Trademark Office Action Response Regarding Descriptiveness

Attorneys at Law 111 Park Place *NJ DC Bar
Erik M. Pelton Falls Church, VA 22046 ** NY Bar

John C. Heinbockel** T: 703.525.8009 *** VA DC & NY Bar
Benjamin D. Pelton*** F: 703.525.8089 erikpelton.com
of counsel
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
March 2, 2016
Dawn Feldman Lehker

Trademark Examining Attorney
Law Office
United States Patent and Trademark Office
RE: Serial No: 86767984

Mark: APPWEAR
Applicant: Alan J. Miles
Office Action Of: January 22, 2016
APPLICANT'S RESPONSE TO OFFICE ACTION
The following is the response of Applicant, Alan J. Miles, by Counsel, to the Office
Action sent via email on January 22, 2016, by Examining Attorney Dawn Feldman Lehker.
POWER OF ATTORNEY
Applicant hereby revokes all previous powers of attorney or authorizations of agent in
regard to this application and appoints Erik M. Pelton and John C. Heinbockel of Erik M. Pelton
& Associates, PLLC, to prosecute this application on the applicant's behalf.
DESCRIPTIVENESS REFUSAL
The Examining Attorney has refused registration of the proposed mark pursuant to
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that the mark merely
describes Applicant’s goods. For the following reasons, Applicant respectfully disagrees with the
finding and requests that the Examining Attorney reconsider the statutory refusal and allow
registration of Applicant’s mark.
A mark is merely descriptive only if it immediately describes an ingredient, quality,
characteristic, function, feature, purpose or use of the identified goods or services. See In re
page 2 Response to January 22, 2016 Office Action SN 86767984
Ex. Atty.: Dawn Feldman Lehker
Law Office
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Such information must describe the
goods or services with a “degree of particularity.” Plus Products v. Medical Modalities
Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB 1981). By contrast, a suggestive mark is
one that, when applied to the goods or services at issue, requires imagination, thought, or
perception as to the nature of the goods or services. See In re Shutts, 217 USPQ 363 (TTAB
1983). Whether a term is merely descriptive is determined not in the abstract, but in relation to
the goods and/or services for which registration is sought, the context in which it is being used
on or in connection with the goods and/or services, and the possible significance that the term
would have to the average purchaser of the goods and/or services because of the manner of its
use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). The terms “descriptive” and
“suggestive” are not mutually exclusive: there is some description in any suggestion or the
suggestive process does not occur. In re Reynolds Metals Company, 480 F.2d 902, 178 USPQ
296 (CCPA 1973).
Applicant seeks to register the mark APPWEAR for “Computer application software for
mobile phones, tablet computers, portable media players, handheld computers, namely, software
for allowing the user to select the heating temperature they please that is connected to the heating
control unit located on the clothing garments” in Class 9 and “Caps; Coats; Ear muffs; Gloves;
Hats; Pants; Shirts; Socks; Vests” in Class 25. Applicant’s goods are items of clothing wired
with heating elements that can be controlled by using a mobile phone app. The Examining
Attorney has refused registration on the basis that “APP” refers to computer software and
“WEAR” refers to clothing, and is thus descriptive of Applicant’s goods.
Applicant respectfully disagrees. Applicant’s mark is not merely descriptive of its goods
because the mark is has an ambiguous and nebulous meaning that requires consumers to use
thought and perception to understand the mark’s relationship to the goods, and because the mark
relies on wordplay and double entendre to create a distinct commercial impression. Furthermore,
Applicant’s mark is a single, coined term, rather than a phrase made up of two potentially
descriptive terms. Applicant’s mark therefore has a suggestive connotation and is not merely
descriptive. Accordingly, the mark should be allowed to proceed to publication.
Applicant’s Mark Requires Consumers to Use Additional Thought and Perception to Perceive
the Connection Between Applicant’s Goods and the Mark
Law Office
Where consumers must engage in a multi-stage reasoning process to comprehend a mark

