To: | Solutech Pharmaceuticals, LLC (manuel.cordovez@creativityIP.com) |
Subject: | U.S. Trademark Application Serial No. 88770948 - NDC 70350-2615-01 - 0022-0001 |
Sent: | November 27, 2020 08:33:26 PM |
Sent As: | ecom124@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 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88770948
Mark: NDC 70350-2615-01
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Correspondence Address: 9454 WILSHIRE BOULEVARD, SUITE 711
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Applicant: Solutech Pharmaceuticals, LLC
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Reference/Docket No. 0022-0001
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: November 27, 2020
This Office action is in response to applicant’s communication filed on October 19, 2020.
In a previous Office action(s) dated April 21, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Sections 1, 2, 3, and 45 for incapable informational matter. In addition, applicant was required to satisfy the following requirement(s): disclaim descriptive wording in the mark, sign the application using an authorized method, and amend the identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: disclaim descriptive wording in the mark, sign the application using an authorized method, and amend the identification of goods. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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:
FINAL REFUSAL Under Sections 1, 2, 3, and 45 – Incapable Informational Matter
Terms that are merely informational in nature are not registrable. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Determining whether the slogan or term functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019) (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d at 1229; TMEP §1202.04. “The more commonly a [slogan or term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
The attached evidence from fda.gov, ndclist.com, idmedicaid.com, bcbstx.com, aappublications.org, medlibrary.org, akorn.com, and healthgrades.com, shows that National Drug Codes are assigned by the U.S. Food and Drug Administration (FDA) as three-segment numbers used as universal product identifiers for drugs. These codes are commonly used in insurance billing. Because consumers are accustomed to seeing these codes used in this manner, when a code in the same format is applied to applicant’s goods, consumers would perceive it merely as informational matter indicating the FDA’s assigned number for the product. Thus, this code would not be perceived as a mark that distinguishes applicant’s goods from those of others and identifies the source of applicant’s goods.
Applicant argues that NDC 70350-2615-01 “uniquely identifies both the goods of the Applicant and the source of the goods” because the first segment of the code corresponds to the applicant as the labeler of the product. However, being unique to a packaging for a product and containing a number that corresponds to the applicant does not make the applied-for designation a source indicator. Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would be likely to regard it as a source-indicator for the goods. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
Not every designation that appears on a product or its packaging functions as a trademark, even though it may have been adopted with the intent to do so. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1404 (TTAB 2018) (citing In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)). A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the goods. See In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)); TMEP §1202.
In this case, the attached and previously attached evidence shows that NDC codes are ubiquitous on drug product packaging and are widely understood to be assigned by the FDA for a particular labeler and packaging for a particular drug. Because the codes are commonly seen on drug product packaging and understood to represent an assigned designation from the FDA, purchasers would not regard applicant’s NDC code as a source-indicator for the goods. Accordingly, the refusal under Sections 1, 2, 3, and 45 is now made FINAL.
An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
Proper response to a final action – full refusal
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).
/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
(571) 272-3681
april.reeves@uspto.gov
RESPONSE GUIDANCE