throbber
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 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`86895019
`
`LAW OFFICE 116
`
`https://tmng-al.uspto.gov/resting2/api/img/86895019/large
`
`NPAID NON-PHARMACEUTICAL ANTI-INFLAMMATORY DEVICE
`
`NO
`
`NO
`
`Applicant is grateful for the Examining Attorney’s letter dated May 24, 2016 and submits a response thereto as follows:
`
`The guiding decision in determining whether a mark is descriptive is In re Gyulay, 3 U.S.P.Q.2d 1009 (Fed. Cir. 1987), which held that a mark
`is merely descriptive if it describes an ingredient, quality, character, function, feature, purpose or use of the relevant goods.
`
`(cid:160)A
`
`pplicant respectfully submits that the composite element of the mark NON-PHARMACEUTICAL(cid:160) ANTI-INFLAMMATORY(cid:160) DEVICE in
`its entirety is not merely descriptive.(cid:160) The question of whether or not the mark or its components are merely descriptive cannot be determined
`
`in the abstract, but rather must be decided upon detailed analysis of all factors.(cid:160)(cid:160)
`
`First, the relevant element should be viewed as a whole.(cid:160) It is axiomatic that a mark and its composite components should not be dissected and
`considered piecemeal. (cid:160) Rather it must be considered as a whole in determining whether it is merely descriptive.(cid:160) The anti-dissection rule is the
`basic principle and it is the impression that the mark as a whole creates, and not the parts thereof, that is important.(cid:160) See, Estate of P. D.
`Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46, 64 L. Ed. 705, 40 S. Ct. 414 (1920).(cid:160) The U.S. Supreme Court stated: “The
`commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.(cid:160) For this reason it
`
`should be considered in its entirety”. (cid:160)(cid:160)(cid:160)
`
`Even on the assumption that one or more of the mark’s components are descriptive per se, this does not make the composite mark merely
`descriptive as applied to the covered goods and/or services. (cid:160) It is well accepted that combination of several descriptive components may result
`in a non-descriptive composite mark.(cid:160) In In re Warner Electric Brake & Clutch Co., 154 U.S.P.Q. 328 (T.T.A.B. 1967) it was held that
`ELECTRO-MODULE is not descriptive of electro-magnetic brakes.(cid:160) Also, See Physicians Formula Cosmetics, Inc. v. West Cabot Cosmetics,
`Inc., 8 U.S.P.Q. 2d 1136 (2d Cir. 1988) (PHYSICIANS FORMULA held suggestive of skin creams and lotions); Firestone Tire & Rubber Co.
`v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557 (T.T.A.B. 1975), aff’d 189 U.S.P.Q. 348 (C.C.P.A. 1976) (BIASTEEL was held not
`descriptive but only suggestive of steel belted bias tires); Money Store V. Harriscorp. Finance, Inc., 216 U.S.P.Q. 853 (7th Cir. 1982) (THE
`MONEY STORE held not merely descriptive of banking or lending services); In re Wells Fargo & Co., 231 U.S.P.Q. 116 (T.T.A.B. 1986)
`(EXPRESS SAVINGS held suggestive but not descriptive of banking services).
`
`(cid:160)T
`
`o be characterized as “descriptive”, a term must directly give some reasonably accurate or tolerably distinct knowledge of the goods’ and
`services’ characteristics. (cid:160) See Blisscraft of Hollywood v. United Plastics Co., 131 U.S.P.Q. 627 (2d Cir. 1961).(cid:160) Applicant’s Mark in its
`entirety was coined by the Applicant and does not identify the goods on or in connection with which it used, nor does it describe ingredients,
`
`quality, function or purpose of such goods.(cid:160)(cid:160)
`
`Applicant respectfully submits that it takes an extraordinary effort of imagination for NON-PHARMACEUTICAL(cid:160) ANTI-
`INFLAMMATORY(cid:160) DEVICE to be understood as used on goods encompassed by the application.(cid:160) The mark in its entirety does not
`immediately call to mind such goods, and it is no more than suggestive of the goods in the present specification, rather than merely
`
`descriptive.(cid:160)(cid:160)
`
`Regarding the term NON-PHARMACEUTICAL in particular, Applicant respectfully submits that it was uniquely adopted for use in
`conjunction with mark’s other elements on or in connection with the listed goods, and that there are no other third party marks on the USPTO
`record that include the “NON-PHARMACEUTICAL” wording. (cid:160) This is additional probative evidence establishing that it is not merely
`
`

`

`descriptive, but, at the utmost, suggestive.
