Petition To Revive For Office Action
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`Page 1 of 16
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`PTO Fonn 2194 (Rev 9/2005)
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`OMB No. 0651-0054 (Exp. 11/30/2008)
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`Petition To Revive For Office Action
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`—~——~_ww_— »‘m
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`The table below presents the data as entered.
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`1"P"*Fi*='d
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`SERIAL NUMBER
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`78655908
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`LAW OFFICE ASSIGNED
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`LAW OFFICE 116
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`DATE or NOTICE or
`ABANDONMENT
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`09/24/2007
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`Applicant has firsthand knowledge that the failure to
`respond to the Office Action by the specified deadline was
`unintentional, and requests the USPTO to revive the
`abandoned application.
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` PETITION STATEMENT
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`RESPONSE TO OFFICE ACTION
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`MARK SECTION (no change)
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`Section 2(e)(1) Refusal Made Final. In an office action dated January 17, 2006, the Examining
`Attorney objected that Applicant’s mark, SINUS RINSE, was merely descriptive of Applicant’s
`goods, namely, “pharmaceutical preparations for treatment of nasal ailments.” On July 14, 2006,
`Applicant submitted evidence that its mark has acquired distinctiveness through long and continuous
`use in relation to its products. On August 29, 2006, the Examining Attorney issued a second Office
`Action, this time objecting that Applicant’s mark is generic and, therefore, incapable of serving as a
`source-identifier for Applicant’s goods. On December 28, 2006, Applicant submitted arguments in an
`attempt to overcome this refusal, along with further evidence that its mark has acquired
`distinctiveness. Applicant also provided information regarding its diligent enforcement efforts. On
`February 19, 2007, the Examining Attorney issued a final Office Action, asserting that the proposed
`mark is incapable of serving as a source-identifier for Applicant’s goods. Applicant respectfully
`submits that its mark is not generic for the reasons set forth below.
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`As stated in H. Marvin Girm Corp. v. Int ‘Z Association ofFire Chiefs, Inc., 782 F.2d 987, 228 USPQ
`528, 530 (Fed Cir. 1986), “determining whether a mark is generic therefore involves a two-step
`inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be
`registered or retained on the register understood by the relevant public primarily to refer to that genus
`of goods or services?” The Examining Attorney has the burden of proving that a term is generic by
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`file://\\ticrs-ais-O1\ticrsexport\HtmlToTifi’Input\POA000 12008_03_26_15_08_5 5_TTABO...
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`3/26/2008
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`Pursuant to 37 C.F.R. § 2.64(b), Applicant submits this Request for Reconsideration in response to the
`final Ofiice Action dated February 29, 2007.
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`

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`Petition To Revive For Office Action
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`Page 2 of 16
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`clear evidence. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141
`(Fed. Cir. 1987). The Examining Attorney has not met that burden here.
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`The genus of the goods at issue is pharmaceutical preparations for treatment of nasal ailments.
`Specifically, Applicant’s product is a saline solution that is intended to be used for “nasal irrigation.”
`According to the Wikipedia entry attached hereto as Exhibit A, nasal irrigation is “an ancient personal
`hygiene practice, originating from the Yoga practice of Jala Neti (literally: ‘water cleansing’), which
`involves regularly flooding the nasal cavity with warm salty water...” i.e., the “prepared saline
`solution.” Note that the generic term used by the online encyclopedia is not “SINUS RINSE,” but
`“saline solution.” Like the title “Fire Chief’ for a magazine in the field of fire fighting, SINUS
`RINSE is not literally a genus or class name, but is at most descriptive of the class. See H. Marvin
`Ginn Corp., 782 F.2d at 991, 228 USPQ at 532 (holding FIRE CHIEF not generic for publications).
`Moreover, like the term “cash management account,” “SINUS RINSE” does not “immediately and
`unequivocally” describe the product at issue. See In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
`828 F.2d at 1571, 4 USPQ2d at 1144 (CASH MANAGEMENT ACCOUNT for “stock brokerage
`services, administration of money market fund services, and providing loans against securities
`services” held merely descriptive, rather than generic, and remanded to Board to consider § 2(1)
`evidence).
