To:
`Subject:
`Sent:
`Sent As:
`
`MARK A. WATKINS(iplaw@vorys.com)
`U.S. Trademark Application Serial No. 97253835 - CAREMATT - - 076046-09
`June 11, 2024 03:29:20 PM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`medilogix website.jpg
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  97253835
`
`Mark:   CAREMATT
`
`Correspondence Address:  
`Mark A. Watkins
`VORYS, SATER, SEYMOUR AND PEASE LLP
`P.O. BOX 2255
`COLUMBUS OH 43216-2255
`United States
`
`Applicant:   Medilogix, LLC
`
`Reference/Docket No.  076046-09
`
`Correspondence Email Address:   iplaw@vorys.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date:   June 11, 2024
`
`Applicant’s request for reconsideration is denied.   See 37 C.F.R. §2.63(b)(3).  The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1)
`raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence
`with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or
`shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`In the Office actions issued on November 25, 2022, registration was refused under Trademark Act
`Section 2(e)(1) for a merely descriptive mark. In the responses filed on May 18, 2023, and August 31,
`2023, applicant made arguments against this refusal. On February 23, 2024, a final Office action was
`issued, maintaining the refusal. 
`
`On May 23, 2024, applicant filed a request for reconsideration. The request for reconsideration is
`denied, as outlined below. 
`
`

`

`
`In the Office actions issued on November 25, 2022, and February 23, 2024, the examining attorney
`provided evidence that both the individual components and the composite result are descriptive of
`applicant’s goods, namely, mattresses and goods that consist of a thin surface layer for use in medical
`treatment of those in need.
`
`In the request for reconsideration, applicant argues that the applied-for mark is "suggestive rather than
`descriptive" and that the "two words were combined to create an entirely new term."  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 Zuma Array
`Ltd., 2022 USPQ2d 736, at *7 (TTAB 2022); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511,
`1516 (TTAB 2016); TMEP §1209.03(d); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices,
`Ltd., 695 F.3d 1247, 1255, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012) (holding SNAP SIMPLY SAFER
`merely descriptive for various medical devices, such as hypodermic, aspiration, and injection needles
`and syringes); In re Fallon, 2020 USPQ2d 11249, at *12 (TTAB 2020) (holding THERMAL MATRIX
`merely descriptive of a heat-responsive, malleable liner that is an integral component of an oral dental
`appliance). 
`
`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
`Omniome, Inc., 2020 USPQ2d 3222, at *4 (TTAB 2019) (citing In re Colonial Stores, Inc., 394 F.2d
`549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983)); In
`re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
`
`In this case, based on the evidence already of record, both the individual components and the composite
`result are descriptive of applicant’s goods, namely, mattresses and goods that consist of a thin surface
`layer for use in medical treatment of those in need.
`
`Further, applicant argues that the individual wording in the mark have other, non-descriptive meanings.
`However,  “[a] mark may be merely descriptive even if it does not describe the ‘full scope and extent’
`of the applicant’s goods.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371
`(Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d
`1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant
`function, attribute, or property. 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 In re Oppedahl & Larson LLP, 373
`F.3d at 1173, 71 USPQ2d at 1371.
`
`Moreover, applicant has attached third-party registrations featuring the wording "MATT".  The fact that
`third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the
`issue of descriptiveness or genericness. In re Consumer Prot. Firm PLLC, 2021 USPQ2d 238, at *22
`(TTAB 2021) (citing In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir.
`2001)); TMEP §1209.03(a). An applied-for mark that is merely descriptive or generic does not become
`registrable simply because other seemingly similar marks appear on the register. In re Consumer Prot.
`Firm PLLC, 2021 USPQ2d 238, at *22 (citing In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519
`(TTAB 1977)); TMEP §1209.03(a).
`
`
`It is well settled that each application must be decided on its own facts; the USPTO is not bound by
`prior decisions involving different records. See In re Boulevard Ent., Inc., 334 F.3d 1336, 1343, 67
`
`