`
`(cid:160)A
`
`pplicant respectfully agrees that ANTI-INFLAMMATORY is merely descriptive and agrees to add a disclaimer thereof apart from the mark,
`
`and authorizes the Examining Attorney to enter same.(cid:160)(cid:160)
`
`Further, reliable guidelines have been established to distinguish between a suggestive mark and a merely descriptive one.(cid:160) The court in
`Abercrombie and Fitch Co. v. Hunting World, Inc., 189 U.S.P.Q. 759 (2d Cir 1976), stated “[A] term is suggestive if it requires imagination,
`thought and perception to reach a conclusion as to the nature of goods.” Id., at 11, quoting Stix Prods., Inc. v. United Merchants & Mfrs., Inc.,
`295 F. Supp 479, 488 (S.D.N.Y. 1968). (cid:160) A suggestive mark is considered a valid trademark and is entitled to protection. Id.
`
`Since there is only a thin line of demarcation between a suggestive mark and a descriptive mark, any such characterization of a mark is
`inherently subjective. (cid:160) Therefore, any doubt as to whether a mark is suggestive or merely descriptive should be resolved in favor of the
`applicant.(cid:160) In In re Stroh Brewery Co., 34 U.S.P.Q. 2d 1796 (T.T.A.B. 1994) the Board explained: When doubts exist as to whether a term is
`descriptive as applied to the goods or services for which registration is sought, it is the practice of this board to resolve doubts in favor of the
`applicant and pass the mark to publication with the knowledge that a competitor of applicant can initiate an opposition proceeding in which a
`
`more complete record can be established. (Citations omitted). Id. (cid:160)(cid:160)
`
`See also, In re Bel Paese Sales Co., 1 U.S.P.Q. 2d 1233 (T.T.A.B. 1986); In re Conductive Systems, Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983).
`Likewise, in In re Pennwalt Corp., 173 U.S.P.Q. 317 (T.T.A.B. 1972), the Trademark Trial and Appeal Board concluded that the mark
`DRI‑FOOT for foot antiperspirant should be passed to publication, even if the composite mark appeared highly suggestive of the product’s
`use. Similarly, in(cid:160) In re Geo. A. Hormel & Co., 218 U.S.P.Q 286 (T.T.A.B. 1983), the Trademark Trial and Appeal Board found the mark
`FAST ’N EASY for pre‑cooked meats highly suggestive of the product, but resolved any doubts as to characterization in favor of the
`
`applicant.(cid:160)(cid:160)
`
`Thus, in accordance with set precedents, Applicant respectfully requests that the Examining Attorney resolves any doubt in favor of Applicant
`and characterize the present mark composite element NON-PHARMACEUTICAL(cid:160) ANTI-INFLAMMATORY(cid:160) DEVICE as suggestive,
`perhaps highly suggestive, but certainly not merely descriptive.
`
`(cid:160)I
`
`t is respectfully submitted that the Examining Attorney should not substitute the marketplace reality with her subjective opinion.(cid:160)
`
`----------------------
`
`(cid:160)I
`
`n light of the above, and having answered all issues, Applicant respectfully requests to pass its subject mark to publication.(cid:160) If any additional
`information is required, please do not hesitate to contact the undersigned.