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`Although Applicant’s pharmaceutical preparations are intended to treat chronic nasal allergies and
`disease, Applicant submits that the term “SINUS RINSE” as a whole is not used generically amongst
`the consumers who buy Applicant’s products and amongst the medical professionals who prescribe
`such products. Attached hereto as Exhibit B is a report printed by the American Medical Association
`(“AMA”), the foremost authority on medical matters in the United States, detailing a study conducted
`for treatment of chronic sinonasal symptoms. The report properly describes the common generic term
`for Applicant’s product as “nasal saline,” “saline solution,” or “nasal irrigations,” with the proper
`technical term expressed as “isotonic sodium chloride solution.” Id. On the second page of the report
`(under the heading “Intervention”, the AMA specifically references Applicant’s SINUS RINSE brand
`inigations as one of the products utilized in the randomized controlled trial.
`Ia’. Numerous other
`official medical studies also use the appropriate generic terms for Applicant’s product. See e.g.,
`Exhibit C for printouts of articles in the National Center for Biotechnology Information archives
`referring to nasal irrigation studies, and Exhibit D for a report by Dr. Diane Heatley entitled “The
`Safety and Efficacy of Nasal Saline Irrigation” (using the term “nasal saline,” and specifically
`referencing Applicant’s product on p. 17).
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`.It is apparent that the overwhelming majority of informed and reputable sources use the proper generic
`terms for Applicant’s product. See e.g., a National Public Radio article entitled “Got a Runny Nose?
`Flush It Out!” attached hereto as Exhibit E (using “saline irrigation”); a University of Wisconsin
`School of Medicine and Public Health study, attached hereto as Exhibit F (“nasal irrigation”); and the
`Herbs for Health website, attached hereto as Exhibit C (using “nasal rinse”) See also a printout from
`Amazon.com showing listings of products under the generic heading “nasal irrigation” at Exhibit H.
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`In View of the foregoing evidence, Applicant submits that the materials set forth by the Examining
`Attorney fail to prove that “SINUS RINSE” is used by the relevant public primarily to refer to the
`applicable genus of goods. The Examining Attomey’s attached evidence notably neglects to include
`any dictionary or encyclopedia references for the phrase as a whole, but merely consists of a few
`examples of advertisements for other products and news articles. Since there is no way to determine
`what motivated the cited parties to use the term in such manners, it is inappropriate to give a great deal
`of weight to such references. See In re Federated Dept. Stores Inc., 3 USPQ 2d 1541 (TTAB 1987)
`(THE CHILDREN’S OUTLET, with “outlet” disclaimed, held capable of functioning as a mark, with
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`file ://\\ticrs-ais-O 1 \ticrsexport\HtmlToTiffInput\POA000 12008_03_26_1 5_O8_5 5__TTABO. ..
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`3/26/2008
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`

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`Petition To Revive For Office Action
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`Page 3 of 16
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`evidence submitted by applicant sufficient to establish acquired distinctiveness pursuant to § 2(f));
`McCarthy on Trademarks and Unfair Competition, § 12:28 (4th Ed.) (“the mere appearance of aterm
`in a generic sense in dictionaries and trade publications should not be held as absolute proof of the
`genericness of that term. . .”) In any event, several isolated references are insufficient evidence to
`prove common or even wide use of the term to the extent that an Examining Attorney can come to a
`conclusion as to the highly descriptive nature of the term. See In re Federated Dept. Stores Inc., 3
`USPQ 2d 1541 (TTAB 1987).
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`In this age of the Internet, a trademark owner cannot be expected to be immediately aware of, and to
`prevent, every single infringing use of its mark by third parties. The law simply imposes on
`trademark owners the duty to be proactive and to attempt to reasonably police the relevant market for
`infringers. McCarthy on Trademarks and Unfair Competition, § 12:28 (4th Ed.) Applicant has
`always undertaken an active program of prosecuting infringers in order to maintain the distinctiveness
`and strength of its trademark. Prior to the issuance of this office action, Applicant commenced
`litigation for trademark infringement against B.F. Ascher & Company, Inc. (“Ascher”) in connection
`with its “SINUS RINSE KIT,” the first referenced “example” of generic use set forth by the
`Examining Attorney. The matter has been resolved and Ascher has ceased manufacturing all products
`bearing the SINUS RINSE mark, and has changed the product name to “Ayr Saline Nasal Rinse Kit.”
