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 04, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Refusal To Register—Surname

 

Registration is refused because the applied-for mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211. 

 

An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and/or services, “‘is the primary significance of the mark as a whole to the purchasing public.’”  Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.

 

The following five inquiries are often used to determine the public’s perception of a term’s primary significance:

 

(1)       Whether the surname is rare;

 

(2)       Whether anyone connected with applicant uses the term as a surname;

 

(3)       Whether the term has any recognized meaning other than as a surname;

 

(4)       Whether the term has the structure and pronunciation of a surname; and

 

(5)       Whether the term is sufficiently stylized to remove its primary significance from that of a surname.

 

In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985). 

 

These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination.  In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01.  For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry.  In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.

 

Please see the attached evidence from an online directory establishing the surname significance of McKesson.  This evidence shows the applied-for mark appearing over 100 times as a surname in a nationwide phone directory of names. 

 

In order to overcome this refusal, applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). To amend the application to assert Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f), provide information regarding the length of use of the mark in commerce and/or dates of use, and include the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

 

TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08.  Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

Identification of Goods and Services

 

The highlighted wording in the identification of goods and services is vague and/or combines services from more than one International Class. Applicant must specify the exact nature of the goods and/or services using the common commercial name.

 

Applicant must clarify the highlighted wording in Class 010 of the identification of goods for its full line of medical equipment and supplies because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(c).  This wording is indefinite and could include goods in other international classes.  The USPTO accepts identifications that refer to “a full line of” a genre of medical goods in Class 010 only if those goods can be classified in a single international class.  TMEP §1402.03(c). 

 

“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].”  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01. An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.  The applicant must specify the exact nature of the services using the common commercial name.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

As a general rule, applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The following identification of goods and services is suggested, if accurate:

 

Personal hygiene and personal care products, namely toothpaste, denture cleansers, non-medicated mouthwash, fluoride varnish, namely, [specify exact nature of goods, e.g. topical tooth gel, tooth whitening preparations, etc.]; personal deodorants and antiperspirants, baby oil, body wash, shampoo, perineal body wash, [specify type, e.g. skin, anti-aging, etc.] moisturizers, skin creams, skin cleansers, pre-moistened disposable wipes impregnated with cleansing compound for use on (specify area), baby wipes impregnated with cleaning preparations, baby powder, shaving cream, shaving gel, ear wash systems comprising (specify key components of the system, e.g. non-medicated ear cleaning washes), etc.], in Class 003.

 

Incontinence diapers; incontinence pads; incontinence garments; disposable baby diapers; incontinence liners in the nature of guards; personal lubricating jelly; medicated skin care preparations, namely comprehensive solutions in the nature of antimicrobial body cleansers and soaps, creams, moisturizers, skin [specify exact nature of goods, e.g. skin lotions, skin creams], powders, [specify type of “barriers”], antifungal creams and powders; antiseptic skin cleanser; hydrogen peroxide for medical use; isopropyl rubbing alcohol; antimicrobial soap; antibacterial soap; alcohol treated disinfecting wipes for use as prep pads; medical saline solution; sterile water, namely, [specify exact nature of goods, e.g. sea water for medical bathing, medicated water for the treatment of (specify), etc.]; silver nitrate for medical purposes sold in applicators; medical ultrasound gel; topical pain relief medication in the form of a spray; over-the-counter pain relief medication in the form of tablets; acetaminophen; aspirin; ibuprofen for use as an oral analgesic; medicated cleansers for wounds and skin; all-purpose surface disinfectants; cleansers and disinfectants for cleaning medical instruments; wound care products, namely, dressings, adhesive bandages, medical adhesive tape and surgical tape, gauze sponges, cotton balls for medical purposes, medical adhesive take in the nature of dressing retention tape, , Gauze dressing in the nature of unna boots, adhesive remover wipes, namely, [specify exact nature of goods, e.g. anti-adhesion gels for medical use, etc.], tubular bandages for dressings, elastic bandages for dressings, self-adhesive dressings, conforming bandages for dressings, eye protectors, namely, [specify goods, in Class 005, e.g. eye compresses, eye patches for medical purposes, etc.], cotton swabs for medical use in the nature of swab sticks, retainer dressings, namely, [specify goods, e.g. sterilized dressing, burn dressing, etc.], non-adherent dressings, namely, [specify goods], medical eye pads, foam dressings for [specify area of use, e.g. burns, wounds, etc.], silicone foam dressings for [specify area of use], hydrocolloid medical dressings, medical xeroform petrolatum dressings, medical impregnated dressings, medical hydrogel dressings, medical calcium alginate dressings, gauze for use as wound packing strips, transparent medical film dressings, medical barrier island dressings, medical contact layer dressings and medical collagen dressings; hand sanitizer gels, in Class 005.

