from: novakovic, miroslav sent: 6/25/2021 1:45:02 pm to
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From: Novakovic, Miroslav
Sent: 6/25/2021 1:45:02 PM
To: TTAB EFiling
CC:
Subject: U.S. Trademark Application Serial No. 88573702 - BED METRICS - UDP-107-TM - EXAMINER
BRIEF
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Attachment Information:
Count: 1
Files: 88573702.doc
United States Patent and Trademark Office (USPTO)
U.S. Application Serial No. 88573702
Mark: BED METRICS
Correspondence Address:
Molly B. Markley
YOUNG, BASILE, HANLON & MACFARLANE P.C.
SUITE 624
3001 WEST BIG BEAVER ROAD
TROY MI 48084-3107
Applicant: UDP Labs, Inc.
Reference/Docket No. UDP-107-TM
Correspondence Email Address:
EXAMINING ATTORNEY’S APPEAL BRIEF
I. INTRODUCTION
Applicant has appealed the examining attorney’s final refusal to register the mark BED METRICS for,
as amended, “Computer hardware; Downloadable computer software for the collection, processing,
analysis, measuring, monitoring, tracking and distribution of biometric data; Electronic sensors for
monitoring movement, respiration, and heart rate” in International Class 9, and “Software as a Service
(SaaS) services featuring software for the collection, processing, analysis, measuring, monitoring,
tracking and distribution of biometric data” in International Class 42 under Section 2(e)(1) of the
Trademark Act, on the ground that Applicant’s mark is merely descriptive of those goods and services.
II. STATEMENT OF FACTS
Applicant filed to register the mark BED METRICS, in standard characters, for “Computer hardware;
computer software for the collection, processing, analysis, measuring, monitoring, tracking and
distribution of biometric data; electronic sensors; electronic sensors for monitoring movement,
respiration, and heart rate; biofeedback sensors, not for medical use; controllers; smart beds; medical
devices, namely biofeedback sensors; medical devices for measuring, monitoring, and tracking body
weight, biometric data, body movement, sleep, and heart rate; mattresses for medical purposes; bed
frames; mattresses; smart mattresses; Software as a Service (SaaS) services featuring software for the
collection, processing, analysis, measuring, monitoring, tracking and distribution of biometric data” in
International Class 9.
In an Office action dated November 18, 2019 the examining attorney refused registration on the
ground that the applied-for mark is merely descriptive of Applicant’s goods and services pursuant to
Section 2(e)(1) of the Trademark Act. Applicant was also required to amend the identification of goods
and services. On May 14, 2020, Applicant filed a Response to Office Action in which Applicant submitted
arguments against the Section 2(e)(1) refusal and amended the identification of goods and services.
Applicant also disclaimed the wording “METRICS” apart from the mark as shown. On June 10, 2020, the
Examining Attorney issued a final Office action making the Section 2(e)(1) refusal final. Applicant was
informed that the requirement for an acceptable identification of goods and services had been satisfied.
Applicant requested reconsideration of the final refusal on December 20, 2020. The examining
attorney denied the Request for Reconsideration and maintained the final refusal to register under
Section 2(e)(1) of the Trademark Act. Applicant filed a Notice of Appeal and an Appeal Brief to the
Trademark Trial and Appeal Board appealing the final Section 2(e)(1) refusal. The application was
forwarded to the examining attorney for a brief in accordance with Trademark Rule 2.142(b).
III. ISSUE
The sole issue on appeal is whether Applicant’s mark BED METRICS for, as amended, “Computer
hardware; Downloadable computer software for the collection, processing, analysis, measuring,
monitoring, tracking and distribution of biometric data; Electronic sensors for monitoring movement,
respiration, and heart rate” in International Class 9, and “Software as a Service (SaaS) services featuring
software for the collection, processing, analysis, measuring, monitoring, tracking and distribution of
biometric data” in International Class 42, is merely descriptive of the applied-for goods and services
pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
IV. ARGUMENTS
APPLICANT’S MARK MERELY DESCRIBES A FEATURE OR PURPOSE OF APPLICANT’S GOODS AND SERVICES
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. TMEP §1209.01(b); see, e.g., In re TriVita, Inc.,
783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373
F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297,
75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S.
538, 543 (1920)).
“Whether consumers could guess what the product [or service] is from consideration of the mark
alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). The question is not
whether someone presented only with the mark could guess what the goods and/or services are, but
“whether someone who knows what the goods and[/or] services are will understand the mark to convey
information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254,
103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).
In this case, Applicant has applied to register the mark BED METRICS for, as amended, the following
goods and services:
CLASS 9 - “Computer hardware; Downloadable computer software for the collection, processing,
analysis, measuring, monitoring, tracking and distribution of biometric data; Electronic sensors for
monitoring movement, respiration, and heart rate;” and
CLASS 42 - “Software as a Service (SaaS) services featuring software for the collection, processing,
analysis, measuring, monitoring, tracking and distribution of biometric data.”