and its relationship to the goods, rather than face an instantaneous understanding from the mark
of an attribute of the products, the mark is suggestive. See TMEP 1209.01(a) (“Suggestive marks
are those that, when applied to the goods or services at issue, require imagination, thought, or
perception to reach a conclusion as to the nature of those goods or services.”).
Applicant’s APPWEAR mark does not immediately describe Applicant’s services with
any “degree of particularity.” Plus Products, 211 USPQ at 1204-1205. Applicant’s mark does
not follow well-recognized etymological conventions and is built from components with multiple
meanings. This requires consumers to use additional thought, perception, or imagination to
comprehend the mark’s relationship to Applicant’s goods, thus giving the mark a suggestive
significance.
The Examining Attorney has submitted evidence that “wear” means “clothing for a
specific purpose.” See Office Action of January 22, 2016. Examples of this usage from the
evidence submitted include “children’s wear” (clothing to be worn by children) and “evening
wear” (clothing to be worn in the evening, for formal occasions). Similar usages may include
“eye wear” for apparel to be worn on or over the eyes, such as glasses, and “head wear” for
apparel to be worn on or over the head, such as hats. APPWEAR does not follow the same
formula. An app is not a target user (e.g., children’s wear, women’s wear, men’s wear) nor is it
an occasion (e.g., evening wear) or purpose (e.g., formal wear, sports wear, swim wear).
Similarly, an app is not a body part or region for which apparel may be needed (e.g., eye wear,
head wear, under wear). An app is separate from the apparel. Even if Applicant’s apparel has
additional technological elements, Applicant’s goods are still separately functional without the
technology as clothing.
Moreover, APPWEAR is not a recognized term used by the general public in a
descriptive manner, and the Examining Attorney has submitted no evidence suggesting that it is.
In fact, consumers are already conditioned to recognize a different phrase as descriptive of
Applicant’s goods: “wearable technology.” See “Wearables in the Workplace,” HARV. BUS.
REV., attached as Exhibit A; “Wearable tech combines style with a social conscience,” THE
GUARDIAN, attached as Exhibit B; “The future will eat itself: digesting the next generation of
wearable tech,” THE GUARDIAN, attached as Exhibit C.
Law Office
Furthermore, Applicant’s mark is presented as a single, coined term rather than a phrase
made up of individual components. This presentation conveys additional distinctiveness to
consumers, who are used to seeing telescoped words and portmanteaus as indicators of source
rather than descriptive words. This is especially true where the components being combined have
no one particular meaning. Applicant’s mark is made up of components that each have multiple
meanings and implications. “App” is shorthand for “application.” While the abbreviated term
rose to prominence because of use in connection with mobile phones, the term “app” is equally
applicable to standard computer software. “Wear” is both a noun, as in “eye wear” or “evening
wear,” and a verb, as in “to wear clothes.”
With these different meanings and connotations, it is possible that consumers would see
Applicant’s mark and immediately ask questions such as “Are the clothes controlled by
software?”; “Do the clothes control software?”; “Is software necessary to use the clothes?”; or
“Does someone else control the clothes using software?” The multiple possible meanings of the
term and the vagueness of the term’s relevance to the goods require consumers to use additional
thought, imagination, or perception determine which definition is proper in the context of
Applicant’s goods.
These multiple meanings, the common patterns and terms that Applicant’s mark plays on,
