| To: | Spinal Elements, Inc. (gbradford@spinalelements.com) |
| Subject: | U.S. Trademark Application Serial No. 88446127 - METAL-LESS - TM0123A |
| Sent: | March 13, 2020 11:35:23 AM |
| Sent As: | ecom125@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 Attachment - 15 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88446127
Mark: METAL-LESS
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Correspondence Address:
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Applicant: Spinal Elements, Inc.
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Reference/Docket No. TM0123A
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: March 13, 2020
This Office action is in response to applicant’s communication filed on 02/19/2020.
In a previous Office action dated 08/19/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for a merely descriptive. In addition, applicant was required to satisfy the following requirements: provide additional information about the goods to consider potential deceptiveness.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided resolving issue of potential deceptiveness. 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
Applicant has applied to register the mark “METAL-LESS” in standard characters for “Medical devices, namely, spinal implants composed of primarily non-metal materials” in International Class 10.
Please see the previously attached dictionary definitions from Merriam-Webster Dictionary showing that the term “METAL” means “any of various opaque, fusible, ductile, and typically lustrous substances that are good conductors of electricity and heat, form cations by loss of electrons, and yield basic oxides and hydroxides” and the term “LESS” means “destitute of : not having”. The combination of these terms immediately conveys that applicant’s goods are made from artificial materials and not from metal.
In the context of applicant’s goods, the terms “METAL-LESS” describes a desirable characteristic of spinal implants. Please see previously attached screenshots from http://keatingdentalarts.com/products/delineator/, http://www.prettyshinybeads.com/product/white-metal-less-stud-earring/, and http://www.spiedigitallibrary.org/journals/journal-of-nanophotonics/volume-10/issue-02/026025/Metal-less-silicon-plasmonic-mid-infrared-gas-sensor/10.1117/1.JNP.10.026025.full?SSO=1 using the wording “METAL-LESS” to advertise and describe various non-metal goods. See also previously attached articles from http://www.southeasternspine.com/spine-implants-and-how-they-work/ and http://www.spinesurgerydoctor.com/treatments/spinal-implant.html describing the benefits of non-metal implants.
Moreover, applicant’s identification of goods stated that its “medical devices” will be “composed of artificial materials”. The mark “METAL-LESS” therefore merely describes a desirable characteristic of applicant’s goods.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services 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, “METAL-LESS” immediately conveys the impression that applicant’s goods are not made of metal. A term that describes the shape or form of a product is merely descriptive. In re Metcal Inc., 1 USPQ2d 1334 (TTAB 1986) (holding SOLDER STRAP merely descriptive of self regulating heaters in the form of flexible bands or straps); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982) (holding TOOBS merely descriptive of bathroom and kitchen fixtures in the shape of tubes). Furthermore, adding punctuation marks to a descriptive term will not ordinarily change the term into a non-descriptive one. In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1955 (TTAB 2018); TMEP §1209.03(u); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253-54, 103 USPQ2d 1753, 1757-58 (Fed. Cir. 2012). Therefore the use of the hyphen between the words “metal” and “less” do not obviate the descriptiveness of applicant’s mark. Please see also newly attached evidence from http://www.plumbmaster.com/plumbmaster-approved-metal-less-tie-washing-machine-lint-trap/p/36345?gclid=EAIaIQobChMIl_rbx8mX6AIVzYCfCh3AggOwEAkYAyABEgJrFfD_BwE and http://www.etsy.com/listing/527709795/foxy-fabric-badge-holder-metal-free?ga_order=most_relevant&ga_search_type=all&ga_view_type=gallery&ga_search_query=metal+less+lanyard&ref=sr_gallery-1-1 showing use of the terms “METAL LESS” to describe goods that do not contain metal.
Applicant argues that the applied-for mark is not merely descriptive, but instead suggestive of the applied-for goods. A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services. 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). Here, the evidence of record clearly establishes that “METAL-LESS” immediately informs consumers that its goods do not contain metal. No imagination is required.
In response to applicant’s argument that “METAL-LESS” is not common terminology, this fact, if true, does not obviate the potential descriptiveness of the wording. Even if an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive; as in this case, the previously attached evidence consisting of “disparate online uses” shows that “METAL-LESS” is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).
Additionally, although a mark does not have to be devoid of all meaning in relation to the goods, determining the descriptiveness of a mark is done in relation to an applicant’s goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.
A mark that comprises a “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods. TMEP §1213.05(c). However, the multiple meanings that make an expression a “double entendre” must be well-recognized by the public and readily apparent from the mark itself. See Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *8 (TTAB 2019); In re Calphalon Corp., 122 USPQ2d 1153, 1163-64 (TTAB 2017) (quoting TMEP §1213.05(c)). In this case, “METAL” is clearly not being used in its verb-form, as applicant suggests, because of the addition of “-LESS” which immediately states that the goods is without “METAL” as a noun. It is also clearly not a wordplay on the word “MEDDLE”. According to Merriam-Webster, “MEDDLE” means “to interest oneself in what is not one's concern : interfere without right or propriety”. See newly attached definition from http://www.merriam-webster.com/dictionary/meddle/. In the context of applicant’s goods, spinal implants, and with the addition of the word “-LESS”, this interpretation of the word “METAL” is highly unlikely. Also, “that a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). Moreover, applicant has proffered no evidence to establish that “MEDDLE-LESS” is a well-recognized expression. As such, the applied-for mark cannot be considered a double entendre.
It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought. In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §1209.03(a).
Additionally, examiner argues that the cited registrations are distinguishable from applicant’s mark in that none of the registrations required disclaimers or a 2(f) claim of acquired distinctiveness, meaning that all of those terms were deemed suggestive and not immediately descriptive in relation to the respective goods and services. In this case, applicant has agreed to amending its identification of goods in order to avoid deceptiveness, thereby conceding that the word “METAL” is immediately descriptive of a feature or desirable characteristic of applicant’s spinal implants.
In view of the above, the applied-for mark is merely descriptive of a feature or desirable characteristic of the applicant’s goods, and therefore, registration remains refused under Trademark Act Section 2(e)(1).
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).
Sasha Rios
/Sasha Rios/
Trademark Examining Attorney
Law Office 125
P: (571) 272-2616
Sasha.Rios@USPTO.GOV
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