The Office action dated November 18, 2019 includes dictionary definitions from American Heritage
Dictionary and Lexico.com by Oxford Dictionary showing the word “BED” means “a mattress” and “a
piece of furniture for sleep or rest, typically a framework with a mattress and coverings,” respectively.
The evidence of record also shows that it is common in the Applicant’s industry to equip beds with
advanced technology that measures and tracks biometric sleep data in order to improve one’s sleeping
experience and health. For example:
1. 360 Smart Bed uses “biometric sleep tracking to sense how you’re moving around at night, and
what would make you the most comfortable.” It also “measures your quality of sleep through
your heart rate and breathing” with “a sensor at the end of the bed transmits your biometric data
to an app on your smartphone via Bluetooth, giving you a score in the morning that represents
how well you slept.” See November 18, 2019 First Office Action, TSDR 32.
2. Eight Sleep’ mattress is “equipped with piezoelectric sensors that deliver advanced health
monitoring of biometrics such as sleep stages, heart rate, respiration rate, and heart rate
variability.” See November 18, 2019 First Office Action, TSDR 33.
3. Zanthion SMART Bed Exit sensor, which is “installed by attaching it to the corner of the mattress,”
and measures “sleep activity as well as the number of times a person is in and out of bed.” See
June 10, 2020 Final Office Action, TSDR 34.
Meanwhile, Applicant’s goods and services involve computer hardware, software and electronic
sensors that are used for analysis and measuring biometric data, and Applicant further clarified the
exact nature of those goods and services by specifying that “the [applied-for] sensor can be placed in
any object where the user plans to collect data, such as a bed.” See Appeal Brief, TSDR 5. When applied
to the respective goods, the word BED therefore immediately informs consumers that Applicant’s goods
and services are designed to be used with beds which employ advanced technology. The word BED
therefore merely describes a feature or purpose of Applicant’s goods and services.
The final Office action dated June 10, 2020 includes dictionary definitions from Merriam-Webster
Dictionary and Lexico.com by Oxford Dictionary showing the word METRICS means “the science of
measuring (a specified area of body of data)” and “a method of measuring something, or the results
obtained from this,” respectively. Meanwhile, Applicant’s software and sensors are used for measuring
biometric data, as specified in the identification of goods and services. The wording METRICS therefore
immediately informs consumers that Applicant’s goods and services used for a specific function or
purpose, namely, to measure or analyze data. Applicant agrees with this determination and has
disclaimed the wording METRICS for being merely descriptive of the applied-for goods and services. See
Appeal Brief, TSDR 5.
When combined, the wording BED METRICS immediately informs consumers that Applicant’s goods
and services are used for collecting and measuring biometric data from one’s bed. The words BED and
METRICS are therefore individually descriptive of a feature or purpose of Applicant’s goods and services,
and the composite result remains descriptive. Generally, if the individual components of a mark retain
their descriptive meaning in relation to the goods and 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) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP
§1209.03(d); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE
MATTRESS merely descriptive of beds, mattresses, box springs, and pillows); In re Petroglyph Games,
Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game
software with a feature that involve battles and provides the player with the option to utilize various
views of the battlefield); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding
AGENTBEANS merely descriptive of computer software for use in developing and deploying application
programs on a global computer network).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous,
or otherwise nondescriptive meaning in relation to the goods and 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); In re
Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). In this case, both the individual components
and the composite result are descriptive of Applicant’s goods and services and do not create a unique,
incongruous, or nondescriptive meaning in relation to the goods and services. Specifically, the wording
BED describes a type of product with which Applicant’s goods and services are meant to be used,
particularly, beds, and the wording METRICS describes a feature or purpose of Applicant’s goods and
services as being used for measuring or analyzing one’s biometric data. When the two terms are
combined, the mark BED METRICS immediately informs consumers that Applicant’s goods and services
are used for collecting and measuring biometric data from one’s bed. The words BED and METRICS are
therefore individually descriptive of a feature or purpose of applicant’s goods and services, and the
composite result remains descriptive.
Applicant disagrees with this determination and argues that the applied-for mark is suggestive
rather than descriptive of Applicant’s goods and services. Specifically, Applicant argues that the mark is
not descriptive because the term “BED” is “suggestive of the location where one sleeps.” See Appeal
Brief, TSDR 4. However, as Applicant concedes that its goods could be placed in beds, it is undeniable
that the term “BED” merely describes a type of product with which Applicant’s goods and services are
intended to be used, specifically, beds. No step of imagination is required for consumers to immediately
conclude that the Applicant’s software and sensors are used in connection with beds, e.g., the identified
sensor could be placed on the side of a bed to collect the user’s sleep metrics.
Indeed, the final Office action dated June 10, 2020 includes Internet evidence showing that beds
fitted with sensors and advanced technology or “smart beds” have been discussed in the news media as
a new class of emerging technologies. For example:
1. An article on FurnitureToday entitled “Motion bed makers see smart bases as sparking growth
surge” states that “the new SnoreTech adjustable bed utilizes a sleep monitor that collects the
sleeper’s biometric data and uses it to trigger automatic adjustments to the bed to stop snoring.”
See June 10, 2020 Final Office Action, TSDR 21.
