Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NEW 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:  March 06, 2020

 

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on September 13, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal:  refusal of Section 2(f) claim of acquired distinctiveness.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated September 13, 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.  

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•        NEW ISSUE:  Refusal – Section 2(f) in Part

•        Refusal – Section2(e)(1) – Merely Descriptive (Maintained and Modified)

•        Advisory – Supplemental Register

 

Applicant must respond to all issues raised in this Office action and the previous September 13, 2019, Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

REFUSAL – SECTION 2(f) IN PART

Applicant asserted a claim of in part acquired distinctiveness under Trademark Act Section 2(f) as to the term PHYSICIANS based on a claim of ownership of an active prior registration(s).  See 15 U.S.C. §1052(f).  However, applicant’s claim of ownership of such registration(s) is insufficient evidence of acquired distinctiveness because the mark is highly descriptive of the goods and/or services.  See In re Loew’s Theatres, Inc., 769 F.2d 764, 769-70, 226 USPQ 865, 869 (Fed. Cir. 1985); TMEP §1212.04(a).  An applicant’s evidentiary burden of showing acquired distinctiveness increases with the level of descriptiveness of the mark sought to be registered; as in this case, a more descriptive term requires more evidence.  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  As the mark in this case is highly descriptive, applicant’s prior registration is not sufficient to show acquired distinctiveness.

 

Additionally, applicant’s claim of acquired distinctiveness based on U.S. Registration No. 3113571 PHYSICIANFAST does not apply to the instant case because the registration does not contain the term PHYSICIANS, and therefore the marks are different.  Accordingly, the instant refusal applies to the claim of acquired distinctiveness based on U.S. Registration Nos. 1341585 and 4908050 for PHYSICIANS WEIGHT LOSS CENTERS.  Please note that 1341586 for PHYSICIANS WEIGHT LOSS CENTERS is listed as being cancelled December 4, 1991. 

 

Furthermore, even if the U.S. Registration Nos. 1341585 and 4908050 for PHYSICIANS WEIGHT LOSS CENTERS were acceptable in a claim of acquired distinctiveness, this would not be sufficient to cover all the goods and services in the application because there is nothing on the record to establish the relatedness between the Class 44 services covered by the registrations and the Class 5 goods listed in the application.

 

Applicant is advised that the similarity or relatedness of the goods and/or services in the prior registration(s) and the Class 5 goods in instant application is not self-evident and therefore applicant’s Section 2(f) claim is not acceptable without additional information.  See 37 C.F.R. §2.61(b); TMEP §1212.04(c). 

 

Although an applicant’s ownership of one or more active prior registrations of the same mark may be sufficient for a prima facie showing of acquired distinctiveness, the prior registration(s) must be for sufficiently similar or related goods and/or services such that distinctiveness will transfer to the goods and/or services in the application.  See 37 C.F.R. §2.41(a)(1); In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999) (citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1405, 222 USPQ 939, 942 (Fed. Cir. 1984)); TMEP §§1212.04, 1212.04(c).

 

Therefore, applicant would need to submit evidence and an explanation as to how the goods and/or services in the claimed active prior registration(s) are similar or related to the goods and/or services in the application such that distinctiveness will transfer to the goods and/or services in the application.  See 37 C.F.R. §2.61(b); Bausch & Lomb, Inc. v. Leupold & Stevens, Inc., 6 USPQ2d 1475, 1477-78 (TTAB 1988); TMEP §1212.04(c).

 

Applicant may respond by providing additional evidence of acquired distinctiveness.  See TMEP §1212.04(a).  When determining whether the evidence shows the mark has acquired distinctiveness, the trademark examining attorney will consider the following six factors:  (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage.  See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse factors”).  “[N]o single factor is determinative.”  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424.  This evidence must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of applicant’s product or service rather than identifying the product or service itself.  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.

 

As well as submitting additional evidence, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal.  TMEP §816.04.

 

 

REFUSAL - SECTION 2(e)(1) - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a feature/characteristic/purpose of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); 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).  “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).

 

Here, applicant’s mark is PHYSICIANS KETO RX for “dietary and nutritional supplements used for weight loss” and “weight reduction diet planning and supervision.”

 

The applied-for mark is comprised of three elements: PHYSICIANS, KETO, and RX. Marks comprising more than one element must be considered as a whole and should not be dissected; however, a trademark examining attorney may consider the significance of each element separately in the course of evaluating the mark as a whole.  See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012) (reversing Board’s denial of cancellation for SNAP! with design for medical syringes as not merely descriptive when noting that the Board “to be sure, [could] ascertain the meaning and weight of each of the components that ma[de] up the mark”); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 1306, 91 USPQ2d 1532, 1533, 1535, 1537 (Fed. Cir. 2009) (holding HOTELS.COM generic for information and reservation services featuring temporary lodging when noting that the Board did not commit error in considering “the word ‘hotels’ for genericness separate from the ‘.com’ suffix”).

 

In this case, the individual components of the applied-for mark are highly descriptive of applicant’s goods and services. 

 

The attached evidence from Merriam-Webster dictionary shows that the wording PHYSICIANS, means “a person skilled in the art of healing.” Thus, the evidence demonstrates that the term PHYSICIANS merely describes a feature of applicant’s goods and services, specifically the goods and services are recommended or sponsored by doctors.

 

As to the wording KETO, the attached evidence from Merriam-Webster dictionary shows that it means “of or relating to ketone.”  Additional evidence from womenshealthmag.com, shows that KETO can also refer to the “keto diet,” which is a weight loss diet, where after several days the body goes into “ketosis” and starts making “ketones” that allow the body to burn fat for energy.  Thus, the wording KETO in the applied-for mark merely describes a feature/characteristic/purpose of applicant’s goods and services, specifically that the goods and services are to be used for the KETO diet and assist and making “ketones.”

 

The wording RX means “a doctor’s prescription” and a prescription is “a medicine that is ordered by a doctor as a remedy.”  See Merriam-Webster dictionary attachment. Accordingly, RX in light of applicant’s goods and services immediately conveys that applicant’s goods or services feature something that is advised by doctors.

 

Additional evidence is attached from third parties, aafp.org, nih.gov, and wustl.edu, healthline.com, ketosurvey.com, nutritionaloutlook.com, livescience.com, nursingcenter.com, and stjohnhealthsystem.com, using PHYSICIANS, KETO, and RX in a descriptive way in connection with applicant’s goods and services.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

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).

 

As discussed above, the individual components are highly descriptive of applicant’s goods and services. The composite result, PHYSICIANS KETO RX, does not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services. The mark as a whole describes the purpose/characteristic/feature of applicant’s goods and services, specifically, applicant’s goods and services are to be used for a ketogenic diet to lose weight and are recommended by doctors, and the average consumer will immediately understand that this is the purpose/characteristic/feature of applicant’s 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).

 

 

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

 

 

ASSISTANCE

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

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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

• 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 March 06, 2020 for

U.S. Trademark Application Serial No. 88458863

 

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. 

 

 

Solano, Carlita

/Carlita Jaye Solano/

Examining Attorney

Law Office 128

(571)270-0348

carlita.solano@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 March 06, 2020, 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.”