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. 88840998
Mark: TRACKER
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Correspondence Address: 321 N. CLARK STREET, SUITE 2300
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Applicant: Spacelabs Holdings, Inc.
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Reference/Docket No. 205264-01027
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: May 11, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS
· Prior-filed Pending Application
· Section 2(e)(1) Refusal – Merely Descriptive
· Request for Additional Information About Goods
· Duplicate Application
· Practice Advisory
PRIOR-FILED PENDING APPLICATION
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 mark in the referenced application. 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.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
A mark is merely descriptive if it describes a function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). Terms that describe the function or purpose of a product or service may be merely descriptive. TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies).
Further, descriptiveness is considered in relation to the relevant goods. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e).
The applicant's mark is TRACKER for "Ambulatory electrocardiograph recorder".
The application identifies electrocardiographs as Applicant's goods. The American Heritage Dictionary defines "ELECTROCARDIOGRAPH" as "[a]n instrument used in the detection and diagnosis of heart abnormalities that measures electrical potentials on the body surface and generates a record of the electrical currents associated with heart muscle activity" (See attached dictionary evidence). Furthermore, it defines "TRACK", the verb form of "TRACKER", as "observ[ing] or monitor[ing] the course of [something]" or "observ[ing] the progress of; follow[ing]" (See attached dictionary evidence).
The attached evidence also shows that function of electrocardiographs is to monitor and track the heart's electrical signals (See attached evidence from abbottpathology.com, neurosky.com, prospectpetsitting.com, tricitycardiology.com, alivetec.com, arstechnica.com, chicagotribune.com, getqardio.com, mashable.com, mobihealthnews.com, and techcrunch.com). Moreover, the attached evidence shows the wording "TRACKER" used descriptively in relation to electrocardiographs to indicate its function of monitoring and tracking vitals related to the heart (See attached evidence from engadget.com, mobilehealthnews.com, supplementpolice.com, us.amazfit.com, Indiegogo.com, digitaltrends.com, finance.yahoo.com, getqardio.com, huami-usa.com, newatlas.com, and vrlegends.com).
In this case, the wording "TRACKER" immediately conveys and merely describes a feature of Applicant's identified goods, namely, devices that monitor or follow the progress of electrical currents associated with heart muscle activity.
In addition, the trademark examining attorney has also attached a number of third-party registrations from the USPTO X-Search Database showing marks with the wording "TRACKER" disclaimed, on the Supplemental Register, or with a Section 2(f) acquired distinctiveness claim for similar medical devices used for tracking or monitoring. This shows that the wording is commonly found to be merely descriptive of similar medical devices used for tracking and/or monitoring by the USPTO.
Although Applicant’s mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Supplemental Register Advisory
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.
To amend the application filing basis from an intent-to-use application under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), applicant must file, prior to approval of the mark for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76. See 15 U.S.C. §1051(c); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.
The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):
1) The following statements: “Applicant believes applicant is the owner of the mark” and “the mark is in use in commerce.”
2) The date of first use of the mark anywhere on or in connection with the goods and/or services.
3) The date of first use of the mark in commerce as a trademark or service mark.
4) The goods and/or services specified in the application.
5) A specimen showing how applicant uses the mark in commerce for each class of goods for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.
6) A filing fee of $100 per class for each international class of goods for which use is being asserted (current fee information should be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
7) Verification of the above (1) through (4) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.
See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b); TMEP §§1104.08, 1104.10(b)(v).
An amendment to allege use may be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp. An amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. Applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
REQUEST FOR ADDITIONAL INFORMATION ABOUT THE GOODS
Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and wording appearing in the mark:
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods is available on applicant’s website is insufficient to make the information of record;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product will differ. If the goods feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(3) Applicant must respond to the following questions:
• Describe the purpose and use of an ambulatory electrocardiograph recorder. Provide documentation to support.
• Do Applicant’s goods feature, or are they intended to feature, a function that observes the electrical signals of the heart? Explain and provide documentation.
• Do Applicant’s goods feature, or are they intended to feature, a function that observes other vitals related to the heart? Explain and provide documentation.
• Do Applicant’s goods feature, or are they intended to feature, a function that monitors the electrical signals of the heart? Explain and provide documentation.
• Do Applicant’s goods feature, or are they intended to feature, a function that monitors other vitals related to the heart? Explain and provide documentation.
• Do Applicant’s goods feature, or are they intended to feature, a function that tracks the electrical signals of the heart? Explain and provide documentation.
• Do Applicant’s goods feature, or are they intended to feature, a function that tracks other vitals related to the heart? Explain and provide documentation.
• Do applicant’s competitors use “TRACKER” to advertise similar goods? Explain and provide documentation.
• Who is the typical consumer, or intended typical consumer, of applicant’s goods? Explain and provide documentation.
• Where are applicant’s goods typically purchased, or intended to be purchased? Provide examples of online and brick-and-mortar store venues.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
DUPLICATE APPLICATION
Registration is refused because this application and U.S. Application Serial No. 88197175 appear to be duplicate applications. 37 C.F.R. §2.48; TMEP §703. See the attached application. The USPTO will not issue duplicate registrations. 37 C.F.R. §2.48; TMEP §703. Applicant may respond to this refusal by abandoning one of them.
PRACTICE ADVISORY
37 C.F.R. §2.193(f) - Signature as certification.
The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by any person, whether a practitioner or non-practitioner, constitutes a certification under §11.18(b) of this chapter. Violations of §11.18(b) of this chapter may jeopardize the validity of the application or registration, and may result in the imposition of sanctions under §11.18(c) of this chapter. Any practitioner violating §11.18(b) of this chapter may also be subject to disciplinary action. See §§10.23(c)(15) [old rule] and 11.18(d) of this chapter.
37 C.F.R. §11.18 - Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed or inserted by such practitioner, in compliance with §1.4(d)(1), §1.4(d)(2), or §2.193(a) of this chapter.
(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of—
(1) Striking the offending paper;
(2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.
Yi, Crystal
/Crystal H. Yi/
Examining Attorney
Law Office 123
571.270.0763
crystal.yi@uspto.gov
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RESPONSE GUIDANCE
