United States Patent and Trademark Office (USPTO)

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

The Applicant, Agadia Systems Inc., seeks to register the mark “FormularyHub” in standard characters for International Class 42 “customizing computer software.”  The Examining Attorney refuses registration of the Applicant’s mark under Trademark Act Section 2(e)(1), because the proposed mark merely describes a function or characteristic of the Applicant’s services. Additionally, the application has been refused registration on the Principal Register, under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127, because the specimen of record does not evidence an association between the mark and the services specified in the application.  The Examining Attorney respectfully requests that these refusals be affirmed.

FACTS

Applicant applied to register the proposed mark FORMULARYHUB on the Principal Register for “Customizing computer software” in class 42.  On September 9, 2020, the Examining Attorney refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. Section 1052(e)(1), because the proposed mark is merely descriptive of the applied for services. On March 8, 2021 Applicant submitted arguments against the merely descriptive refusal.  Following review of the submitted documents and further review of the original specimen, the Examining Attorney determined the specimen of record was not acceptable and issued a non-final Office Action on March 11, 2021 to address the specimen issue.    The Applicant responded to the non-final action on September 10, 2021.  The Examining Attorney issued a Final Refusal to register under Section 2(e)(1) and Sections 1 and 45 of the Trademark Act, 15 U.S.C. §1051, 1127, on December 09, 2021, because the specimen does not show the applied-for mark in use in commerce in connection with any of the identified services.  This appeal of the Section 2(e)(1) refusal and the Sections 1 and 45 of the Trademark Act, 15 U.S.C. §1051, 1127 refusal, filed September 8, 2022, follows the Examining Attorney’s denial of the Applicant’s Request for Reconsideration. 

 

ARGUMENTS

 

I.                THE PROPOSED MARK “FORMULARYHUB,” WHEN USED IN CONNECTION WITH APPLICANT’S SERVICES  IS MERELY DESCRIPTIVE WITHIN THE MEANING OF SECTION 2(e)(1) OF THE TRADEMARK ACT, 15 U.S.C. SECTION 1052(e)(1).

 

II.             APPLICANT’S SPECIMEN DOES NOT SHOW USE OF THE MARK IN CONNECTION WITH THE RELEVANT SERVICES

 

 

 

I.                SECTION 2(e)1 MERELY DESCRIPTIVE REFUSAL

 

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.  See, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015).   As evidenced by the record, “FORMULARYHUB” gives the immediate idea of a function or characteristic of the Applicant’s services because the individual terms in the mark are merely descriptive, and these terms retain their descriptive significance when combined together.

 

1. THE TERMS THAT COMPRISE THE MARK ARE DESCRIPTIVE WITHIN THE MEANING OF SECTION 2(e)(1) OF THE TRADEMARK ACT, 15 U.S.C. SECTION 1052(e)(1).

In this case, the individual words in applicant’s mark convey an immediate idea of a feature, characteristic, purpose, or use of applicant’s identified software services.  The term FORMULARY is defined as “a collection of formulas for the compounding of medicinal preparations...” (See the attached dictionary definition from The Free Dictionary, attached as pages 46-48 of the December 12, 2021 Final Refusal). As is shown by the evidence of record, applicant designs, develops and customizes software it refers to as a “Formulary Solution” where users can “manage formulary modules.”  (See webpage evidence from agadia.com, attached as pages 4-7 of the September 9, 2020 Office Action; See webpage evidence from agadia.com, attached as pages 6-9 of the December 09, 2021 Final Refusal). 