and the conditioning consumers have to recognize other terms to describe goods such as
Applicant’s are indicative that consumers would not simply instinctively recognize the
connection between Applicant’s mark and Applicant’s goods. Instead, they would have to
engage in a multi-step reasoning process and use additional thought, perception, or imagination
to reach a conclusion as to the nature of those goods. See TMEP § 1209.01(a).
Thus, Applicant’s mark is not merely descriptive, and should be allowed to proceed to
publication.
Applicant’s Mark Uses Wordplay and Double Entendre to Create a Distinct Consumer
Impression
Applicant’s APPWEAR mark is also unlikely to be perceived as merely descriptive
because the mark relies on word play and double entendre to create its consumer impression. See
In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008). Applicant’s mark invokes
Law Office
homophones of the mark’s components and multiple meanings to create a complex and
distinctive consumer impression.
Applicant’s mark is made up of two components: “APP” and “WEAR.” “Wear” is
pronounced identically to “ware,” which is both a word and a suffix. “Ware” is a generally
applicable term for a good or an item. As a suffix, “-ware” has two general purposes. First, “-
ware” indicates a category of goods, such as “hardware” or “silverware.” Secondly, “-ware”
indicates types of “software,” such as “shareware.” See American Heritage Dictionary definition
of “Ware,” Exhibit D. Consumers would recognize the homophonic implications of Applicant’s
APPWEAR mark. APPWEAR sounds like “app-ware,” which could mean “application
software.” Likewise, “app-ware” could signify a class of goods, like silverware or hardware, that
is related to apps. The term “app” could also be interpreted as short for “apparel,” giving “app-
ware” a possible meaning of high tech apparel, or “appearance,” giving “app-ware” a possible
meaning of technology or software that affects a person’s appearance.
These homophonic plays on Applicant’s mark and the multiple possible meanings created
add layers of distinctiveness to Applicant’s mark and emphasize the mark’s suggestive nature.
See In re Colonial Stores, Inc., 157 USPQ 382 (CCPA 1968) (finding that the mark SUGAR &
SPICE as a combination mark, would evoke the nursery rhyme to one familiar with the phase,
and the dual association with “everything nice” prevented the mark from being merely
descriptive); In re Grand Metropolitan Foodservice, Inc. 30 USPQ2d 1974 (TTAB 1994)
(finding that the mark MUFFUNS was not merely descriptive of the applicant's mini-muffins
since the mark projected a dual meaning or suggestiveness); Henry Siegel Co. v. M & R
International Mfg. Co., 4 USPQ2d 1154 (TTAB 1987) (finding that the mark CHIC for women's
jeans projects a double meaning and is not merely descriptive).
Because of this wordplay, Applicant’s mark is not merely descriptive. When doubts exist
as to whether a term is descriptive as applied to the goods or services for which registration is
sought, those doubts should be resolved in favor of the Applicant. In re Grand Metropolitan
Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994). Accordingly, the mark should be allowed to
proceed to publication.
Because Applicant’s mark has a nebulous meaning that requires consumers to use
additional thought, perception, and imagination to comprehend, and because the mark uses
Law Office
wordplay and double entendre to create its consumer impression, the mark is not merely
descriptive. Accordingly, the APPWEAR mark should be allowed to proceed to publication.
Applicant has responded to all issues raised in the Office Action. If any further
information or response is required, please contact Applicant’s attorney. The attorney may be
reached by telephone at 703-525-8009.
Respectfully submitted,
Erik M. Pelton, Esq.