 

Disposable razors, razor blades; nail clippers; Emory Boards; Eating and drinking utensils, namely spoons, forks, knives for use as tableware, in Class 008.

Batteries, in Class 009.

 

House mark for a full line of medical and surgical products, equipment, and supplies, namely, medical staff apparel in the nature of surgical scrub tops and pants and patient treatment apparel consisting of surgical gowns, procedure gowns, exam gowns, compression stockings, slipper socks, surgical and procedure masks, procedure masks with eye shields, shoe covers, head covers, protective sleeves, lab coats, face shields, and protective glasses; medical exam and surgical gloves; glove box holders and dispensers designed for medical use; containers for sharps and medical waste; incontinence bed pads and underpads; ostomy barrier pastes and powders; ostomy appliance deodorant; ostomy barriers; cold and hot compresses, namely, [specify nature of goods, e.g. therapeutic hot and cold compression wraps, chemically activated hot and/or cold compresses, etc.]; sphygmomanometers; stethoscopes; blood pressure cuffs; pulse oximeters; lancets; glucose monitoring systems comprising devices for monitoring blood glucose for medical purposes; glucose test strips; lancets; EKG electrodes; suction connector tubing and suction tubes for [specify purpose, e.g. medical ventilators, etc.]; surgical instruments; ambulatory products, namely orthopedic walkers, rollators, crutches, medical canes, and accessories and replacement parts thereof; bath safety products designed exclusively for medical use, namely bath benches, bath stools; bath transfer benches, raised toilet seats, handheld showerheads, commodes, commode pails; toilet safety frames, grab bars, bathtub grab bars, and bath mats; transfer equipment and accessories for patient treatment, namely patient lifts, patient slings, and gait belts; exercise peddlers for therapeutic purposes; reaching aids for use in patient treatment; IV poles; IV start kits; respiratory products, namely anesthesia circuits, oropharyngeal airways, laryngeal mask airways, respiratory masks, nasal cannulas, nebulizers, nebulizer filters, humidifiers, tracheostomy care trays, resuscitator masks, mouthpieces, and oxygen tubing; sterilization wraps; sterilization indicators; urological products, namely catheters, catheter trays, urinary leg bags, urinary drain bags, urinary drain bag holders, bedpans; urinals, and irrigation trays; fall prevention monitors; clinical laboratory products, namely lab caps and closures, laboratory glassware and plasticware, tubes, blood collection tubes, microscope slides, pipettes, beakers and bottles, specimen collection and transport containers, blood collection needles; specimen collection devices, diagnostic test kits, urinalysis controls, centrifuges, clinical analyzers, microscopes, and incubators; cryotherapy treatment kits; medical drapes, procedure drapes, and medical equipment covers; seat cushions for therapeutic purposes; rehabilitative and physical therapy devices, namely manually operated exercise bands and hand putty; orthopedic products, namely splints, heel protectors, elbow protectors, casting roll form splints, cast protectors, arm slings, cast tape, ankle walker boots, and foot pads; medical furniture, namely exam stools, exam tables, recliners, blood drawing chairs, overbed tables, utility carts, and instrument stands; biohazard bags; emesis bags; patient belongings bags; tourniquets; speculums; tongue depressors; pill and tablet cutters and crushers; gravity feeding bags; syringes; needles; syringes with needles; medical measurement tape; medical chart holders; pill envelopes; wound closure products, namely sutures, suture removal kits, skin closure strips, skin staple removal kits, skin adhesive, and wound staplers; Compression bandages, abdominal pads, surgical sponges, medical trays in the nature of dressing change trays; medical wound measuring devices; [specify type, e.g. medical, clinical, etc.] thermometers and thermometers sheaths adapted for use with medical thermometers, commode chairs; laundry bags in the nature of bags for medical waste; in Class 010.