`Attached hereto as Exhibit I is the relevant product page from Ascher’s website depicting the new
`packaging for the “Ayr Saline Nasal Rinse Kit.”
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`Applicant has been diligently working to curtail all unauthorized uses of its trademark through an
`aggressive enforcement campaign. Applicant has contacted numerous website owners in an effort to
`educate them as to the proper use of the SINUS RINSE trademark and to prevent further
`infringement. Applicant’s efforts have resulted in the removal of the infringing content on the
`following websites cited by the Examining Attorney in its Office Action dated August 29, 2006:
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`o Desert Bloom Herbs (www.desertbloomherbs.com)
`o FeelGoodStore.com (wWw.feelgoodstore.com)
`o The Oregon Lung Specialists, LLC (www.lungdoc.md)
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`Furthermore, in response to Applicant’s cease and desist letters, the following vendors of nasal rinse
`products have amended their Internet advertisements to remove improper references to Applicant’s
`product:
`’
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`o By The Planet, Inc. (www.bytheplanet.com)
`o Sinol USA, Inc. (www.sinolusa.com)
`0 Joe Johnson (www.SinuslnfectionDiscovery.com)
`o SiCap Industries, LLC (www.sinusbuster.com)
`o Silver Sinus.com (www.SilverSinus.com)
`o Victory Enterprises, Inc. (www.VictoryStore.com)
`o Good Health Advertising (www.understanding-allergyfacts.com)
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`Applicant also received confirmation from the Oregon Sinus Center at Oregon Health & Science
`University that its statement on its website at ohsu.edu was in fact a direct reference to Applicant’s
`product. The University agreed to modify the reference to properly attribute Applicant’s trademark
`rights. Applicant is continuing to follow up with the remaining offenders to likewise ensure their
`prompt compliance.
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`Applicant believes that the aforementioned Internet activities, such as sponsorship of improper
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`file://\\ticrs-ais-01\ticrsexport\HtmlToTiffInput\POA000 l2008_03_26_15_08_5 5_TTABO...
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`3/26/2008
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`

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`Petition To Revive For Office Action
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`Page 4of 16
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`Internet advertisements and unauthorized uses of its mark without proper trademark attribution, are
`likely to lead to confusion, mistake and deception among the trade and the public, and to dilute the
`distinctiveness its valuable mark. Consequently, Applicant has always placed a high priority on
`policing the inarket for potential infringers, and it continues to invest considerable resources in
`enforcing its trademark rights.
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`Trademark enforcement is an ongoing process. The mere fact that at any given moment there may be
`several instances of unauthorized use of a mark on the Internet does not constitute sufficient evidence
`to render a mark generic. Without further proof that the industry as a whole utilizes “SINUS RINSE”
`in a generic manner, or that consumers recognize the term to primarily refer to a broad genus of
`products, such isolated examples do not meet the burden required of an Examining Attorney to prove
`that a mark is generic.
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`Conclusion. SINUS RINSE is not a generic mark because neither the relevant universe of medical
`industry professionals who prescribe Applicant’s product for their patients, nor the relevant universe
`of consumers who purchase the product at pharmacies and retail stores, primarily use or understand
`the term to refer to a genus of nasal inigation products. Rather, due to Applicant’s substantially
`exclusive and continuous use of the SINUS RINSE mark since May 2000, Applicant’s customers
`recognize SINUS RINSE as the brand name of Applicant’s particular saline solution remedy and they
`associate the term exclusively with Applicant. As a result of the considerable time, money and effort
`Applicant has expended promoting its SINUS RINSE trademark and developing customer recognition
`and goodwill in the trademark worldwide, SINUS RINSE has developed secondary meaning in the
`eyes ofthe consuming public. (See Declaration of Applicant Under 15 U.S.C. § 1052(f), submitted
`July 14, 2006, setting forth evidence in support of Applicant’s claim of acquired distinctiveness.)
`Accordingly, Applicant respectfully submits that its mark qualifies for registration on the Principal
`Register. At a minimum, even if the Examining Attorney does not accept Applicant’s evidence of
`acquired distinctiveness, Applicant’s mark is certainly not generic and should qualify for registration
`on the Supplemental Register.