Attorney for Applicant
Exhibits
Exhibit A: H. James Wilson, “Wearables in the Workplace,” HARV. BUS. REV. (Sept. 2013),
available at https://hbr.org/2013/09/wearables-in-the-workplace (last visited Mar.
1, 2016).
Exhibit B: Sophie Perry, “Wearable tech combines style with a social conscience,” THE
GUARDIAN (Feb. 11, 2016),
http://www.theguardian.com/technology/2016/feb/11/wearable-tech-social-
conscience-melissa-coleman (last visited Mar. 1, 2016).
Exhibit C: Shivvy Jarvis, “The future will eat itself: digesting the next generation of
wearable tech,” THE GUARDIAN (Jan. 13, 2016),
http://www.theguardian.com/media-network/2016/jan/13/future-eat-digesting-
next-generation-wearable-tech (last visited Mar. 1, 2016).
Exhibit D: “Ware,” AM. HERITAGE DICT., https://ahdictionary.com/word/search.html?q=ware

(last visited Feb. 29, 2016).
APPLICATION NO. 86767984
RESPONSE TO OFFICE ACTION OF January 22, 2016
EXHIBIT A:
H. James Wilson, “Wearables in the Workplace,” HARV. BUS. REV. (Sept. 2013), available at
https://hbr.org/2013/09/wearables-in-the-workplace (last visited Mar. 1, 2016).
Wearables in the Workplace https://hbr.org/2013/09/wearables-in-the-workplace
TECHNOLOGY
by H. James Wilson
FROM THE SEPTEMBER 2013 ISSUE
etting set for his 40-yard dash, the Heisman Trophy winner Cam Newton leaned into a
sprinter’s stance and swept his left arm upward, ready for the downward thrust that
would launch him off the line. The Forty, as insiders call it, is the premiere test of raw
speed. Newton’s burst at the 2011 NFL Scouting Combine showed that he has plenty of it: He
covered the distance in 4.59 seconds.
Newton’s athleticism has since been on display with the Carolina Panthers, which made him the first
pick of the 2011 draft. But team managers didn’t have to rely on stopwatches to judge his quickness.
Woven into his red Under Armour shirt were sensors that transmitted real-time statistics on the
physics and physiology of his performance to the computers of scouts, coaches, and league officials.
How much power was in Newton’s fourth stride compared with his 14th? At what points were his
legs out of sync? How did his heart rate and breathing compare with competing prospects’ at each
millisecond? Charts and other graphics covered the screens, offering answers. Five years ago scouts
assessed players’ Forties solely on the basis of time. Today an array of wearable sensors offer them
rich data about every inch of a player’s sprint.
The scene is a harbinger of the widespread use of what I call physiolytics, the practice of linking
wearable computing devices with data analysis and quantified feedback to improve performance.
Physiolytics grew out of two trends. The first is a wave of innovation in wearable technologies.
Current items range from sensors in shoes (such as Nike+, used by runners to track distance, speed,
and other metrics) to smart bracelets (such as BodyMedia’s FIT, which deploys IBM algorithms and
crunches 7.2 million physiological data points a day). The second trend is big data, though in
physiolytics, the analysis starts with a sample size of one.
1 of 6 3/1/2016 3:09 PM
For an NFL prospect looking to earn millions a year, it’s obvious why obsessing over fractions of
seconds could be worthwhile. But physiolytics is spreading to workers in factory and office settings
as well. As it does, it represents the next evolution of the time and motion studies done by the
efficiency expert Frederick Taylor a century ago. Taylor examined iron workers individually to
derive generalizable insights. Physiolytics goes much further, offering three kinds of analysis.
1: Quantifying movements within physical work environments.

The first kind of analysis focuses on people’s movements in various work settings. For many
workers, the prospect creates anxiety: Oh, no, I’m being watched! Managers must concentrate on
issues that drive productivity and communicate that the goal is to improve organizational
performance, not to punish individuals.
At a distribution center in Ireland, Tesco workers move among 87 aisles of three-story shelves. Many
wear armbands that track the goods they’re gathering, freeing up time they would otherwise spend
marking clipboards. A band also allots tasks to the wearer, forecasts his completion time, and
quantifies his precise movements among the facility’s 9.6 miles of shelving and 111 loading bays. A
2.8-inch display provides analytical feedback, verifying the correct fulfillment of an order, for
instance, or nudging a worker whose order is short.
The grocer has been tapping such tools since 2004, when it signed a $9 million deal for an earlier
generation of wearables to put into service in 300 locations across the UK. The efficiency gains it
hoped for have been realized: From 2007 to 2012, the number of full-time employees needed to run
a 40,000-square-foot store dropped by 18%. That pleases managers and shareholders—but not all
workers, some of whom have complained about the surveillance and charged that the system
measures only speed, not quality of work.
Other early adopters of this type of physiolytics have been in health care, the military, and the
industrial sector. They use tracking not just to increase productivity but also for health and personal
safety, and they have gotten a better reception among workers. Fatigue-monitoring sensors, for
example, which notice when a head or body slumps, provide information that backhoe drivers and
other equipment operators care deeply about. Sensors in the helmets of NFL players that measure
the force of impacts could reduce players’ long-term risk of traumatic brain injury.
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Consider this win-win use of physiolytics: About 90% of companies now offer wellness programs,
some of which encourage employees to use Fitbit and other devices that measure the quantity and
intensity of their workouts and to employ simple visual and motivational tools to track their progress
and help sustain their engagement. Because the programs are administered by third-party providers,
employers can’t see any individual’s metrics. But the aggregate analytics give them robust insights
about correlations between wellness, job satisfaction, and financial performance. The wellness
program provider Carewise, whose members use Fitbit, has found that the health care costs of
highly engaged participants rise just 0.7% annually, compared with 24% for less engaged
participants.
2: Working with information more efciently.