As is shown by the evidence of record, “formulary” is a term of art within applicant’s industry.  For the convenience of the Board, the examining attorney outlines a sample of the evidence of record.  Please see:

1. Evidence from healthcarevaluehub.org, attached as pages 51-54 of the December 09, 2022 Final Refusal showing use of the term.  “The Department of Health & Human Services requires health plans to use pharmacy and therapeutics (P&T) committees to ensure that formulary lists sufficiently cover prescription drugs…”
2. Evidence from www.ibx.com, attached as pages 59-60 of the December 09, 2022 Final Refusal showing use of the term.  “Before prescribing a medication to an Independence member, please consider whether the drug is included in the formulary…”

The examining attorney further references the third-party registration attached as pages 49-50 of the December 09, 2022 Final Refusal. Thus, the term FORMULARY immediately conveys an idea to consumers of a use or function of applicant’s services.   

The term HUB also conveys information about applicant’s services. “HUB” means “the effective center of an activity, region, or network” and is another name for a portal, a website or other means of accessing content. (See the definition from www.lexico.com, attached as page 6 of the September 9, 2020 Office action; See the definition from www.netlingo.com attached as pages 44-45 of the December 09, 2022 Final Refusal).  Across multiple industries, the term “HUB” is used to refer to a centralized portal of data.  For the convenience of the Board, the examining attorney outlines a sample of the evidence of record.  Please see:

1.     Evidence from www.imagetrend.com, provided at pages 4-5 of the July 12, 2022 Denial of Applications Request for Reconsideration showing use of the phrase “Health Information Hub” for a centralized portal for health related data.

2.     Evidence from www.ruralhealthinfo.org, provided at pages 6-7 of the July 12, 2022 Denial of Applications Request for Reconsideration showing use of the phrase “Rural Health Information Hub” for a centralized portal for health related data.

3.     Evidence from www.medicalnewstoday.com provided at pages 8-22 of the July 12, 2022 Denial of Applications Request for Reconsideration showing use of the phrase “content hubs” for a centralized portal for health related data.

4.     Evidence from elsevier.health provided at pages 23-28 of the July 12, 2022 Denial of Applications Request for Reconsideration showing use of the phrase “Healthcare Hub” for a centralized portal for health related data.

Additionally, the evidence from the December 09, 2021, final refusal consists of third-party registrations with the term HUB disclaimed or registered on the Supplemental Register. (See pages 10-43).  Third-party registrations featuring services the same as or similar to applicant’s services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register.  E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)). 

As the applicant’s website indicates, the software Agadia customizes functions for users as centralized location for a collection of formulas. (See webpage evidence from agadia.com, attached as pages 2-5 of the September 9, 2020 Office Action). 

2. THE MARK IS MERELY DESCRIPTIVE BECAUSE THE TERMS IN “FORMULARYHUB” RETAIN THEIR MERELY DESCRIPTIVE SIGNIFICANCE WHEN COMBINED TOGETHER.

 

If the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, 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).  Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the 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).

When combined, the wording FORMULARYHUB immediately informs consumers that the applicant customizes online software that creates a centralized location for a collection of formulas. As stated by the Applicant, “FormularyHub simplifies formulary management by enabling Health Plans and PMBs to create, administer, manage and publish both pharmacy and medical benefit formularies through a centralized solution in an automated fashion [emphasis added].” (See Applicant’s March 8, 2021 Response to Office Action Response to Office Action, page 2).   As such, the combination of the terms is not incongruous and does not create an otherwise non-descriptive meaning.  The composite of the terms in “FORMULARYHUB” is itself merely descriptive and must be refused under Section 2(e)(1) of the Trademark Act.

I.                Applicant Contends the mark is arbitrary and/or suggestive

Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey). See , e.g., Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).  A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the services described in the mark; whereas a descriptive term immediately and directly conveys some information about the services.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014). 

II.              Applicant contends the examining attorney failed to consider the mark as a whole.

Marks comprising more than one element must be considered as a whole and should not be dissected; however, a trademark examining attorney may consider the significance of each element separately in the course of evaluating the mark as a whole.  See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012).  As established by the evidence of record, each element of the mark was considered separately and as a whole.

