To: | MABTECH AB (btaylor@stites.com) |
Subject: | U.S. Trademark Application Serial No. 88476289 - RAWSPOT - 238LT-192163 |
Sent: | October 30, 2019 04:19:30 PM |
Sent As: | ecom113@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 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88476289
Mark: RAWSPOT
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Correspondence Address: |
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Applicant: MABTECH AB
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Reference/Docket No. 238LT-192163
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: October 30, 2019
This Office action is supplemental to and supersedes the previous Office Action issued on September 13, 2019, in connection with this application. The assigned trademark examining attorney inadvertently omitted a potential refusal of registration relevant to the mark in the subject application. See TMEP §§706, 711.02. Specifically, there is an additional prior-filed pending application that could present a bar to the applied-for mark.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
Applicant must address all issues raised in this Office action.
SUMMARY OF ISSUES
· Prior-Filed Pending Applications Advisory
PRIOR-FILED PENDING APPLICATIONS ADVISORY
The filing dates of pending U.S. Application Serial No. 79266350 and 87898635 precede applicant’s filing date. See attached referenced applications. If the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
While applicant is not required to respond to the issue of the pending application, applicant must respond to the requirements below within six months of the mailing date of this Office Action to avoid abandonment.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a characteristic of applicant’s goods. 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 describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987). Determining whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract. In re Bayer AG, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 217-18 (C.C.P.A. 1978); TMEP §1209.01(b).
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.
Attached evidence from Wikipedia establishesthat RAW or .raw is an image format similar to .jpg or .pdf and SPOT refers to a specific type of test used in chemistry and microbiology. Moreover, attached evidence from the applicant’s own website clearly establishes that the applicant themselves uses both the term RAW and SPOT in a descriptive manner. Specifically, the applicant’s website states that their software “processes the wide dynamic range of the image RAW signal in contrast to analysis of flat 8 bit images, like JPEG or TIF,” and specifies that the software can export files to “.raw .tif .jpg .xlsx .pzfx.” Additionally, the applicant’s website states that their software “reinvents spot analysis,” and has a whole section of the website titled “why spot analysis.” This evidence establishes that the applicant recognizes and understands that the wording in the mark is descriptive for the goods provided, and that they themselves use the wording descriptively in relation to the goods. Therefore, the wording RAWSPOT merely conveys a characteristic of the applicant’s goods, namely, that the applicant’s software uses a .raw image format to provide microbiology spot analysis.
Additionally, attached evidence from Format, FileInfo, and SLR Lounge further establish that the term RAW is commonly used to describe an image format. Additional evidence from GE Healthcare Life Sciences, PerkinElmer, and Spot Imaging establishes that SPOT is commonly used to describe software for spot analysis. This evidence shows that potential consumers have seen this term used to describe such goods and would be aware of its descriptive meaning.
Therefore, the mark RAWSPOT, as applied to the identified goods, merely describes a characteristic of the applicant’s goods, namely, that their software uses the .raw image format to perform spot analysis. Accordingly, the proposed mark is merely descriptive and registration is refused under Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
How to respond. Click to file a response to this nonfinal Office action
/Fox, Lyal/
Lyal Fox
Examing Attorney
Law Office 113
571-270-7884
lyal.fox@uspto.gov
RESPONSE GUIDANCE