Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88896355 PREP HUB (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8889635 5/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Background

Gilead Sciences, Inc. (“Applicant”) hereby responds to the Office Action dated June 9, 2020 in support of its application Serial Number 88/896,355 (the “Application”) for the mark PREP HUB (the “Mark”). In the Office Action, the Examining Attorney (1) preliminarily refused registration of the Application on the grounds that the Mark is merely descriptive when used in connection with the identified services and (2) requested information regarding the Mark. Applicant provides information regarding the services, submits a disclaimer of PREP, and explains why the Mark is suggestive and eligible for registration on the Principal Register.

Informational Request

Applicant submits the following answers to the questions raised by the Office:

1. How is the term PrEP used in the industry?

• PrEP is used as an acronym for “pre-exposure prophylaxis,” which is a method of HIV prevention whereby individuals who do not have HIV take a medication daily to reduce the risk of contracting HIV if they are exposed to the virus.

1. Do applicant’s competitors use PrEP or any variation thereof to advertise similar goods and/or services?

• Yes.

1. Who is the typical consumer of applicant’s services?

• Individuals at risk of contracting HIV and other individuals seeking information about HIV prevention.

1. Please provide documentation of use of the term PrEP or its variants by third parties, including those affiliated with the applicant.

• Applicant submits the following documents showing use of the term PREP:

• hiv.gov/hiv-basics/hiv-prevention/using-hiv-medication-to-reduce-risk/pre-exposure-prophylaxis

• descovy.com/prep

• cdc.gov/hiv/risk/prep/index.html

Disclaimer

Applicant voluntarily enters the following disclaimer:

• No claim is made to the exclusive right to use PREP apart from the mark as shown.

Remarks – Section 2(e) Refusal

The Office asserts that the Mark is merely descriptive because it “descries a characteristic or purpose of applicant’s services.” Applicant respectfully disagrees and submits that HUB used in connection with PrEP in the context of the applied-for-services is distinctive and registrable.

1. Legal Standard

A mark is merely descriptive if it “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012) (emphasis added), quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007). Additionally, the mark must immediately indicate the quality, feature, function, or characteristic of the goods or services with a “degree of particularity” to be merely descriptive. Plus Products v. Medical Modalities Associates, Inc., 211 U.S.P.Q. 1199, 1205 (T.T.A.B. 1981) (emphasis added). If a mark, “when applied to the goods or services at issue, require[s] imagination, thought, or perception to reach a conclusion as to the nature of those goods or services,” that mark is merely suggestive and registrable if it does not have meaning in the relevant industry. TMEP § 1209.01(a).

1. The Mark has Multiple Potential Suggestive Meanings and is Incongruous

Multiple meanings of HUB require consumers to use their imagination and consider Applicant’s suggestive nature of the applied-for-mark in the context of the abstract concept of HIV-prevention.

HUB is defined as (1) the central part of a circular object; (2) a center of activity; or (3) a steel punch for metal (http://www.merriam-webster.com/dictionary/hub) (Exhibit A) and consumers are accustomed to multiple modern uses of HUB, which carry multiple potential suggestive meanings for the mark as a whole:

• Transport Hub / http://en.wikipedia.org/wiki/Transport_hub

• Network Hub / http://en.wikipedia.org/wiki/Hub_(network_science)

• Wheel Hub / http://en.wikipedia.org/wiki/Bicycle_wheel#Hub

(Exhibit B)

Such various meanings of HUB will lead consumers to ask natural questions about what services are being offered by Applicant, for example:

• What is being exchanged on the website? Are medications being distributed through a supply chain?

• What is being connected on the website? Can patients connect with other patients?

• If the website is the hub, what other resources are attached to the outside?

While Applicant disclaims PREP in this Response, it is nonetheless noteworthy that PREP also has multiple meanings, notably “preparation,” which creates a double entendre because consumers will consider the suggestion that Applicants services can help them “prepare” to be safe HIV, while using the PrEP (pre-exposure prophylaxis) method of prevention. http://www.merriam-webster.com/dictionary/prep (Exhibit C). Marks containing such double entendres cause consumers to exercise thought and render such marks suggestive rather than merely descriptive. TMEP 1213.05(c); In re Tea and Sympathy, Inc., 88 U.S.P.Q.2d 1062, 1067 (T.T.A.B. 2008) (finding FARMACY connoted meanings of a pharmacy and farm).

Furthermore, PREP and HUB used together are incongruous from a conceptual standpoint and this elucidates the suggestive nature of the Mark. PREP is a “method” of preventing transmission of HIV, thus a concept, or an abstract idea of doing something. Whereas HUB is often considered a physical, tangible object, e.g., a USB hub connect physical computer peripheral devices. The incongruity juxtaposing an abstract concept with the physical again spurs the mental steps that render a mark suggestive. In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978).

1. Multiple HUB Marks are Registered with Descriptive Terms on the Principal Register

Applicant’s PREP HUB is indistinguishable from multiple HUB marks recently registered by the Office, where HUB comprises the distinctive portion of the registered marks.

