August 29, 2007

SERIAL NUMBER: 77/080618
LAW OFFICE ASSIGNED: Karen Bracey, Examining Attorney, Law Office 116
MARK SECTION: (no change)
ARGUMENTS:

APPLICATION AMENDMENT AND
REQUEST FOR RECONSIDERATION

In an Office action dated May 2, 2007, Examining Attorney Karen Bracey issued a refusal

to register Applicant’s mark for “HEALTHCARE SCOUTS” (“Applicant’s Mark”), based on the

following conclusions:

1. The proposed mark merely describes a function, purpose or use of applicant’s goods

and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. Sec. 1052(e)(1), TMEP Secs.

1209 et. seq.; and

2. An entire mark may not be disclaimed. 15 U.S.C. Sec. 1056(a); if the applied-for mark is

not registrable as a whole, a disclaimer will not make it registrable. TMPEP Sec.

1213.06.

Applicant hereby submits the following amendments to its application:

1. Applicant amends the disclaimer scope in its “Intent to use” Sec. 101(b) (15 U.S.C. Sec.

1051(b)) application to exclude the term SCOUT from the disclaimer; and

2. Applicant has ammended its intent to use application to allege use under Sec. 101(c) ((15

U.S.C. Sec. 1051(c)) and has provided proper evidence of use and appropriate application

fee through the TEAS system.

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In addition, Applicant requests reconsideration by Examining Attorney and provides herein

the following arguments in support of a finding that the mark is registrable:

1. Examining Attorney has failed to establish the descriptiveness of Applicant’s mark.

2. The combined use and meaning of the words “HEALTHCARE” and “SCOUTS”

make the mark suggestive in the healthcare industry.

In the alternative, if the mark is found non-registrable for being merely descriptive,

Applicant requests registration of the mark in the Supplemental Register consistent with 15

U.S.C. Sec. 1091(a).

Discussion

1. The Examining Attorney has Failed to Establish the Descriptiveness of Applicant’s Mark

It is well settled that the Examining Attorney bears the burden of showing that a mark is

merely descriptive of the relevant goods or services. In re Merrill, Lynch, Pierce, Fenner, and

Smith Inc., 828 F.2d 1567 (Fed. Cir. 1987). In the instant application, Applicant respectfully

urges that the Examining Attorney has not met this burden. While Applicant concedes that the

term “HEALTHCARE” is a descriptive term defined as “the prevention, treatmet, and

management of illness and the preservation of mental and physical well-being through the

services offered by the medical and allied health professons,”1 Applicant’s own research clearly

establishes that the term “SCOUT” is not in common use in the healtchare industry for

“employment hiring, recruiting, placement, staffing and career networking services,” and its

definition is not limited to the one provided by Examining Attorney, but also includes and

expands into other meanings used by Applicant in the selection of the term “SCOUT” as a

suggestive term for its mark. Therefore, the term “SCOUT” is not “merely descriptive,”

1
The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by by Houghton Mifflin
Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in
accordance with the Copyright Law of the United States. All rights reserved.

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particularly in the healthcare industry, and the mark “HEALTHCARE SCOUTS” is thus a

suggestive mark, registrable in the Principal Register.

A. Examining Attorney’s Evidence

The Examining Attorney’s initial evidence of the mark’s descriptiveness is the definition

of “HEALTHCARE”, as provided in the section above, which the Applicant agrees is a

descriptive term as used in Applicant’s mark. In addition, Examining Attorney provides a

definition of the term “SCOUT” as “One who is employed to discover and recuit talented

persons, especially in the field of sports and entertainment.”2 This definition highlights the

industries where the term “SCOUT” is used as sports and entertainment, and therefore, this

definition reveals that the term “SCOUT” is not commonly used in the healthcare industry within

the meaning of talent recruitment.

B. Applicant’s Research of the term “SCOUT”

Applicant’s own research into the use of the term “SCOUT” via the Internet GOOGLE

search engine and covering hundreds of millions of websites, shows that the term “SCOUT” is

used, almost absolutely, in the sports and entertainment industries and is not commonly used in

the healthcare industry. In addition, the Internet GOOGLE research reveals that the term

“SCOUT” is vastly used in association with the “BOY SCOUT” and “GIRL SCOUT”

movements. Further, additional dictionary definitions for the term “SCOUT” include actions of

information gathering, evaluation and monitoring, and point to the use of the term in

reconaissance functions, showing that there is no one particular meaning to the term.