III.            Applicant points to third party registrations in support of registration of its mark

 

Applicant argues marks containing the wording HUB and FORMULARY have been permitted on the register.  (See Applicant’s brief, pages 14). Vocabulary used in the computer and electronics fields is particularly noted for changing rapidly, and descriptiveness is determined based on the facts and evidence in the record at the time registration is sought.  In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000) (noting “a year or two is an eternity in ‘Internet time,’ given the rapid advancement of the Internet into every facet of daily life”).  A term that was once arbitrary or suggestive may lose its distinguishing and origin-denoting characteristics through use in a descriptive sense over a period of time, and come to be regarded by the purchasing public as nothing more than a descriptive designation.  In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987).

3. THE CASES CITED BY APPLICANT TO SUPPORT ITS CONCLUSION ARE DISTINGUISHABLE FROM THE CASE AT ISSUE.

Applicant points to multiple software and technology cases to argue that its mark is not descriptive. (See Applicant’s brief, pages 16-18).  The cases relied on by the applicant are distinguishable from the cast at issue.  Moreover, the examining attorney notes none of the cases relied on by the applicant are citable as precedent of the TTAB. 

In In re Lockheed Martin Corp. the combination of the wording “PC on a stick” was incongruous, and did not refer to the functionality of the software.  In this instance, as discussed above, each of the terms in FORMULARYHUB.COM describe the services individually and as a whole. 

The applicant next refers to In re DLI Engineering Corporation.  However, DLI is also distinguishable from the matter at hand.  In that case, while SMARMACHINE was determined to be descriptive and required to be disclaimed, the Section 2(e)1 was reversed because “TECHNOLOGIES” at the time the decision was rendered was deemed “amorphous.”  See In re DLI Engineering Corp., 2001 WL 1059829, at *5, Serial Number 75/725,582 (TTAB 2001).  In this instance, the terms in applicant’s mark have clear meaning in relation to the services.

The applicant next refers to In re On Technology Corp.  However, this matter is also distinguishable.  In that matter, the combination of the terms AUDITTRACK created an ambiguity that is not present in this instance.  See 41 U.S.P.Q.2D (BNA) 1475 (Trademark Trial & App. Bd. November 26, 1996).  As discussed above, the applicant customizes online software that acts as a center for formularies.   

The applicant next relies on the In re Apotex Technologies Inc. Serial Number 78429952 (TTAB 2007). However, this matter is also distinguishable because the term “I” in relation to “pharmacist” was determined to be “nebulous” at the time of the decision. 

In In re Somberg the evidence presented by the applicant established the software in question had “nothing to do with determining or tracking a drug’s therapeutic window.”  See In re Somberg, Serial Number 75105514 (TTAB 1999).  The converse is true here; the applicant’s website demonstrates the applicant customizes software used to create a centralized solution for formularies. 

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).  (See Applicant’s brief, page 16).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.

4. THE PROCEDURAL ARGUMENTS RAISED BY THE APPLICANT DO NOT AFFECT REGISTERABILITY OF THE CURRENT APPLICATION

 

Applicant argues that because application Serial Number 90060221 was approved for publication, the Examining Attorney is barred from challenging this application as being “merely descriptive.”  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). 

Applicant’s argument that judicial estoppel applies and reliance on Trustees in Bankruptcy of North American Rubber Thread Co. Inc. v. U.S., 593 F.3d 1346, 1354 (Fed. Cir. 2010) is not well taken.  The appeal of application 90060221 was terminated without a ruling by the Board.  As the Board took no action due to the Examining Attorney’s withdraw of the refusal, the required factors have not been met.  Collateral estoppel applies where: "(1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party." Stephen Slesinger Inc. v. Disney Enters. Inc., 702 F3d 640, 644, 105 USPQ2d 1472, 1474 (Fed. Cir. 2012).  As the matter has not been adjudicated, neither estoppel, nor Res Judicata applies. 