2. An article on Inverse.com describes “How a mattress and pillow sensor can be used to monitor
medical conditions, sleep patterns, breathing, heart rate, and overall health in bed.” See June 10,
2020 Final Office Action, TSDR 49.
3. An article on Washington Post entitled “What’s blocking smart beds from helping you get a great
night’s rest” states “smart beds” which are “just part of an exciting new class of emerging
technologies” are fitted with “built-in sensors, sending a constant stream of data and analytics to
your smartphone or tablet.” See June 10, 2020 Final Office Action, TSDR 54.
4. An article on PCMag entitled “The Future of Smart Home Tech: Consumers Want Smart Controls
on Their Old Appliances” states “Smart beds are another fast-developing area of tech: They come
equipped with biometric sensors that let you control the temperature and firmness of the
mattress and track your sleep metrics.” See June 10, 2020 Final Office Action, TSDR 67.
5. An article on SingularityHub entitled “Smart Homes Won’t Just Automate Your Life —They’ll Track
Your Health Too” states that the company named in the article “uses non-wearable sensors in the
bed and mattress to monitor sleep time, heart rate, respiratory rate, body movement, and sleep
cycles. An app then analyzes the data to provide guidance on achieving the best sleep.” See June
10, 2020 Final Office Action, TSDR 73.
6. An article on BedTimes states that “[the] latest developments move beyond the smart bed as a
personal health tracker and turn it into a smart device in the connected home.” See June 10, 2020
Final Office Action, TSDR 95.
7. An article on PR Newswire entitled “World's First Smart Furniture Brand 37 Degree Smart Home
Showcases Groundbreaking Products at CES 2019” states “the smart bed collects health data such
as heartbeat and breathing during sleep and generates a sleeping report in the brand’s app.” See
June 10, 2020 Final Office Action, TSDR 98.
8. Business Daily features an article entitled “Internet of Things to change the way homes and
valuables will be managed” which states “a smart bed incorporates biometric sensors to help you
snooze better. You use an app on your smartphone to view your sleep trends and health metrics,
and to gain insight on how you can sleep better.” See June 10, 2020 Final Office Action, TSDR 106.
The evidence establishes that modern beds are commonly fitted with advanced technology such as
biometric sensors and sleep monitors that collect and monitor the user’s sleep metrics. Consequently,
consumers who view the term “BED” in connection with Applicant’s computer hardware, software and
sensors, will see the term as immediately describing that such goods and services are specifically
designed to be used with beds with advanced technology or smart beds.
Applicant also argues that its mark is suggestive, citing In re Esteé Lauder, Inc. v The Gap, Inc., 42
USPQ2d 1228 (2nd Cir. 1997) in which the Court found the mark “100%” for skin moisturizers suggestive
rather than descriptive. See Appeal Brief, TSDR 6. Specifically, the Court found standing alone, “100%”
does not describe qualities, ingredients, or characteristics of the applied-for goods. It implies that the
product is of the highest quality, and in order to have an idea of the nature of the product, a consumer
needs additional information. However, this case is different because the mark in the instant case, BED
METRICS, is comprised of two terms rather than only one term. Even if the applied-for mark is
composed solely of the term BED, which is not the case, the term BED is not merely self-laudatory, such
as “plus” or “super” cited by the Court. Accordingly, the facts of the case Applicant cites are
distinguishable from those of the present case.
Applicant further argues that the mark BED METRICS, when viewed as a whole, creates several
connotations, “such as the product functions while you sleep, the product collects sleep data, or the
product gives recommendations regarding a sleep disorder.” See Appeal Brief, TSDR 7. However,
determining the descriptiveness of a mark is done in relation to an applicant’s goods and services, the
context in which the mark is being used, and the possible significance the mark would have to the
average purchaser because of the manner of its use or intended use. See In re The Chamber of
Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer
Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
Here, the evidence of record establishes that, in this era of advanced technology featuring a number
of smart devices, modern beds fitted with computer hardware, software and biometric sensors are
catching consumers’ attention because they can collect, measure and analyze the user’s personal data
and sleep metrics such as sleep patterns and heart rate. Knowing this data is important to consumers
because it can improve their overall sleeping experience and health. Applicant’s goods and services
involve computer hardware, software and sensors that measure and analyze one’s biometric data, as
specified in the identification, and Applicant clarified for the record that its goods can be placed in beds.
Taken all together, then, consumers who view the mark BED METRICS in connection with the identified
computer hardware, software and sensors which can be used with beds, will see the mark as
immediately describing that such goods and services are designed to measure and analyze one’s metrics
data from the bed.
V. CONCLUSION
Therefore, the mark BED METRICS, as applied to the identified goods and services, merely describes
a feature or purpose of Applicant’s goods and services. Accordingly, the applied-for mark is merely
descriptive, and it is requested that the refusal under Section 2(e)(1) of the Lanham Act on the Principal
register be affirmed.
Respectfully submitted,
/Miroslav Novakovic/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Phone: (571) 272-2866
E-mail: [email protected]
Kathryn Coward
Managing Attorney
Law Office 108
571-272- 9468