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`"
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`It is submitted that the application is in condition for publication, and early favorable action is
`requested. In order to preserve its rights in this matter, Applicant is also filing, under separate cover, a
`Notice of Appeal Under 37 C.F.R. § 2.141, a copy of which is attached as Exhibit J.
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`Petition To Revive For Office Action
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`Petition To Revive For Office Action
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`http://tgate/PDF/POA/2007/11/26/20071126162020434530-
`78655908-01 1_OO9/evi_723464230-
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`Petition To Revive For Office Action
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`Page 9 of 16
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`PAYMENT SECTION
`TOTAL AMOUNT
`TOTAL FEES DUE
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`Exhibits A,-J in support of Applicant's arguments
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`SIGNATURE SECTION
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`;§1§’I1¥IEL1;‘(7;E)D
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`SIGNATORY's NAME
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`Ketan C. Mehta
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`SIGNATOWS
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`USPTOWOA-72.34.64. 230-20
`071126162020434530-786559
`08-400a321763c79e65d12c51
`ddd4cc69a32-DA- 1347-20071
`126143027975213
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`TEAS STAMP
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`PTO Fonn 2194 (Rev 9/2005)
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`OMB No. 0651-0054 (Exp. 11/30/2008)
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`Petition To Revive For Office Action
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`To the Commissioner for Trademarks:
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`file ://\\ticrs-ais—0 1 \ticrs export\HtmlToTiflInput\POA00012008_03__26_15_08_5 5_TTABO . ..
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`3/26/2008
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`Petition To Revive For Office Action
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`Page 10 of 16
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`Application serial no. 78655908 has been amended as follows:
`PETITION
`Petition Statement
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`Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified
`deadline was unintentional, and requests the USPTO to revive the abandoned application.
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`RESPONSE TO OFFICE ACTION
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`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`Pursuant to 37 C.F.R. § 2.64(b), Applicant submits this Request for Reconsideration in response to the
`final Office Action dated February 29, 2007.
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`In an office action dated January 17, 2006, the Examining Attorney
`Section 2(e)(1) Refusal Made Final.
`objected that Applicant’s mark, SINUS RINSE, was merely descriptive of Applicant’s goods, namely,
`“pharmaceutical preparations for treatment of nasal ailments.” On July 14, 2006, Applicant submitted
`evidence that its mark has acquired distinctiveness through long and continuous use in relation to its
`products. On August 29, 2006, the Examining Attorney issued a second Office Action, this time
`objecting that Applicant’s mark is generic and, therefore, incapable of serving as a source-identifier for
`Applicant’s goods. On December 28, 2006, Applicant submitted arguments in an attempt to overcome
`this refusal, along with further evidence that its mark has acquired distinctiveness. Applicant also
`provided information regarding its diligent enforcement efforts. On February 19, 2007, the Examining
`Attorney issued a final Office Action, asserting that the proposed mark is incapable of serving as a
`source-identifier for Applicant’s goods. Applicant respectfully submits that its mark is not generic for
`the reasons set forth below.
`
`As stated in H. Marvin Ginn Corp. v. Int’l/lssociation ofFire Chiefs, Inc., 782 F.2d 987, 228 USPQ
`528, 530 (Fed Cir. 1986), “determining whether a mark is generic therefore involves a two-step inquiry:
`First, what is the genus of goods or services at issue? Second, is the term sought to be registered or
`retained on the register understood by the relevant public primarily to refer to that genus of goods or
`services?” The Examining Attorney has the burden of proving that a term is generic by clear evidence.
`In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). The
`Examining Attorney has not met that burden here.
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`The genus of the goods at issue is pharmaceutical preparations for treatment of nasal ailments.
`Specifically, Applicant’s product is a saline solution that is intended to be used for “nasal irrigation.”