The second kind aims to make knowledge work more efficient by analyzing the time and motion
required to perform a process. Because knowledge work is often idiosyncratic—“a mysterious art,”
researchers call it—this approach requires close collaboration between managers and employees.
Although increased efficiency is an important outcome, these initiatives primarily aim to help
employees work smarter, not faster.
Boeing became a leader in this area more than 20 years ago, when it began using head-up displays in
cockpits so that pilots could obtain critical information without looking down at dials. It then applied
the technology to its manufacturing operations, issuing the gear to wire-assembly experts to free
them of the need to flip through instruction manuals.
Other companies have followed suit. In the 1990s Bell Canada began outfitting phone technicians
with wrist-worn PCs, which let them enter data from repair sites without walking back to the
computers in their trucks—saving each technician almost an hour a day. In the late 1990s the U.S.
industrial engineering firm Schneider gave its field engineers belt-mounted voice-activated
computers, which boosted efficiency by 150%. In 2002 the British asbestos-remediation firm OHS
began outfitting inspectors with belt-mounted computers containing blueprints of buildings and
generating analytical suggestions for navigating rooms efficiently and identifying likely trouble
spots. This sped up site visits by 25%, saving each surveyor 480 man-hours a year. It also allowed for
real-time reporting of findings, which cut the office time needed to write a client report in half.
Mobile workers check their smartphones more than 150 times a day, on average. This ubiquitous act
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presents a new frontier for improvement: Each

Wearable Devices: A History check typically requires a sequence of movements
(type in password, choose app, enter data) that
The concept sounds futuristic, but it’s
takes about 20 seconds. Emerging wearables,
based on technology that has evolved over
nearly 50 years. most notably Google Glass, will replace those
steps with “microinteractions”—simple gestures
that take far less time. Microsoft is developing
armbands that will project keyboards and displays
onto wearers’ wrists—obviating the need, say, to
fumble with a smartphone to check a price. Other
early prototypes suggest that predictive feedback
based on a wearer’s movements through
informational and physical contexts will be an
integral part of these tools. By analyzing where
you are and where you’re going, apps will offer
contextual data before you ask for it, eliminating
search time.
3: Analyzing the big data inside us.