 

Sitz baths; showerheads, in Class 011.

            Wheelchairs, in Class 012.

 

ECG paper; toilet paper; facial tissue; medical examination table paper; trash bags and liners, in Class 016.

 

Mattresses, in Class 020.

 

Toothbrushes; combs; hair picks; hair brushes; nail brushes; eating and drinking utensils, namely, cups, and drinking straws; dispensers for liquid soaps; paper towel dispensers for household use; hygiene dispensing stations, namely, [specify exact nature of goods, e.g. manually actuated pump dispensers for attachment to containers for use in dispensing liquids, dispensers for liquid soap, etc.]; toilet paper dispensers, in Class 021.

 

Towels, [specify type, e.g. wool, silk, pet, etc.]; blankets, bed sheets, pillowcases, mattress overlays, namely, mattress pads, and washcloths, in Class 024.

 

Providing health information technology and care management tools, namely, [specify exact nature of services in Class 042], in Class 042.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Specimen Does Not Show Use With Services (Classes 042 or 044)

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Classes 042 or 044 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  The services that are currently classified in Class 044, namely, “distributorships” and “health information technology and care management tools” are misclassified in Class 044.  Consequently, the application does not appear to contain services which are typically offered in Class 044. 

 

Moreover, applicant’s “health care services, namely, distributing pharmaceutical products, medical and surgical supplies, personal care, and health and beauty products” are not registrable services. To be a registrable service, the activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “distribution” normally refers to selling one’s own goods or services and is not a registrable service rendered for the benefit of others.  See TMEP §§1301.01(a)(ii), 1402.11.  In this case, the specimen shows that the services identified in the application refer to the distribution of applicant’s own goods.

 

Finally, the specimen does not show the mark being used as a source identifier for health information technology services and tools. The specimen provides general information about the applicant’s corporate entity.  However, it does not show the mark being used in connection with the sale or advertising of specific services to the general public. Therefore, the specimen is not acceptable for Class 042.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Specimen Does Not Show Use—Fill Line of Products

 

The application indicates applicant is using its mark on a “full line” of goods in Class 010; however, the required evidence of use on a full line of such goods has not been provided.  Because full line marks are used on such a large number and/or variety of goods, an applicant is required to provide evidence of applicant’s use of the mark on a majority of the goods of this type, e.g. a full line of medical treatment apparel, a full line of wearing apparel, a full line of medical glove boxes, etc.  TMEP §1402.03(c); see 37 C.F.R. §2.61(b).  Thus, applicant must provide evidence of such use by submitting product catalogs or similar material including advertising and promotional materials and webpages, showing use of the mark for a full line of each of the products identified in Class 010.  TMEP §1402.03(c). 

 

Failure to establish sufficient broad use may result in refusal of registration.  See In re Astra Merck Inc., 50 USPQ2d 1216, 1219 (TTAB 1999) (use of the mark on only three products was insufficient to show use for a “full line” of products); TMEP §1402.03(c).  If applicant does not provide such evidence, applicant must amend the identification to (1) delete “full line of” and (2) specify the common commercial or generic name for each good, if not already specified.  See TMEP §1402.03(c).  If applicant is providing a full line of a subset of a genre of goods or services, applicant may amend applicant’s identification to indicate that subset (e.g., a full line of sports clothing).

 

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Saima Makhdoom/

Law Office 101

U.S. Patent and Trademark Office

Tele: (571) 272-8802

Fax: (571) 273-8802

E-Mail: saima.makhdoom@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 04, 2019 for

U.S. Trademark Application Serial No. 88411765

 

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. 

 

 

/Saima Makhdoom/

Law Office 101

U.S. Patent and Trademark Office

Tele: (571) 272-8802

Fax: (571) 273-8802

E-Mail: saima.makhdoom@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 04, 2019, 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.”