`

`USPQ2d 1475, 1480 (Fed. Cir. 2003) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at
`1566); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a). The question
`of whether a mark is merely descriptive or generic is determined based on the evidence of record at the
`time each registration is sought. In re Consumer Prot. Firm PLLC, 2021 USPQ2d 238, at *22 (citing In
`re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064, 1067 (TTAB 2011)); TMEP
`§1209.03(a).
`
`Finally,  applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on
`applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571, 4
`USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Zuma Array Ltd., 2022 USPQ2d 736, at *8 (TTAB 2022)
`(quoting In re Fallon, 2020 USPQ2d 11249, at *8 (TTAB 2020)).  However, in the present case, the
`evidence of record leaves no doubt that the mark is merely descriptive.
`
`In addition to the evidence already of record, the attached evidence from applicant's website
`demonstrates use the wording "CARE" in connection with its goods to describe a function or purpose
`of its goods, namely, for use in medical treatment of those in need: 
`
`
`"Empower care providers to deliver continuity of care with products, services, and innovative
`patient care solutions."
`
`"Create an ecosystem of products, services and patient care solutions that provide our customers
`with unprecedented continuity of care." 
`
`"Provide products, services and patient care solutions that are simple, transparent, cost-effective,
`and make a difference for our customers and their patients."
`
`
`See  attached evidence from  https://www.medilogixllc.com/. 
`
`Based on the foregoing, both the individual components and the composite result immediately describe
`a feature, characteristic, purpose, or function of applicant’s goods, namely, mattresses and goods that
`consist of a thin surface layer (i.e., MATT) for use in medical treatment of those in need (i.e., CARE).
`
`Accordingly, the following refusal made final in the Office action dated February 23, 2024,
`is  maintained and continued: 
`
`
`•
`
`Section 2(e)(1) Refusal - Merely Descriptive
`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`In addition, the following requirement made final in that Office action is  satisfied:  
`
`
`•
`
`Information About Goods Requirement
`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will
`be notified to resume the appeal.   See TMEP §715.04(a).  
`
`If applicant has not filed an appeal and time remains in the response period for the final Office
`
`

`

`action, applicant has the remainder of that time to (1) file another request for reconsideration that
`complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a
`notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).
`
`
`/Andrew Crowder-Schaefer/
`Andrew Crowder-Schaefer
`Trademark Examining Attorney
`Law Office 104
`(571) 272-0087
`Andrew.CrowderSchaefer@USPTO.GOV
`
`
`
`

`

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`Empower care providersto deliver
`continuity of care with products,
`services, and innovative patient care
`solutions
`
`Create an ecosystem of products,
`services and patient care solutions
`that provide our customers with
`unprecedented continuity of care.
`
`eScmle)f-t
`
`Provide products, services and
`patient care solutions that are simple,
`transparent, cost-effective, and make
`a difference for our customers and
`their patients.
`
`medilogixllc.com
`
`11:00:44 AM 6/11/2024
`
`*
`
`

`

`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on June 11, 2024 for
`U.S. Trademark Application Serial No.  97253835
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You must respond to this Office action to avoid your application abandoning.  Follow
`the steps below.  
`
`(1)   Read the Office action.  This email is NOT the Office action.  
`
`(2)  Respond to the Office action by the deadline using the Trademark Electronic Application
`System (TEAS) or the Electronic System for Trademark Trials and Appeals (ESTTA), as
`appropriate.  Your response and/or appeal must be received by the USPTO on or before 11:59
`p.m. Eastern Time of the last day of the response deadline.  Otherwise, your application will
`be abandoned.  See the Office action itself regarding how to respond.  
`
`(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).  
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.  
`
`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 to ensure you receive important USPTO
`notices about your application.  
`
`Beware of trademark-related scams .  Protect yourself from people and companies that
`may try to take financial advantage of you.  Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you.  We will never request your credit card number or social security
`number over the phone.  Verify the correspondence originated from us by using your
`serial number in our database, TSDR, to confirm that it appears under the “Documents”
`tab, or contact the Trademark Assistance Center.  
`
`

`

`•
`
`Hiring a U.S.-licensed attorney .   If you do not have an attorney and are not required to
`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process.  The
`USPTO examining attorney is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.  
`
` 
`