods or services, then it is used in a “suggestive” manner. 2 J. Thomas McCarthy, McCarthy on Trademarks §11:19 (4th ed. 2002). See also Glamorene Products Corp. v. Boyle-Midway, Inc., 188 U.S.P.Q. 145 (S.D.N.Y 1975) (finding that the mark SPRAY ‘N VAC is not merely descriptive of a no scrub rug cleaner and stating “a mark is not merely descriptive unless descriptiveness is its principal significance. A mark is not descriptive if it merely suggests the nature or class of the product on which it is used”).
In the instant case, the phrase BIG DATA IDENTITY ENRICHMENT does not immediately and directly describe the services Applicant provides in connection therewith. Specifically, it does not immediately convey the impression of software in the healthcare field. Thus, Applicant submits that BIG DATA IDENTITY ENRICHMENT is at least “suggestive” and, therefore, is registrable matter, not subject to a disclaimer.
Furthermore, the fact that the individual terms BIG, DATA, IDENTITY and ENRICHMENT are common terms that may be considered descriptive in certain contexts does not mandate a finding that the composite phrase BIG DATA IDENTITY ENRICHMENT is merely descriptive when used in connection with Applicant’s services. See Concurrent Technologies, 12 U.S.P.Q.2d at 1057 (T.T.A.B. 1989) (CONCURRENT TECHNOLOGIES CORPORATION for electronic circuit boards is not a descriptive composite). It is well established that a combination of descriptive words may result in an arbitrary unitary term that may function as a trademark. Philip Morris Inc. v. R.J. Reynolds Tobacco Co., 207 U.S.P.Q. 451, 455 (TTAB 1980). In concluding that the term “SOFT SMOKE” was suggestive and not merely descriptive, the Board in Philip Morris noted that the term “SOFT SMOKE” suggests some characteristic of applicant’s smoking tobacco, but it is a “suggestion that may not be clear or immediately perceptible or even be the same for each user of applicant’s tobacco.” Id. at 456.
The Philip Morris case is similar to the case at hand. The phrase BIG DATA IDENTITY ENRICHMENT may provide some suggestion of a feature of Applicant’s services, but because the terms do not immediately describe Applicant’s services, the suggestion is not clear, immediately perceptible or even the same for each potential consumer of Applicant’s services. Specifically, this phrase does not convey that Applicant provides software services in the healthcare industry. This is because neither BIG DATA IDENTITY ENRICHMENT as a composite, nor the individual terms BIG, DATA, IDENTITY or ENRICHMENT, bring to mind Applicant’s services. As such, BIG DATA IDENTITY ENRICHMENT cannot merely describe Applicant’s services.
Furthermore, Applicant’s mark is a “coined” phrase created by Applicant. To Applicant’s knowledge, the phrase “BIG DATA IDENTITY ENRICHMENT” cannot be found in a dictionary, has no immediately understandable meaning to consumers and has not been used by anyone other than Applicant. As defined by J. Thomas McCarthy, “fanciful marks consist of ‘coined’ words that have been invented or selected for the sole purpose of functioning as a trademark.” 2 J. Thomas McCarthy, McCarthy on Trademarks §11:5 (4th ed. 2002). Applicant selected a unique combination of terms that results in a phrase “that has no prior use in the language.” Id. Indeed, the Examining Attorney has attached no evidence to the Office Action indicating that “BIG DATA IDENTITY ENRICHMENT” is a common phrase, or that it is a phrase that has been used in a descriptive manner. The phrase BIG DATA IDENTITY ENRICHMENT did not have any existence in the vernacular before Applicant coined it and it is at most suggestive, and not merely descriptive.
Further, there is no indication that anyone in the same industry as Applicant would be harmed if Applicant is granted registration of its mark without a disclaimer of BIG DATA IDENTITY ENRICHMENT. Thus, registration of the mark 4MEDICA BIG DATA IDENTITY ENRICHMENT would not serve to preclude “fair use” of the individual words BIG, DATA, IDENTITY or ENRICHMENT by others. As such, competitors would not be unduly deprived by Applicant’s refusal to disclaim this phrase. See Concurrent Technologies, 12 U.S.P.Q. at 1058 (noting that the intent of Section 2(e)(1) is to protect the competitive needs of others-- that is, descriptive words must be left free for public use-- and because no one in the industry needs to use the word combination “Concurrent Technologies” to describe like products, it can be registered as a mark).
Obviously, there is often a thin line of demarcation between a suggestive mark/phrase and a merely descriptive one, with the determination of which category it falls into frequently being a difficult matter involving a good measure of subjective judgment. Thus, doubts are to be resolved in favor of applicants. John Harvey & Sons, Ltd., 32 U.S.P.Q.2d 1451 (TTAB 1994). See also In Re Eidetics International, 1996 TTAB LEXIS 259 (August 21, 1996) (VIRTUAL RADAR not descriptive of flight training software). In light of this well-established principle, Applicant respectfully submits that it has made a strong showing as to why the phrase BIG DATA IDENTITY ENRICHMENT is at least suggestive of Applicant’s services and should not be disclaimed.
CONCLUSION
In view of the above arguments, the Applicant believes that its application is in condition for allowance, and an early publication date is respectfully requested.