The third kind quantifies the physiological
functions, from the movements of our hearts to
the firings of neurons in our brains, that underlie
how we work. Melon has developed an EEG
headband that helps wearers understand their
cognitive patterns. For instance, it measures the
spikes in gamma brain waves that occur
milliseconds before an “aha” moment—data that
might, over time, give users insight into when they are most likely to be creative. According to Pew
Research, 21% of Americans already use self-tracking technologies to understand health patterns or
improve cognitive performance.
A fundamental question is whether these tools can support broad organizational objectives without
eroding privacy. Recent tests conducted by the French video game publisher Ubisoft suggest a
4 of 6 3/1/2016 3:09 PM
workable blueprint. The firm developed a finger-clamp sensor that measures levels of stress.
Because the device is linked to a gaming interface, it addresses “a serious issue in a nonthreatening,
fun way,” says its developer, Olivier Janin. Users can view their stats privately (bosses can’t access an
individual’s data) and can see aggregated user results; they can also opt out, anonymously, at any
time. The recorded stress levels for one group dropped more than 50% during the course of the test
period.
It’s early days for physiolytics. But over time managers in many types of companies will embrace the
opportunities it offers to improve workers’ output. As with Taylor’s time and motion studies,
predicting all the effects will be difficult: Although Taylorism is best remembered for sparking the
age of scientific management, it was also a factor in the rise of organized labor. As wearable
technology spreads, managers should keep the emphasis on creating a better team—as it was during
Cam Newton’s dash. Physiolytics could then fulfill its promise as a new management science that
increases organizational efficiency while heightening individual motivation.
A version of this article appeared in the September 2013 issue of Harvard Business Review.
H. James Wilson is Managing Director, Information Technology and Business Research, Accenture Institute for
High Performance. He is author of numerous HBR articles on human-technology interaction, including, “Wearables in the
Workplace.” You can follow him on Twitter @hjameswilson .
This article is about TECHNOLOGY

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EXHIBIT B:
Sophie Perry, “Wearable tech combines style with a social conscience,” THE GUARDIAN (Feb. 11, 2016),
http://www.theguardian.com/technology/2016/feb/11/wearable-tech-social-conscience-melissa-coleman (last visited
Mar. 1, 2016).
Wearable tech combines style with a social conscience | Technology | The... http://www.theguardian.com/technology/2016/feb/11/wearable-tech-socia...
Wearable tech combines style with a social

conscience
Designer Melissa Coleman draws attention to the frequency at which young women die
unnecessarily in childbirth
Sophie Perry
Thursday 11 February 2016 02.00 EST
It’s beautiful, intricate and elegantly simple. But this lace collar is also seriously flash.
Called Political Lace and created by Melissa Coleman, a software engineer-cum-media design
artist based in London, the accessory is fitted with an LED light that blinks every seven and a
half minutes – the frequency at which young women die unnecessarily during childbirth.
The idea, she says, is not unlike a charity wristband, with the dynamic LED drawing attention to
the tragedies as it lights up for each death. Recently on show at La Gaîté Lyrique in Paris,
Political Lace isn’t Coleman’s only foray into fusing tech with fashion. Currently appearing at
the Coded Couture exhibition at the Pratt Manhattan gallery in New York, which runs until
April, is Holy Dress – a striking ironwork bodice that shocks the wearer should the built-in lie
detector sense they’re fibbing.
At the heart of Coleman’s work is the concept of tying coding knowledge to creative outlets: “I
like the idea of people not just being consumers of technology but creators. I hope that by
making these conceptual pieces it helps people think about what the future could be,” she says.
More features
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EXHIBIT C:
Shivvy Jarvis, “The future will eat itself: digesting the next generation of wearable tech,” THE GUARDIAN (Jan. 13,
2016), http://www.theguardian.com/media-network/2016/jan/13/future-eat-digesting-next-generation-wearable-tech
(last visited Mar. 1, 2016).
The future will eat itself: digesting the next generation of wearable tech | ... http://www.theguardian.com/media-network/2016/jan/13/future-eat-digest...
The future will eat itself: digesting the next