Mark	Reg. No. and Date	Summary of Goods / Services	Comments
ROOF HUB	6131178 Aug 18, 2020	Class 42 software for placing orders for roofing and building materials	ROOF is disclaimed
WINE CLUB HUB	6092288 Jun 30, 2020	Class 35 wine club services	WINE CLUB is disclaimed
TOWEL HUB	6083976 Jun 23, 2020	Class 35 towel resale services	TOWEL is disclaimed
HUB TAP	6073881 Jun 9, 2020	Class 43 beer, wine, liquor, cocktail services	TAP is disclaimed
SITTER HUB	6006665 Dec 2019	Class 45 babysitting services	SITTER is disclaimed
EQUIPMENT HUB	5999996 Mar 3, 2020	Class 7 metalworking machine tools	EQUIPMENT is disclaimed
HAIR TIE HUB	5998612 Feb 25, 2020	Class 26 holder for hair ties	HAIR TIE is disclaimed
THE SPORTS HUB	5994548 Feb 25, 2020	Class 41 entertainment services in the field of sports	SPORTS is disclaimed
THE KINK HUB	5971858 Jan 28, 2020	Class 41 arranging social events	KINK is disclaimed

Certificates of Registration are attached as Exhibit D.

Applicant’s PREP HUB mark shares the common atypical, incongruous construction as the registered marks above. Just as SITTER HUB services are not literally offering a hub attached to baby sitters, but rather the service helps to connect parents with baby sitters, consumers will first stop to reject the idea that PREP medicines are physically attached to a HUB and exercise mental steps to question what the actual services offered by the Applicant are under the PREP HUB mark.

The above registrations also demonstrate consumer recognition that marks comprised of a descriptive term plus HUB are single source identifiers. Customers will similarly associate PREP HUB as such a distinctive single-source of Applicant’s services.

While the Office decides each case on the merits, the now-permanent USPTO Consistency Initiative, urges consistent treatment of similar marks registered within the past 5 years, which favors registration of Applicant’s similarly constructed PREP HUB mark (http://www.gov.uspto.report/trademark/trademark-updates-and-announcements/consistency-initiative).

1. Doubt as to Descriptiveness Should be Resolved in Applicant’s Favor

Doubt as to the suggestiveness of the Mark should be resolved in Applicant’s favor. The Board takes the position that the line between merely descriptive marks and suggestive marks is “nebulous” and doubt should be resolved in favor of the Applicant on the assumption that competitors have the opportunity to oppose registration once the application is published. See e.g., In re Harvey & Sons, Ltd., 32 U.S.P.Q. 2d 1451, 1455 (T.T.A.B. 1994) (“to the extent that any evidence of record raises a doubt about our conclusions here, we elect to resolve that doubt in favor of the Applicant. Then, when the mark is published, any person who has a legitimate interest in the use of the [term] . . . may file an opposition.”).

CONCLUSION

With the above, Applicant submits that all the Examining Attorneys concerns are now addressed and respectfully requests that the application be approved for publication.

EVIDENCE
Evidence has been attached: exhibits referenced in the Response.
Original PDF file:
evi_19215623611-202011171 12329924769_._Exhibit_A__ HUB_.pdf
Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7
Original PDF file:
evi_19215623611-202011171 12329924769_._Exhibit_B__ HUBs_.pdf
Converted PDF file(s) ( 18 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18
Original PDF file:
evi_19215623611-202011171 12329924769_._Exhibit_C__ PREP_.pdf
Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7
Original PDF file:
evi_19215623611-202011171 12329924769_._Exhibit_D__ Registrations_.pdf
Converted PDF file(s) ( 18 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18
Original PDF file:
evi_19215623611-202011171 12329924769_._DESCOVY_for _PrEP___pre-exposure_prop hylaxis_.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_19215623611-202011171 12329924769_._rophylaxis_ _PrEP____HIV_Risk_and_Pre vention___HIV_AIDS___CDC.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_19215623611-202011171 12329924769_._Pre-Exposur e_Prophylaxis___HIV.gov.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use PREP apart from the mark as shown.

Correspondence Information (current):
      Gretchen R. Stroud
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@gilead.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMTeam@gilead.com
Correspondence Information (proposed):
      Gretchen R. Stroud
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@gilead.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMTeam@gilead.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /jack wessel/     Date: 11/17/2020
Signatory's Name: Jack Wessel
Signatory's Position: Attorney of Record, New York Bar Member

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Gretchen R. Stroud
   GILEAD SCIENCES, INC.
   
   333 LAKESIDE DRIVE
   FOSTER CITY, California 94404
Mailing Address:    Gretchen R. Stroud
   GILEAD SCIENCES, INC.
   333 LAKESIDE DRIVE
   FOSTER CITY, California 94404
        
Serial Number: 88896355
Internet Transmission Date: Tue Nov 17 11:29:42 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202011171129422
81411-88896355-750c4246e7a861cefd95cfec6
6e48d2323e31059e8a8b788391d48ab28a99ea0-
N/A-N/A-20201117112329924769