To: | Misonix, Inc. (davidj@gjip.com) |
Subject: | U.S. Trademark Application Serial No. 90779670 - BONESCALPEL ACCESS - MIS-TM009 |
Sent: | February 28, 2022 02:38:40 PM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90779670
Mark: BONESCALPEL ACCESS
|
|
Correspondence Address:
|
|
|
|
Reference/Docket No. MIS-TM009
Correspondence Email Address: |
|
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: February 28, 2022
This Office action is in response to applicant’s communication filed on February 10, 2022.
In a previous Office action dated December 28, 2021, the trademark examining attorney required applicant to satisfy the following requirements: Identification of Goods and Disclaimer Required.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Identification of Goods. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the requirement 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:
Applicant must disclaim the wording “BONESCALPEL” because it is 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 previously attached evidence from The Journal of Orthopaedic Surgery and Research shows that a “bone scalpel” is “a device with an oscillating metal tip developed specifically for bone cutting.” Thus, the wording merely describes a feature of applicant’s goods because applicant’s goods are identified as this exact type of item for removing bone.
In addition, applicant has claimed ownership of U.S. Registration No. 4715865. In applicant’s prior registration, applicant claimed acquired distinctiveness under Trademark Act Section 2(f). Thus, applicant conceded that this wording was not inherently distinctive but was rather merely descriptive. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1479 (TTAB 2016) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)); TMEP §1212.02(b)-(c). Accordingly, applicant’s prior registration is probative to show that applicant’s applied-for mark is not inherently distinctive in this case. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); TMEP §1212.02(c).
In response, applicant has argued that because of the previous registration and the fact that evidence otherwise is limited, the disclaimer should not be required. However, this ignores the fact that the previous registration has already been conceded to be merely descriptive of the goods. The descriptiveness has not changed, regardless of the amount of evidence or possible collateral attacks on those sources.
Indeed, in any case, 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., 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 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, the attached evidence from Lexico.com shows that “bone” refers to “any of the pieces of hard whitish tissue making up the skeleton in humans and other vertebrates”, while a “scalpel” is “a knife with a small, sharp, sometimes detachable blade, as used by a surgeon.” The combination directly describes applicant’s goods, since applicant’s goods are broadly described as “medical” and “surgical” instruments which would include scalpels for bones.
And finally, the fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive; as in this case, the evidence shows that “BONESCALPEL” is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BONESCALPEL” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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).
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@uspto.gov
RESPONSE GUIDANCE