Specifically, out of a search of all sites available on the GOOGLE Internet search engine,

there are no current, common or descriptive uses of the phrase “SCOUT” as a common

2
The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin
Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in
accordance with the Copyright Law of the United States. All rights reserved.

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descriptor for staffing services in the healtcare industry. Research using the GOOGLE Search

Engine revealed that the term “SCOUT” is mostly focused on sports and entertainment, and did

not reveal its common use in the healthcare industry.3 In addition, according to Wikipedia, an

Internet-based encyclopedia which integrates market and industry-provided information, “

Professional sports scouts are trained talent evaluators who ..[watch] athletes play their chosen

sports and… determin[e] whether their set of skills and talents represent what is needed by the

scout’s organization… Many scouts are former coaches or retired players…Skilled scouts who

help to determine which players will fit in well with an organization can be the major difference

between success and failure for the team with regard to wins and losses, which often relates

directly to the organization’s financial success or lack thereof as well.”4 Further, a search using

the term “SPORTS SCOUT” yielded insight into the frequency, meaning and use of the term

“SCOUT” in the sports industry.5

In the entertainment talent industry, the term “SCOUT” is used in a similar fashion, along

with the word “TALENT” in order to identify outstanding performers that can be considered

“stars” in the industry.6

The above findings support a specific use of the term “SCOUT” in the sports and

entertainment industries which denotes a “higher” standard in “talent recruiting,” and elevates

the need for subject matter expertise and process necessary to identify and qualify unique

individuals who possess the highest skillset within the sports and entertainment industries,

differentiating the use of the term “SCOUT” for specific use, as defined, in these industries.

3
See Exhibit A for results of the term “SCOUT” using the GOOGLE Internet search engine
4
See http://en.wikipedia.org/wiki/Scout_(sport)
5
See Exhibit B for results of the term “SPORTS SCOUT” using the GOOGLE Internet search engine
6
See Exhibit C for results of the term “TALENT SCOUT” using the GOOGLE Internet search engine

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In addition, an Internet GOOGLE search of the terms “SCOUT” and “SCOUTS” reveals

that the term also appears frequently in relation to the BOY SCOUT and GIRL SCOUT

movements,7 which are known for instilling high morals and values on participants, including,

but not limited to, trustworthiness, loyalty, and courtesy.8

Further, an additional dictionary inquiry into the dictionary definitions of the term

“SCOUT” reveals meanings consistent with information gathering, evaluation and monitoring,

and point to the use of the term in reconaissance functions. (“The act of reconnoitering.” “A

watcher or sentinel.” 9)

II. Applicant’s Research Supports that the Combined Words “HEALTHCARE SCOUTS” are
Suggestive, and not Merely Descriptive

It is well-established that a mark is “merely descriptive” only if it immediately conveys

knowledge of the qualities or characteristics of the goods or services; a mark is suggestive rather

than merely descriptive if one must exercise mature thought or use imagination or perception in

order to reach a conclusion as to the nature of the goods. J.S. Paluch Co., Inc. v. Irwin, 215

USPQ 533, 536 (TTAB 1982); In re Tennis in the Round, Inc., 199 USPQ 496 (TTAB 1978).

In addition, “it is well-established that the determination of mere descriptiveness must be

made not in the abstract or on the basis of guesswork, but in relation to the goods or services for

which registration is sought, the context in which the term or phrase is being used on or in

connection with the goods or services, and the impact that it is likely to have on the average

purchaser of such goods or services.” In re Smart Belt Corp. of America, 2002 TTAB LEXIS

213 (TTAB 2002), citing, In re Gyulay, 820 F. 2d 1216 (Fed. Cir. 1987).
7
See Exhibit A for results of the term “SCOUT” using the GOOGLE Internet search engine; and See Exhibit D for
results of the term “SCOUTS” using the GOOGLE Internet search engine
8
See www.scouting.org
9
The American Heritage® Dictionary of the English Language, 4th ed. Boston: Houghton Mifflin, 2000.
www.bartleby.com/61/.