Applicant further objects to the evidence included in the December 09, 2021, Final Office Action and the evidence in the July 12, 2022 Denial of the Request for Reconsideration.  The record in any application should be complete prior to appeal.  37 C.F.R. §2.142(d); TMEP §1501.02(b); see In re ADCO Indus.-Techs., L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020).  All evidence objected to by the applicant was introduced prior to the appeal of this application and is proper.  The Applicant argues the Examining Attorney including definitions in Final Office Action is an attempt to “maneuver around” failures to previously define terms.  (See Applicant’s Brief, page 12).  The Applicant fails to note that at appeal, the TTAB may take judicial notice of encyclopedia entries, reference works and definitions.  See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1747 n.15 (TTAB 2018); See TBMP §1208.04.  As such, Applicant’s assertions are contrary to applicable law as the Examining Attorney could have requested judicial notice of these definitions at appeal.    

II.      APPLICANT’S SPECIMEN DOES NOT SHOW USE OF THE MARK IN CONNECTION WITH THE RELEVANT SERVICES

 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the

applied-for mark as actually used in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

When determining whether a mark is used in connection with the services in the application, a

key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).

To show a direct association, specimens consisting of advertising or promotional materials must

(1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something that creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).

The initial and only specimen submitted by Applicant fails to show the applied-for mark in connection with the software customization services in the application.   As its specimen, Applicant has submitted a brochure featuring the FORMULARYHUB mark.  The specimen refers to FORMULARYHUB as a “fully customizable solution.”  This specimen makes clear that FORMULARYHUB is a software service that the user can customize to its preference. The specimen does not indicate that that applicant provides software customization under the FORMULARYHUB mark.  Accordingly, while applicant has shown software-as-a-service, it has not shown the service of customization of software in connection with the applied-for mark.

As part of its September 10, 2021 Response, the Applicant included the declaration of Sri Swarna.  This declaration states that “FormularyHub is a software-as-a-service solution.”  (See Applicant’s September 10, 2021, Response, page 17, paragraph 5).  The declaration goes on to state that “custom development requests are made using a change request (CR) process.  Agadia will develop the functional requirements document…”  This affidavit further demonstrates that while the Applicant may provide software customization services under the Agadia mark, “FORMULARYHUB” is merely the name of the software being provided. 

Applicant argues that it is preforming the services through the software. When services are provided through software, it is possible for a mark to serve as a source indicator for the services provided and not just for the software itself. See In re JobDiva,843 F.3d 936, 941, 121 USPQ2d 1122, 1126 (Fed. Cir.2016) ("Even though a service may be performed by a company’s software, the company may well be rendering a service.").  However, in this instance, based on the evidence of record, FORMULARYHUB appears merely to be the software developed by the applicant. If any customization occurs, the record indicates that service is provided by Agadia.  Customizing ones own software is an activity that is not a separable registerable service.    Neither the specimen of record nor supporting evidence establishes any customization provided through the FORMULARYHUB software.

In this case, the specimen does not make a direct link or connection between the applied-for mark and the services. See TMEP § 1301.04(i). There is no indication in the specimen of record that the applicant provides software customization services.

 

III. CONCLUSION

          The evidence establishes that the individual components of applicant’s mark, “FORMULARY” and “HUB” are merely descriptive of applicant’s identified services.  Further, the evidence shows that these terms retain their descriptive significance when combined to form the composite phrase “FORMULARYHUB”.  Further, for the reasons stated above, the Applicant’s specimen has failed to demonstrate acceptable use of the applied-for mark, FORMULARYHUB, in connection with “Customizing computer software”, in International Class 42.  For these reasons and those indicated above, the refusal to register the mark “FORMULARYHUB” for use with the identified services under 2(e)(1) of the Trademark Act and Sections 1 and 45 of the Trademark Act should be affirmed.

 

 

 

                                                                      Respectfully submitted,

 

 

/Keri-Marie Cantone/

Examing Attorney, Law Office 104

(571) 272-6069

Keri.Cantone@uspto.gov 

 

 

Zach Cromer

Managing Attorney

Law Office 104

571-272-6089

Zachary.Cromer@uspto.gov