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`/Max Vern/
`
`Max Vern
`
`Attorney of Record, NY Bar Member
`
`(212) 336-8000
`
`11/23/2016
`
`YES
`
`Wed Nov 23 15:47:24 EST 2016
`
`USPTO/ROA-XXX.XXX.XXX.XXX
`-20161123154724525739-868
`95019-570d4d4a2869f33b809
`6524c4542dc5bd265ccbb933c
`05f55eef277ab7c4b8469-N/A
`-N/A-20161123154511758518
`
`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 07/31/2017)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86895019(cid:160)NPAID NON-PHARMACEUTICAL ANTI-INFLAMMATORY DEVICE (Stylized and/or with Design, see
`https://tmng-al.uspto.gov/resting2/api/img/86895019/large) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Applicant is grateful for the Examining Attorney’s letter dated May 24, 2016 and submits a response thereto as follows:
`
`The guiding decision in determining whether a mark is descriptive is In re Gyulay, 3 U.S.P.Q.2d 1009 (Fed. Cir. 1987), which held that a mark is
`merely descriptive if it describes an ingredient, quality, character, function, feature, purpose or use of the relevant goods.
`
`(cid:160)A
`
`pplicant respectfully submits that the composite element of the mark NON-PHARMACEUTICAL(cid:160) ANTI-INFLAMMATORY(cid:160) DEVICE in its
`entirety is not merely descriptive.(cid:160) The question of whether or not the mark or its components are merely descriptive cannot be determined in the
`
`abstract, but rather must be decided upon detailed analysis of all factors.(cid:160)(cid:160)
`
`First, the relevant element should be viewed as a whole.(cid:160) It is axiomatic that a mark and its composite components should not be dissected and
`considered piecemeal. (cid:160) Rather it must be considered as a whole in determining whether it is merely descriptive.(cid:160) The anti-dissection rule is the
`basic principle and it is the impression that the mark as a whole creates, and not the parts thereof, that is important.(cid:160) See, Estate of P. D.
`Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46, 64 L. Ed. 705, 40 S. Ct. 414 (1920).(cid:160) The U.S. Supreme Court stated: “The
`commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.(cid:160) For this reason it
`
`should be considered in its entirety”. (cid:160)(cid:160)(cid:160)
`
`Even on the assumption that one or more of the mark’s components are descriptive per se, this does not make the composite mark merely
`descriptive as applied to the covered goods and/or services. (cid:160) It is well accepted that combination of several descriptive components may result in
`a non-descriptive composite mark.(cid:160) In In re Warner Electric Brake & Clutch Co., 154 U.S.P.Q. 328 (T.T.A.B. 1967) it was held that ELECTRO-
`MODULE is not descriptive of electro-magnetic brakes.(cid:160) Also, See Physicians Formula Cosmetics, Inc. v. West Cabot Cosmetics, Inc., 8
`U.S.P.Q. 2d 1136 (2d Cir. 1988) (PHYSICIANS FORMULA held suggestive of skin creams and lotions); Firestone Tire & Rubber Co. v.
`Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557 (T.T.A.B. 1975), aff’d 189 U.S.P.Q. 348 (C.C.P.A. 1976) (BIASTEEL was held not descriptive
`but only suggestive of steel belted bias tires); Money Store V. Harriscorp. Finance, Inc., 216 U.S.P.Q. 853 (7th Cir. 1982) (THE MONEY
`STORE held not merely descriptive of banking or lending services); In re Wells Fargo & Co., 231 U.S.P.Q. 116 (T.T.A.B. 1986) (EXPRESS
`SAVINGS held suggestive but not descriptive of banking services).
`
`(cid:160)T
`
`o be characterized as “descriptive”, a term must directly give some reasonably accurate or tolerably distinct knowledge of the goods’ and
`services’ characteristics. (cid:160) See Blisscraft of Hollywood v. United Plastics Co., 131 U.S.P.Q. 627 (2d Cir. 1961).(cid:160) Applicant’s Mark in its entirety
`was coined by the Applicant and does not identify the goods on or in connection with which it used, nor does it describe ingredients, quality,
`
`function or purpose of such goods.(cid:160)(cid:160)
`
`Applicant respectfully submits that it takes an extraordinary effort of imagination for NON-PHARMACEUTICAL(cid:160) ANTI-
`INFLAMMATORY(cid:160) DEVICE to be understood as used on goods encompassed by the application.(cid:160) The mark in its entirety does not immediately
`
`call to mind such goods, and it is no more than suggestive of the goods in the present specification, rather than merely descriptive.(cid:160)(cid:160)
`
`Regarding the term NON-PHARMACEUTICAL in particular, Applicant respectfully submits that it was uniquely adopted for use in conjunction
`with mark’s other elements on or in connection with the listed goods, and that there are no other third party marks on the USPTO record that
`include the “NON-PHARMACEUTICAL” wording. (cid:160) This is additional probative evidence establishing that it is not merely descriptive, but, at
`the utmost, suggestive.
