To: | Tanita Corporation (bassam.ibrahim@bipc.com) |
Subject: | U.S. Trademark Application Serial No. 88571248 - INNERSCAN PRO - 1034377-023 |
Sent: | January 16, 2020 12:23:24 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88571248
Mark: INNERSCAN PRO
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Correspondence Address: |
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Applicant: Tanita Corporation
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Reference/Docket No. 1034377-023
Correspondence Email Address: |
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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: January 16, 2020
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.
This Office action is in response to applicant’s communication filed on January 9, 2020, as explained in the message left for the applicant’s attorney on January 10, 2020; no return communication was received. Please note that all issues not discussed in this office action have been resolved.
The examining attorney maintains and continues the following refusal(s) and/or requirement(s): information requirement.[1]
The examining attorney issues this Office action because of a new issue(s) raised in the applicant’s response.
In this case, applicant must disclaim the wording “PRO” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The applicant’s goods are identified as weighing machines with body fat monitors; body fat monitors; weighing machines with body composition monitors; body composition monitors; and body composition monitors for medical purposes; body fat monitors for medical purposes. The attached dictionary definition defines PRO as “[p]rofessional.” The applicant’s response states that it intends to use the wording PRO as the abbreviation of the word “professional” and that the goods may be used by professionals. The attached internet evidence from the applicant’s website shows that the wording at issue has a merely descriptive meaning in relation to the applicant’s goods and/or in the relevant trade or industry because the website shows that the applicant offers professional quality goods and/or offers the goods to professionals. For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b). Therefore, PRO, as applied to the identified goods, is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PRO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
QUESTIONS ABOUT THIS ACTION
If the applicant has technical questions about the TEAS response to Office action form, the applicant may send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail. Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving. You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours.
For status inquiries or copies of documents, an applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system twenty-four (24) hours a day, seven (7) days a week. Enter the application serial number or registration number and click on “Status” or “Documents.” Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated. For help in resolving technical glitches, please email TSDR@uspto.gov.
For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC). TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199. For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays. A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.
If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/Brian Pino/
Examining Attorney
Law Office 114
571.272.9209 Telephone
Brian.Pino2@uspto.gov
RESPONSE GUIDANCE
[1] The applicant may ignore the information requirement if entering the disclaimer of PRO as required.