`According to the Wikipedia entry attached hereto as Exhibit A, nasal irrigation is “an ancient personal
`hygiene practice, originating from the Yoga practice of Jala Neti (literally: ‘water cleansing’), which
`involves regularly flooding the nasal cavity with warm salty water. . .” i.e., the “prepared saline
`solution.” Note that the generic term used by the online encyclopedia is not “SINUS RINSE,” but
`“saline solution.” Like the title “Fire Chief’ for a magazine hi the field of fire fighting, SINUS RINSE
`is not literally a genus or class name, but is at most descriptive of the class. See H. Marvin Ginn C0rp.,
`782 F.2d at 991, 228 USPQ at 532 (holding FIRE CHIEF not generic for publications). Moreover, like
`the term “cash management account,” “SINUS RINSE” does not “immediately and unequivocally”
`describe the product at issue. See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d at 1571, 4
`USPQ2d at 1144 (CASH MANAGEMENT ACCOUNT for “stock brokerage services, administration of
`money market fund services, and providing loans against securities services” held merely descriptive,
`rather than generic, and remanded to Board to consider § 2(1) evidence).
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`Although Applicant’s pharmaceutical preparations are intended to treat chronic nasal allergies and
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`file ://\\ticrs-ais—0l\ticrsexport\HtmlToTifiInput\POA000 l2008_03_26_15_08_5 5_TTABO. ..
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`Petition To Revive For Office Action
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`Page 11 of 16
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`disease, Applicant submits that the term “SINUS RINSE” as a whole is not used generically amongst the
`consumers who buy Applicant’s products and amongst the medical professionals who prescribe such
`products. Attached hereto as Exhibit B is a report printed by the American Medical Association
`(“AMA”), the foremost authority on medical matters in the United States, detailing a study conducted
`for treatment of chronic sinonasal symptoms. The report properly describes the common generic term
`for Applicant’s product as “nasal saline,” “saline solution,” or “nasal irrigations,” with the proper
`technical term expressed as “isotonic sodium chloride solution.” Id. On the second page of the report
`(under the heading “Intervention”, the AMA specifically references Applicant’s SINUS RINSE brand ,
`irrigations as one of the products utilized in the randomized controlled trial. Id. Numerous other official
`medical studies also use the appropriate generic terms for Applicant’s product. See e.g., Exhibit C for
`printouts of articles in the National Center for Biotechnology Information archives referring to nasal
`irrigation studies, and Exhibit D for a report by Dr. Diane Heatley entitled “The Safety and Efficacy of
`Nasal Saline Irrigation” (using the term “nasal saline,” and specifically referencing Applicant’s product
`on p. 17).
`
`It is apparent that the overwhelming majority of informed and reputable sources use the proper generic
`terms for Applicant’s product. See e.g., a National Public Radio article entitled “Got a Runny Nose?
`Flush It Out!” attached hereto as Exhibit E (using “saline irrigation”); a University of Wisconsin School
`of Medicine and Public Health study, attached hereto as Exhibit F (“nasal irrigation”); and the Herbs for
`Health website, attached hereto as Exhibit G (using “nasal rinse.”) See also a printout from
`Amazon. com showing listings of products under the generic heading “nasal irrigation” at Exhibit H.
`
`In View of the foregoing evidence, Applicant submits that the materials set forth by the Examining
`Attorney fail to prove that “SINUS RINSE” is used by the relevant public primarily to refer to the
`applicable genus of goods. The Examining Attomey’s attached evidence notably neglects to include any
`dictionary or encyclopedia references for the phrase as a whole, but merely consists of a few examples
`of advertisements for other products and news articles. Since there is no way to determine what
`motivated the cited parties to use the term in such manners, it is inappropriate to give a great deal of
`weight to such references. See In re Federated Dept. Stores Inc., 3 USPQ 2d 1541 (TTAB 1987) (THE
`CHlLDREN’S OUTLET, with “outlet” disclaimed, held capable of functioning as a mark, with evidence
`submitted by applicant sufficient to establish acquired distinctiveness pursuant to § 2(1)); McCarthy on
`Trademarks and Unfair Competition, § 12:28 (4th Ed.) (“the mere appearance of a term in a generic
`sense in dictionaries and trade publications should not be held as absolute proof of the genericness of
`that term. . .”) In any event, several isolated references are insufficient evidence to prove common or
`even wide use of the term to the extent that an Examining Attorney can come to a conclusion as to the
`highly descriptive nature ofthe term. See In re Federated Dept. Stores Inc., 3 USPQ 2d 1541 (TTAB
`1987).