generation of wearable tech
Shivvy Jervis
How ingestibles and mood-impacting technologies are changing our relationship with
wearables
Wednesday 13 January 2016 11.16 EST
Wearable tech is well and truly mainstream – but what does the future hold? What could their
potential new forms mean for our day-to-day lives, businesses and wellbeing?
The aim of wearables should be to operate silently but powerfully in the background, blurring
the interface between ourselves and the device. For this tech to go beyond slapping a fitness
band on our wrists (valuable as that might be), it will need to hone in on the issues that are core
to our health and long-term wellbeing.
The wearable of the future is doing just that. It will be proactive and pre-emptive, rather than
simply a monitor. The applications are fascinating – buoying your state of mind, aiding early
detection of chronic disease, or boosting employee security and productivity.
We’re seeing partnerships soar between wearables manufacturers and the world of neurological
science, security, defence and education.The healthcare industry, in particular, is outpacing the
others in its rapid uptake of wearables.
Hand in hand with these exciting advances, however, is a crucial, fair-warning label – a
significant number of people will understandably be hesitant to swallow a digital pill or stick a
sensor on their foreheads. And employees are unlikely instantly to see the value in a computer
chip skin tattoo that acts as an all-systems pass for work security.
So what can we expect?
Ingestibles
These have understandably been subject to a gamut of robust approvals, and so haven’t hit the
mainstream yet. That’s soon set to change.
Largely, they take the shape of a “digital pill” coated in digestible metals such as copper and
magnesium embedded in a regular tablet. It dissolves in your stomach acid, releasing a signal to
an adhesive patch on your body, which in turn communicates with an app on your smartphone,
relaying the info via bluetooth.
Ingestibles are full of sensors that can not only track your vitals but tell you when you last took
1 of 3 3/1/2016 3:22 PM
your medication, if you’re over-medicating or mixing two drugs that shouldn’t be taken
together. Critically, it will aid doctors to work out how you’re responding to particular
treatment. If you’re concerned about how your body “clears” the chip from your system, rest
assured this happens the natural way.
Of these technologies, the Proteus ingestible sensor is closest to launch (appearing to be one of
the only devices with an FDA-sanctioned claim at the time of writing), running clinical trials
across 2015 and 2016. There’s also PillCam’s “camera pills” (in disposable capsules) that swap
invasive methods to track your stomach’s health for tiny cameras that sleekly navigate your
intestinal track. The tech received clearance just last year, so is relatively new.
Ingestibles could be lifesaving when treating chronic disease (nearly 50% of sufferers don’t take
medications as prescribed) or spurring on advances in genomics. They could also help
businesses care better for employees – upon an employee opting to hav e their health
monitored, this tracking could pre-empt work-related stress illnesses and help a company
customise their corporate wellness programmes to each individual.
Mood-impacting tech
In the UK alone between 2013 and 2014, close to 35% of work related illnesses were due to
depression and anxiety. No doubt this will directly affect employees’ productivity, so businesses
– sit up and take notice.
Could mind and mood-impacting wearables help? They’re claiming to be able to train your
brain, calm you when you’re anxious, or buoy your mood when you’re low on energy.
This is not without controversy – many people I spoke to expressed worry over any sort of
device that interfered with their state of mind or neurological processes. While I’m personally
willing to try one of these nifty inventions provided it’s backed up by solid research and
developed by credible experts, I recognise this is highly subjective.
In this sphere there’s Thync, developed by Harvard and Stanford alumni. It’s a sleek stick-on
that uses low-energy waveforms to speak to your neural pathways, sending safe electrical
pulses to your cranial or peripheral nerves to shift your state between energetic and calm.
Within this category are wearables to do with “performance brain training”: Versus requires
you to tap into the correct brain wave to complete a game, and Narbis claims to be based on
Nasa research.
Given the reservations some might have, will we see critical mass in terms of demand for these
devices when they’re fully rolled out? I’d bet that transparency in their marketing by the
startups themselves, safety reassurances from medical professionals, and direct
recommendations from our doctors will go a long way to boost uptake.
Embeddables and invisibles