`
`(cid:160)A
`
`pplicant respectfully agrees that ANTI-INFLAMMATORY is merely descriptive and agrees to add a disclaimer thereof apart from the mark,
`
`and authorizes the Examining Attorney to enter same.(cid:160)(cid:160)
`
`Further, reliable guidelines have been established to distinguish between a suggestive mark and a merely descriptive one.(cid:160) The court in
`Abercrombie and Fitch Co. v. Hunting World, Inc., 189 U.S.P.Q. 759 (2d Cir 1976), stated “[A] term is suggestive if it requires imagination,
`thought and perception to reach a conclusion as to the nature of goods.” Id., at 11, quoting Stix Prods., Inc. v. United Merchants & Mfrs., Inc.,
`295 F. Supp 479, 488 (S.D.N.Y. 1968). (cid:160) A suggestive mark is considered a valid trademark and is entitled to protection. Id.
`
`Since there is only a thin line of demarcation between a suggestive mark and a descriptive mark, any such characterization of a mark is inherently
`subjective. (cid:160) Therefore, any doubt as to whether a mark is suggestive or merely descriptive should be resolved in favor of the applicant.(cid:160) In In re
`Stroh Brewery Co., 34 U.S.P.Q. 2d 1796 (T.T.A.B. 1994) the Board explained: When doubts exist as to whether a term is descriptive as applied
`to the goods or services for which registration is sought, it is the practice of this board to resolve doubts in favor of the applicant and pass the
`mark to publication with the knowledge that a competitor of applicant can initiate an opposition proceeding in which a more complete record can
`be established. (Citations omitted). Id. (cid:160)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`(cid:160)S
`
`ee also, In re Bel Paese Sales Co., 1 U.S.P.Q. 2d 1233 (T.T.A.B. 1986); In re Conductive Systems, Inc., 220 U.S.P.Q. 84 (T.T.A.B. 1983).
`Likewise, in In re Pennwalt Corp., 173 U.S.P.Q. 317 (T.T.A.B. 1972), the Trademark Trial and Appeal Board concluded that the mark
`DRI‑FOOT for foot antiperspirant should be passed to publication, even if the composite mark appeared highly suggestive of the product’s use.
`Similarly, in(cid:160) In re Geo. A. Hormel & Co., 218 U.S.P.Q 286 (T.T.A.B. 1983), the Trademark Trial and Appeal Board found the mark FAST ’N
`
`EASY for pre‑cooked meats highly suggestive of the product, but resolved any doubts as to characterization in favor of the applicant.(cid:160)(cid:160)
`
`Thus, in accordance with set precedents, Applicant respectfully requests that the Examining Attorney resolves any doubt in favor of Applicant
`and characterize the present mark composite element NON-PHARMACEUTICAL(cid:160) ANTI-INFLAMMATORY(cid:160) DEVICE as suggestive, perhaps
`highly suggestive, but certainly not merely descriptive.
`
`(cid:160)I
`
`t is respectfully submitted that the Examining Attorney should not substitute the marketplace reality with her subjective opinion.(cid:160)
`
`----------------------
`
`(cid:160)I
`
`n light of the above, and having answered all issues, Applicant respectfully requests to pass its subject mark to publication.(cid:160) If any additional
`information is required, please do not hesitate to contact the undersigned.
`
`SIGNATURE(S)
`Response Signature
`Signature: /Max Vern/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 11/23/2016
`Signatory's Name: Max Vern
`Signatory's Position: Attorney of Record, NY Bar Member
`
`Signatory's Phone Number: (212) 336-8000
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 86895019
`Internet Transmission Date: Wed Nov 23 15:47:24 EST 2016
`TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20161123154724
`525739-86895019-570d4d4a2869f33b8096524c
`4542dc5bd265ccbb933c05f55eef277ab7c4b846
`9-N/A-N/A-20161123154511758518
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

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