To: | Prellis Biologics, Inc. (trademarks@vierramagen.com) |
Subject: | U.S. Trademark Application Serial No. 88379375 - VASCULAR TISSUE BLANKS - PREL02002US0 |
Sent: | February 04, 2020 04:15:24 PM |
Sent As: | ecom121@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88379375
Mark: VASCULAR TISSUE BLANKS
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Correspondence Address: 2001 JUNIPERO SERRA BLVD., SUITE 515
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Applicant: Prellis Biologics, Inc.
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Reference/Docket No. PREL02002US0
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: February 04, 2020
This Office action is in response to applicant’s communication filed on December 20, 2019.
In a previous Office action dated June 28, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for being merely descriptive of applicant’s goods, and failure to show the applied-for mark in use in commerce with any of the specified goods. In addition, applicant was required to satisfy the following requirements: amend the identification of goods and provide information about applicant’s goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: definite amended identification provided, information about applicant’s goods provided. See TMEP §§713.02, 714.04.
The following refusal(s) have also been obviated: acceptable substitute specimens provided. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant argues that its product “does not include any actual vascular tissue, or any actual tissue or cells for that matter. Rather, applicant’s VASCULAR TISSUE BLANKS product is a printed biocompatible three-dimensional (3D) scaffold structure that can be seeded with cells (added by the customer) and cultured to grow the cells to form tissue. The VASCULAR TISSUE BLANKS product as sold and shipped does not include any cells, and thus, does not include any tissue when sold and shipped.” Thus, applicant’s product entails a blank, or a negative control specimen (see attached definition), to which the customer adds seeds in order to grow cells that form vascular tissue.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods 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. Specifically, the words VASCULAR TISSUE specifically describe the purpose of applicant’s goods—if the customer who buys applicant’s goods is successful, they will have grown cells that form tissue; in particular, vascular tissue, or, “an arrangement of multiple cell types in vascular plants which allows for the transport of water, minerals, and products of photosynthesis to be transported throughout the plant.” See attached evidence. Further, the concept of a “blank” or “blanks” merely describes a characteristic of feature of applicant’s product; namely, applicant’s products or scaffold structures are sold “blank”—devoid of tissues or cells until the customer adds its own cells to the culture to grown and form tissue, as applicant stated in its Response. Applicant should note that other entities refer to “tissue blanks.” The attached evidence from PubMed presents an abstract that discusses endogenous amine metabolites in tissues and states that analytical tissue blanks do not exist for endogenous metabolites. Even other entities which discuss applicant’s product refer to “tissue blanks” as actual things that can be described. The attached evidence from Fierce Biotech states “[applicant’s] blanks provide the underlying architecture that allows academic and pharmaceutical labs to grow their own larger tissues and organoids for study using a variety of different cell types such as neurons, stem cells, immune cells or tumor cells.” Emphasis added.
Applicant claims that its product would need to include actual tissue for the mark VASCULAR TISSUE BLANKS to be descriptive. This is not the case. “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371. In the present case, it is enough that the mark VASCULAR TISSUE BLANKS describes both a characteristic and purpose of applicant’s goods. Indeed, applicant’s amended identification of record indicates that applicant sells biological compatible material that can be seeded with cells and cultured to grow tissue for use in scientific and medical research and development. Thus, the stated purpose of applicant’s goods is to grow tissue and the composite VASCULAR TISSUE BLANKS is not suggestive, as applicant argues. A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods. See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a).
Therefore, the Trademark Act Section 2(e)(1) refusal is hereby maintained and made FINAL.
MANDATORY ELECTRONIC FILING RULES ADVISORY
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Uka Onuoha/
Examining Attorney
Law Office 121
(571) 270-5781
uka.onuoha@uspto.gov
RESPONSE GUIDANCE