To: | Helius Medical, Inc (docketingpatentboston@proskauer.com) |
Subject: | U.S. Trademark Application Serial No. 88443666 - PONS - NHC-601B |
Sent: | August 26, 2019 05:48:24 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88443666
Mark: PONS
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Correspondence Address:
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Applicant: Helius Medical, Inc
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Reference/Docket No. NHC-601B
Correspondence Email Address: |
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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: August 26, 2019
REFUSAL - SECTION 2(e)(1) - MERELY DESCRIPTIVE
“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).
In this case, the applied-for mark is highly descriptive of applicant’s goods and services, namely, “providing downloadable software in the field of medical treatment for neurological symptoms and improvement of neurological condition using a device that provides electrical stimulation to the brain,” and “providing online, non-downloadable software in the field of medical treatment for neurological symptoms and improvement of neurological condition using a device that provides electrical stimulation to the brain.”
The attached evidence from merriam-webster.com, brainmadesimple.com, healthline.com, neuroscientificallychallenged.com, sciencedirect.com, study.com, and verywellhealth.com, shows the wording PONS means “the middle, and largest, segment of the brainstem and is located inferior to the cerebellum, with which it has important connections.” Additionally, applicant describes its goods and services as “providing downloadable software in the field of medical treatment for neurological symptoms and improvement of neurological condition using a device that provides electrical stimulation to the brain,” and “providing online, non-downloadable software in the field of medical treatment for neurological symptoms and improvement of neurological condition using a device that provides electrical stimulation to the brain” (emphasis added). Thus, the evidence demonstrates that the term PONS merely describes a feature of applicant’s goods and services, specifically the goods and services relate to the “medical treatment” for the PONS part of the brain, and consumers would immediately understand that that is a feature/characteristic/purpose of the goods and services.
Accordingly, the applied-for mark is refused as merely descriptive under Section 2(e)(1) of the Trademark Act.
ADVISORY SUPPLEMENTAL REGISTER
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
REQUIREMENT – AMEND THE IDENTIFICATION OF GOODS
Applicant may substitute the following wording, if accurate:
Class 9: Providing downloadable software in the field of medical treatment for treating neurological symptoms and improving of neurological condition using a device that provides electrical stimulation to the brain
Class 42: Providing online, non-downloadable software in the field of medical treatment for treating neurological symptoms and improving of neurological condition using a device that provides electrical stimulation to the brain
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.
Assistance
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 response to this nonfinal Office action
Solano, Carlita
/Carlita Jaye Solano/
Examining Attorney
Law Office 128
(571)270-0348
carlita.solano@uspto.gov
RESPONSE GUIDANCE