Response to Office Action

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)

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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 to Office Action

To the Commissioner for Trademarks:

Application serial no. 88365649 ABCLOSE(Standard Characters, see http://uspto.report/TM/88365649/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

ABCLOSE

Application Serial No. 88365649

Your Ref.:  DO-00350-20190002US; Our Ref.:  4461/0130TUS1

Section 2(e)(1) Issue

The Examining Attorney has initially refused registration on the grounds that the mark is merely descriptive of Applicant’s services.  For the following reasons, the position of the Examining Attorney is respectfully traversed.

In order to be descriptive, the mark must immediately convey information as to the goods with a “degree of particularity.”  Plus Products v. Medial Modalities Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB 1981); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949, 952 (TTAB 1981).  It has not been shown that the mark would be immediately perceived by potential purchasers as descriptive of the services.  As stated in In re Intelligent Medical Systems, Inc., 5 USPQ2d 1647, 1675 (TTAB 1987) (INTELLIGENT MEDICAL SYSTEMS not merely descriptive of electronic thermometers), “[T]he word ‘merely’ in Section 2(e)(1) ‘means that if the mark clearly does not tell the potential customer only what the goods (“services”) are, their function, characteristics, use or ingredients, then the mark is not ‘merely descriptive.’”  1 McCarthy, Trademarks and Unfair Competition, Section 11:18 at p. 481 (2d Ed. 1984).  The subject mark does not describe the goods with any degree of particularity. 

The mark is not subject to one understood meaning in relation to Applicant’s goods.  It is not a term of art in the field.  The mark is vaguely suggestive of a device that could be used in surgery.  However, the proscription of Section 2(e)(1) is meant to apply to “those terms that possess nothing more than a descriptive significance or, immediately without the need for conjecture or surmise, describe an essential attribute of the services in connection with which they are used.”   In e Hunter Publishing Co., 204 USPQ 957, 962 (TTAB 1979).  As the mark does not immediately convey a single readily understood meaning with respect to Applicant’s services, it is submitted that the mark is suggestive and not merely descriptive.

The Examining Attorney relies on dictionary definitions of the individual terms in the mark.  However, when two or more descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression.  Applicant maintains that the subject mark is more than the sum of its parts.  The mark is incongruent being comprised of two components that are not generally seen together.   As such, when considered as a whole, it conveys a commercial impression of something  to assist with surgical goods.

A mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow removal hand tool).  TMEP § 1209.03(d).

A mark which combines usually descriptive elements may result in a composite which is non-descriptive.  In re Warner Electric Brake and Clutch Co., 154 USPQ 328 (TTAB 1967) (ELECTRO-MODULE held not descriptive of electro-magnetic brakes); Firestone Tire and Rubber Co. v. Goodyear Tire and Rubber Co., 186 USPQ 557 (TTAB 1975), aff’d 189 USPQ 348 (CCPA 1976) (BIASTEEL for steel belted bias tire held only suggestive, not descriptive).  Thus the composite mark here, viewed in its entirety, is analogous to the referenced marks and is not merely descriptive.

Further, all results of the Google keyword search for the mark attached in the evidence section of the Response point to the Applicant, thus supporting Applicant’s position that the combined and telescoped words are more than sum of their parts and that they function primarily as a source identifier.

The term of the trademark “AbClose” is not clearly related to the designated goods, such as suture needles; thread, surgical; suture materials; surgical apparatus and instruments; suture apparatus for medical purposes; hemostatic suture instruments; medical apparatus and instruments. Therefore, the mark “AbClose” is distinctive enough to be registered. Further, the mark “Abclose” is already registered in the European Union and in Taiwan. Please see attached.

When there is any doubt as to whether a mark is suggestive or merely descriptive, the Board has repeatedly held that the doubt should be resolved in Applicant’s favor, and the mark should be published for opposition.  In re Aid Laboratories, Inc., 221 USPQ 215 (TTAB 1983).

For the foregoing reasons, Applicant respectfully requests that he refusal pursuant to Section 2(e)(1) of the Trademark Act be withdrawn.

