Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  November 17, 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 OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES:

 

• Refusal Under Section 2(e)(1) – Mark is Merely Descriptive
• Request for Information

 

REFUSAL UNDER SECTION 2(e)(1) – MARK IS MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature or purpose 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 an applicant’s goods and/or services.  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)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods/services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

In the present case, applicant has applied to register the mark COVI-TRACE for use in connection with “Diagnostic kits comprised of medical diagnostic reagents and assays for testing of bodily fluids for use in disease detection, namely, Coronavirus (SARS-CoV-2); Medical diagnostic reagents and assays for identifying the SARS-CoV-2 virus in patient blood samples.”

 

First, applicant’s mark includes the formative COVI, which indicates that applicant’s goods are related to the COVID-19 pandemic as “COVI” comes from coronavirus. See attached from http://www.npr.org/sections/goatsandsoda/2020/02/11/802352351/new-coronavirus-gets-an-official-name-from-the-world-health-organization (‘“Covi’ comes from coronavirus”’).  In 2019, a novel coronavirus called SARS-CoV-2 (Severe Acute Respiratory Syndrome Coronavirus 2) became responsible for a worldwide outbreak of a disease now known as COVID-19 (Coronavirus Disease 2019), the outbreak of which created a national emergency in the United States and was declared a pandemic by the World Health Organization. See the attached evidence from various sources discussing the COVID-19 outbreak:

 

• Centers for Disease Control and Prevention http://www.cdc.gov/coronavirus/types.html  (“Coronaviruses are named for the crown-like spikes on their surface” and “SARS-CoV-2 (the novel coronavirus that causes coronavirus disease 2019, or COVID-19).”)
• National Institute of Allergy and Infectious Diseases http://www.niaid.nih.gov/diseases-conditions/coronaviruses  (In late 2019, a novel coronavirus not previously identified called SARS-CoV-2 (Severe Acute Respiratory Syndrome Coronavirus 2) emerged that causes a disease called COVID-19 (Coronavirus Disease 2019))
• The White House http://www.whitehouse.gov/presidential-actions/proclamation-declaring-national-emergency-concerning-novel-coronavirus-disease-covid-19-outbreak/ (In the United States, the President declared a national emergency in response to COVID-19 on March 13, 2020.)
• U.S. Bureau of Labor Statistics http://www.bls.gov/covid19/effects-of-covid-19-pandemic-on-productivity-and-costs-statistics.htm (“The coronavirus (COVID-19) pandemic is affecting daily life for the entire country.”); and
• World Health Organization http://www.who.int/dg/speeches/detail/who-director-general-s-opening-remarks-at-the-media-briefing-on-covid-19---11-march-2020 (Director-General’s Opening Remarks at the Media Briefing on COVID-19 noting that on March 11, 2010, the World Health Organization began characterizing the outbreak as a “pandemic”).

 

The COVID-19 outbreak has achieved widespread media attention throughout the entire world.  For example, the attached article from Vox describes how 13% of all online news article views on the Internet concerned coronavirus. See http://www.vox.com/recode/2020/3/17/21182770/news-consumption-coronavirus-traffic-views; see also http://www.journalism.org/2020/04/01/cable-tv-and-covid-19-how-americans-perceive-the-outbreak-and-view-media-coverage-differ-by-main-news-source (Pew Research Center notes that “[c]overage of COVID-19 has dominated the news and resulted in skyrocketing ratings for the nation’s cable news networks”).  Consumers are familiar with COVID-19 and understand that it is caused by a novel coronavirus.

 

An abbreviation is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011). In the context of the identified goods and/or services, a relevant consumer viewing the term COVI in the applied-for mark would understand that COVI is the abbreviated form of COVID-19 and used in the applied-for mark to describe that the goods and/or services have a relationship to Coronavirus Disease 2019. To buttress this contention, applicant’s identification indicates the goods are for disease detection, namely, Coronavirus (SARS-CoV-2)” detection, thus consumers would understand the term as immediately indicating a feature or purpose of the identified goods.

 

Secondly, the mark includes the term TRACE. Applicant’s broadly stated identification indicates the goods are for disease detection, which encompasses following or studying out in detail or step by step of the spread of the COVID-19/Coronavirus, antibodies in individuals, etc. See attached from http://www.merriam-webster.com/dictionary/trace defining the term. Thus, Applicant has merely formed their mark by combining two merely descriptive and possibly generic sets of words. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services 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. Specifically, in the context of the identified goods, a relevant consumer viewing the mark COVI-TRACE would immediately understand it to convey that the goods are for the purpose of tracing the spread of the COVID-19/Coronavirus and/or antibodies against the COVID-19/Coronavirus.

 

Accordingly, the proposed mark COVI-TRACE is merely descriptive, and registration is properly refused on the Principal Register 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.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

REQUEST FOR INFORMATION

 

To permit proper examination of the application, applicant must submit additional product information about applicant’s goods because the nature of such goods is not clear from the present record.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and/or a photograph of the identified goods.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

 

To permit proper examination of the application, applicant must also provide the following information:

 

1. Are the goods for the detection of COVID-19/coronavirus?

 

2. Are the goods for the purpose of tracing the spread of COVID-19/coronavirus?

 

3. Are the goods for the purpose of tracing antibodies in individuals?

 

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.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Heather A. Sales/

Examining Attorney

Law Office 130

(571) 272-7835

Heather.Sales@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 17, 2020 for

U.S. Trademark Application Serial No. 90031581

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Heather A. Sales/

Examining Attorney

Law Office 130

(571) 272-7835

Heather.Sales@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 17, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”