`
`In this age of the Internet, a trademark owner carmot be expected to be immediately aware of, and to
`prevent, every single infringing use of its mark by third parties. The law simply imposes on trademark
`owners the duty to be proactive and to attempt to reasonably police the relevant market for infringers.
`McCarthy on Trademarks and Unfair Competition, § 12:28 (4th Ed.) Applicant has always undertaken
`an active program of prosecuting infringers in order to maintain the distinctiveness and strength of its
`trademark. Prior to the issuance of this office action, Applicant commenced litigation for trademark
`infringement against B.F. Ascher & Company, Inc. (“Ascher”) in connection with its “SINUS RINSE
`KIT,” the first referenced “example” of generic use set forth by the Examining Attomey. The matter has
`been resolved and Ascher has ceased manufacturing all products bearing the SINUS RINSE mark, and
`has changed the product name to “Ayr Saline Nasal Rinse Kit.” Attached hereto as Exhibit I is the
`relevant product page from Ascher’s website depicting the new packaging for the “Ayr Saline Nasal
`Rinse Kit.”
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`Petition To Revive For Office Action
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`Page 12 of 16
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`Applicant has been diligently working to curtail all unauthorized uses of its trademark through an
`aggressive enforcement campaign. Applicant has contacted numerous website owners in an effort to
`educate them as to the proper use of the SINUS RINSE trademark and to prevent further infringement.
`Applicant’s efforts have resulted in the removal ofthe infringing content on the following websites cited
`by the Examining Attomey in its Ofiice Action dated August 29, 2006:
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`o Desert Bloom Herbs (www.desertbloomherbs.com)
`o Fee1GoodStore.com (www.feelgoodstore.com)
`o The Oregon Lung Specialists, LLC (www.lungdoc.md)
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`Furthermore, in response to Applicant’s cease and desist letters, the following vendors of nasal rinse
`products have amended their Internet advertisements to remove improper references to Applicant’s_
`product:
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`By The Planet, Inc. (www.bythep_lanet.com)
`Sinol USA, Inc. (www.sinolusa.com)
`Joe Johnson (www.SinusInfectionDiscovery.com)
`SiCap Industries, LLC (www.sinusbuster.com)
`Silver Sinus.com (www.SilverSinus.com)
`Victory Enterprises, Inc. (www.VictoryStore.com)
`Good Health Advertising (www.understanding-allergyfacts.com)
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`Applicant also received confirmation from the Oregon Sinus Center at Oregon Health & Science
`University that its statement on its website at ohsu.edu was in fact a direct reference to Applicant’s
`product. The University agreed to modify the reference to properly attribute Applicant’s trademark
`rights. Applicant is continuing to follow up with the remaining offenders to likewise ensure their
`prompt compliance.
`
`Applicant believes that the aforementioned Internet activities, such as sponsorship of improper Internet
`advertisements and unauthorized uses of its mark without proper trademark attribution, are likely to lead
`to confusion, mistake and deception among the trade and the public, and to dilute the distinctiveness its
`valuable mark. Consequently, Applicant has always placed a high priority on policing the market for
`potential infringers, and it continues to invest considerable resources in enforcing its trademark rights.
`
`Trademark enforcement is an ongoing process. The mere fact that at any given moment there may be
`several instances of unauthorized use of a mark on the Internet does not constitute sufficient evidence to
`render a mark generic. Without further proof that the industry as a whole utilizes “SINUS RINSE” in a
`generic manner, or that consumers recognize the term to primarily refer to a broad genus of products,
`such isolated examples do not meet the burden required of an Examining Attorney to prove that a mark
`IS generic.
`
`Conclusion. SINUS RINSE is not a generic mark because neither the relevant universe of medical
`industry professionals who prescribe Applicant’s product for their patients, nor the relevant universe of
`consumers who purchase the product at pharmacies and retail stores, primarily use or understand the
`term to refer to a genus of nasal irrigation products. Rather, due to Applicant’s substantially exclusive
`and continuous use of the SINUS RINSE mark since May 2000, Applicant’s customers recognize
`SINUS RINSE as the brand