Boehringer Ingelheim Pharmaceutic-als, Inc.

Trademark Trial and Appeal BoardNov 27, 2016

No. 86852106 (T.T.A.B. Nov. 27, 2016)

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 1960 (Rev 10/2011) OMB No. 0651-0050 (Exp 07/31/2017) Request for Reconsideration after Final Action The table below presents the data as entered. Input Field Entered SERIAL NUMBER 86852106 LAW OFFICE ASSIGNED LAW OFFICE 102 MARK SECTION MARK https://tmng-al.uspto.gov/resting2/api/img/86852106/large LITERAL ELEMENT BREATHLESS STANDARD CHARACTERS YES USPTO-GENERATED IMAGE YES MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color. EVIDENCE SECTION DESCRIPTION OF EVIDENCE FILE The Applicant believes firmly that it is entitled to registration on the Principal Register in this instance. Its services are the providing of information on and promoting awareness of idiopathic pulmonary fibrosis (IPF); persons with IPF have various symptoms; one such symptom can be shortness of breath; one meaning of the adjective "breathless" is "breathing with difficulty"; and that adjective can be used in reference to persons experiencing "shortness of breath" as a result of IPF. This is a classic, multistep reasoning process that must be performed in order to determine the nature of the services. As such, the mark BREATHLESS clearly is beyond the reach of Section 2(e)(1). At minimum, there is doubt here, and doubt on this absolute ground for refusal must be resolved in the Applicant's favor. See In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). The Applicant requests, in the alternative, to amend to the Supplemental Register. It strongly prefers not to settle for registration on the Supplemental Register, and intends to pursue registration on the Principal Register on appeal if the Examiner does not respond favorably to this Request for Reconsideration. Thus, the amendment to the Supplemental Register is in the alternative; the Applicant is not willing to formally accept registration on the Supplemental Register unless the Board holds, on appeal from the refusal to register, that the mark is merely descriptive. SIGNATURE SECTION RESPONSE SIGNATURE /Scott J. Major/ SIGNATORY'S NAME Scott J. Major SIGNATORY'S POSITION Attorney of record, VA bar member SIGNATORY'S PHONE NUMBER 703-465-5356 DATE SIGNED 11/27/2016 AUTHORIZED SIGNATORY YES CONCURRENT APPEAL NOTICE FILED NO FILING INFORMATION SECTION SUBMIT DATE Sun Nov 27 09:28:51 EST 2016 TEAS STAMP USPTO/RFR-XXX.XXX.XXX.XX- 20161127092851396793-8685 2106-570e91fd96d0901b35ff c994a9931dfd78d77dedb1642 3a23d1319c0b1f7188c6a-N/A -N/A-20161127083058525338 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 1960 (Rev 10/2011) OMB No. 0651-0050 (Exp 07/31/2017) Request for Reconsideration after Final Action To the Commissioner for Trademarks: Application serial no. 86852106 BREATHLESS(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/86852106/large) has been amended as follows: EVIDENCE Evidence in the nature of The Applicant believes firmly that it is entitled to registration on the Principal Register in this instance. Its services are the providing of information on and promoting awareness of idiopathic pulmonary fibrosis (IPF); persons with IPF have various symptoms; one such symptom can be shortness of breath; one meaning of the adjective "breathless" is "breathing with difficulty"; and that adjective can be used in reference to persons experiencing "shortness of breath" as a result of IPF. This is a classic, multistep reasoning process that must be performed in order to determine the nature of the services. As such, the mark BREATHLESS clearly is beyond the reach of Section 2(e)(1). At minimum, there is doubt here, and doubt on this absolute ground for refusal must be resolved in the Applicant's favor. See In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). The Applicant requests, in the alternative, to amend to the Supplemental Register. It strongly prefers not to settle for registration on the Supplemental Register, and intends to pursue registration on the Principal Register on appeal if the Examiner does not respond favorably to this Request for Reconsideration. Thus, the amendment to the Supplemental Register is in the alternative; the Applicant is not willing to formally accept registration on the Supplemental Register unless the Board holds, on appeal from the refusal to register, that the mark is merely descriptive. has been attached. SIGNATURE(S) Request for Reconsideration Signature Signature: /Scott J. Major/ Date: 11/27/2016 Signatory's Name: Scott J. Major Signatory's Position: Attorney of record, VA bar member Signatory's Phone Number: 703-465-5356 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. The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration. Serial Number: 86852106 Internet Transmission Date: Sun Nov 27 09:28:51 EST 2016 TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.XX-201611270928513 96793-86852106-570e91fd96d0901b35ffc994a 9931dfd78d77dedb16423a23d1319c0b1f7188c6 a-N/A-N/A-20161127083058525338