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Applicant’s mark is a suggestive mark–it takes multi-step reasoning to ascertain

the type of services that are being offered by Applicant. Specifically, the average purchaser of

services would have to exercise mature thought or use imagination or perception in order to

reach a conclusion as to the nature of the services offered by Applicant. This is because the

mark “HEALTHCARE SCOUTS” does not immediately convey to the purchaser the message

that the services offered are necessarily recruiting services in the healthcare industry. For

example, applying the plain dictionary meaning of “SCOUT” consistent with information

gathering, evaluation and monitoring, which points to the use of the term ”SCOUT” in

reconaissance functions (“The act of reconnoitering.” “A watcher or sentinel.” 10) in conjunction

with the definition of “HEALTHCARE” provided by Attorney Examiner, an average purchaser

could likely interpret the “HEALTHCARE SCOUTS” mark as representing services offered to

help the purchaser identify sources of healthcare insurance, or even services to help the

purchaser identify specific types of health service providers, services not offered by Applicant.

It is not evident, without additional information, that an average purchaser would infer the actual

provision of “employment hiring, recruiting, placement, staging and career networking services”

offered by Applicant. Applicant’s evidence clearly establishes this, and it is clear that the words

themselves do not impart only one possible meaning. The combination of terms into a composite

mark attributing a non-specific meaning to the mark dictates that Applicant’s Mark cannot be

deemed merely descriptive. Henry Siegel Co. v. M & R Int’l Mfg. Co., 4 U.S.P.Q.2d 1154, 1159

(TTAB 1987). It will be up to the consumer to consider what Applicant’s services might be or

what functions the services might fulfill. As such, it is clear that the mark functions as a

10
The American Heritage® Dictionary of the English Language, 4th ed. Boston: Houghton Mifflin, 2000.
www.bartleby.com/61/.

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suggestive mark – one must exercise mature thought or use imagination or perception in order to

reach a conclusion as to the nature of the goods.

Once a purchaser realizes through Applicant’s marketing materials that “HEALTHCARE

SCOUTS” provides recruiting services, the term “SCOUT” again becomes suggestive of the

highest standards used in the sports and entertainment industry being translated into the

healthcare industry. This enhanced suggestive effect is critical in Applicant’s marketing

strategy. Therefore, the evidence clearly supports a finding that the mark is suggestive and not

merely descriptive, as Attorney Examiner represents, and, thus, it is registrable in the Principal

Register.

Conclusion

In conclusion, consistent with Applicant’s research and the definition of the term

“SCOUT” provided by Examining Attorney, Applicant does not use the term “SCOUT” solely to

identify the common function of employee recruiting such that the term is merely desctiptive.

Instead, Applicant uses the multiple meanings of the term “SCOUT,” including the term’s use in

trade and course of dealing in sports and entertainment industries, to suggest that Applicant is a

company that raises the recruiting standard in the healthcare industry by finding and qualifying

the “stars” of the healthcare industry, much like the practice in sports and entertainment. In

addition, because an average purchaser of Applicant’s services will not be able to immediately

identify “HEALTHCARE SCOUTS” with recruiting services of the nature offered by

Applicant’s, but could also infer services to assist purchaser in the location of healtchare

insurance or providers, a service not offered by Applicant, the average purchaser would have to

exercise mature thought or use imagination or perception in order to reach a conclusion as to the

nature of the services offered by Applicant. The above evidence supports a finding that the mark

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is suggestive as to the services offered by Applicant, and not merely descriptive, as stated by

Examining Attorney.

III. In the Alternative, Applicant Requests the mark be registered in the Supplemental Register

“All marks capable of distinguishing applicant’s goods or services and not registrable on

the principal register provided in this chapter, except those declared to be unregistrable under

subsections (a), (b), (c), (d), and (e)(3) of section 1052 of this title, which are in lawful use in

commerce by the owner thereof, on or in connection with any goods or services may be

registered on the supplemental register upon the payment of the prescribed fee and compliance

with the provisions of subsections (a) and (e) of section 1051 of this title so far as they are

applicable.” 15 U.S.C. Sec. 1091(a).

If the evidence provided herein does not persuade Examining Attorney, and the

Examining Attorney finds that the mark “HEALTHCARE SCOUTS” is merely descriptive and

therefore, not registrable in the Principal Register, Applicant respectfully requests that, in the

alternative, the mark be registered in the Supplemental register, consistent with 15 U.S.C. Sec.

1091(a). Applicant is already using the mark in Commerce and has submitted an amendment to

allege use as described in this document. Applicant is also willing to provide appropriate

payment to satisfy the prescribed fee required for Supplemental Register registration.

Very Truly Yours,

S/ Yasmín Tirado-Chiodini/

Yasmín Tirado-Chiodini, Esq.
Tirado-Chiodini, PL
PO Box 622249, Oviedo, FL 32762
Tel. (407) 977-7366; Fax. (407) 977-5528
E-mail: [email protected]

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