EVIDENCE
Evidence in the nature of Website excerpts, brochures, Foreign Registration. has been attached.
JPG file(s):
Evidence-1
Original PDF file:
evi_208185139113-20191216131028401279_._2019-12-09_Google_Keyword_Search.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_208185139113-20191216131028401279_._2019-12-06-AbClose-Brochure.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_208185139113-20191216131028401279_._2019-12-06-AbClose_-_Certificate_of_Registration_314789-EM.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_208185139113-20191216131028401279_._2019-12-04-AbClose-Brochure.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Suture needles; thread, surgical; suture materials; surgical apparatus and instruments; suture apparatus for medical purposes; Hemostatic suture instruments; medical apparatus and instruments
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Taiwan application number 108019749 filed 04/01/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Suture needles; thread, surgical; suture materials; surgical apparatus and instruments; suture apparatus for medical purposes; suture apparatus for medical purposes, namely, suture anchors, suture needles, suture materials, suture needle holders, suture passers; Hemostatic suture instruments; medical apparatus and instruments; medical apparatus and instruments for laparoscopic port site closureClass 010 for Suture needles; thread, surgical; suture materials; surgical apparatus and instruments; suture apparatus for medical purposes, namely, suture anchors, suture needles, suture materials, suture needle holders, suture passers; Hemostatic suture instruments; medical apparatus and instruments for laparoscopic port site closure
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Taiwan application number 108019749 filed 04/01/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Joe McKinney Muncy. Joe McKinney Muncy of MUNCY, GEISSLER, OLDS & LOWE, P.C., is located at

      SUITE 310
      4000 LEGATO ROAD
      FAIRFAX, Virginia 22033
      US
The docket/reference number is 4461/0130TUS.

The phone number is 703-621-7140.

The fax number is 703-621-7155.

The email address is mailroom@mg-ip.com

The applicants proposed attorney information: Joe McKinney Muncy. Other appointed attorneys are P. Jay Hines. Joe McKinney Muncy of MUNCY, GEISSLER, OLDS & LOWE, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 310
      4000 LEGATO ROAD
      FAIRFAX, Virginia 22033
      United States
The docket/reference number is 4461/0130TUS.

The phone number is 703-621-7140.

The fax number is 703-621-7155.

The email address is mailroom@mg-ip.com

Joe McKinney Muncy submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JOE MCKINNEY MUNCY. JOE MCKINNEY MUNCY of MUNCY, GEISSLER, OLDS & LOWE, P.C., is located at

      SUITE 310
      4000 LEGATO ROAD
      FAIRFAX, Virginia 22033
      US
The docket/reference number is 4461/0130TUS.

The phone number is 703-621-7140.

The fax number is 703-621-7155.

The email address is mailroom@mg-ip.com

The applicants proposed correspondence information: Joe McKinney Muncy. Joe McKinney Muncy of MUNCY, GEISSLER, OLDS & LOWE, P.C., is located at

      SUITE 310
      4000 LEGATO ROAD
      FAIRFAX, Virginia 22033
      United States
The docket/reference number is 4461/0130TUS.

The phone number is 703-621-7140.

The fax number is 703-621-7155.

The email address is mailroom@mg-ip.com

SIGNATURE(S)
Response Signature
Signature: /pjh/     Date: 12/17/2019
Signatory's Name: P. Jay Hines
Signatory's Position: Counsel, Virginia bar memeber No. 34772

Signatory's Phone Number: 703-621-7140

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JOE MCKINNEY MUNCY
   MUNCY, GEISSLER, OLDS & LOWE, P.C.
   SUITE 310
   4000 LEGATO ROAD
   FAIRFAX, Virginia 22033
Mailing Address:    Joe McKinney Muncy
   MUNCY, GEISSLER, OLDS & LOWE, P.C.
   SUITE 310
   4000 LEGATO ROAD
   FAIRFAX, Virginia 22033
        
Serial Number: 88365649
Internet Transmission Date: Tue Dec 17 15:14:52 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191217151452
079396-88365649-700496b80ae2ce1aab24c54d
d8eccf1b8719747ed94ac6c93b61f17cc678a2bc
b-N/A-N/A-20191217150838593383