Embeddables are mini-chips inserted into muscles, skin or nerves. Invisibles on the other hand
are stick-on tech such as a skin-coloured patch or tattoo-like sensor. These are either absorbed
into the body or peeled off, and capture vital data through your skin. If you’re alarmed about
any side effects it’s always worth researching each product and discussing it with a medical
professional.
2 of 3 3/1/2016 3:22 PM
Engineers at Northwestern University and the University of Illinois have been developing a skin
patch (technically known as an epidermal photonic sensor) since 2014. It looks like skin, and
liquid crystals measure blood flow rate via body temperature, helping track cardiovascular
health or skin disease.
Earlier this year employers were getting in on the act, offering employees the option of
implanting RFID chips into their hands to do away with pin codes and swipe cards for building
access.
Moore’s Law states that the smaller a component, the more efficient and powerful it becomes.
We’re certainly seeing this with the evolution of wearables.
Fitness bands may be the beginning, but in a mere two to three years from now, however, we
might look back at the current moment as a time when wearables were still coming into their
own.
Shivvy Jervis is the creator and presenter of Telefonica’s Digital Futures series. Follow her on
Twitter.
To get weekly news analysis, job alerts and event notifications direct to your inbox, sign up free
for Media Network membership.
More comment
Topics
Wearable technology Smartwatches
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3 of 3 3/1/2016 3:22 PM
EXHIBIT D:
“Ware,” AM. HERITAGE DICT., https://ahdictionary.com/word/search.html?q=ware (last visited Feb. 29, 2016).
2/29/2016 American Heritage Dictionary Entry: ware
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ware 1 (wâr)

Tw eet
Share:
n.
1. An item that is offered for sale.
2. An attribute or ability, especially when regarded as an article of commerce: "Mathewson had displayed impressive wares with his fastball, big overhand curve and baffling
'fadeaway' (today known as a screwball)" (Stuart Miller).
[Middle English, from Old English waru, goods; see wer3 in the Appendix of IndoEuropean roots.]
The American Heritage® Dictionary of the English Language, Fifth Edition copyright ©2015 by Houghton Mifflin Harcourt Publishing Company. All rights reserved.

ware 2 (wâr) Archaic
Tw eet
Share:
tr.v. wared, war·ing, wares
To beware of.
adj.
1. Watchful; wary.
2. Aware.
[Middle English waren, from Old English warian; see wer3 in the Appendix of IndoEuropean roots. Adj., Middle English; see WARY.]

ware
Tw eet
Share:
suff.
1. Articles of the same general kind, made of a specified material, or used in a specific application: hardware; silverware.
2. Software: groupware; shareware.
[From WARE1. Sense 2, from (SOFT)WARE.]

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Copyright 2016 Houghton Mifflin Harcourt. All rights reserved.
Attorneys at Law PO Box 100637 * NJ DC Bar
Erik M. Pelton* Arlington, VA 22210 ** NY Bar
John C. Heinbockel** T: 703.525.8009 *** VA DC & NY Bar
Benjamin D. Pelton*** F: 703.997.5349 erikpelton.com
of counsel
November 2, 2016
Dawn Feldman Lehker

Law Office

Mark: APPWEAR
Office Action Of: May 10, 2016
APPLICANT’S RESPONSE TO OFFICE ACTION
The following is the response of Applicant, Alan J. Miles, by Counsel, to the Office
Action sent via email on May 10, 2016, by Examining Attorney Dawn Feldman Lehker.
IDENTIFICATION OF GOODS
Applicant hereby amends the identification of goods and services as follows:
“Temperature controlled clothing, namely, caps, coats, ear muffs, gloves, hats, pants,
shirts, socks, and vests” in Class 25.
MERE DESCRIPTIVENESS REFUSAL

The Examining Attorney has continued the refusal to register Applicant’s mark pursuant
to Section 2(e)(1) of the Lanham Act, 15 U.S.C. § 1052(e)(1), on the grounds of mere
descriptiveness. Applicant respectfully disagrees. Applicant incorporates the arguments and
evidence of its March 2, 2016 response with the arguments and evidence presented herein.
A term is merely descriptive only if it describes the specified goods or services with such
a degree of particularity that the mark immediately conveys knowledge of a significant quality,
characteristic, function, feature or purpose of the product or service it identifies. See In re Bayer
Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007); In re Gyulay, 820 F.2d 1216, 1217 (Fed. Cir.
page 2 Response to May 10, 2016 Office Action SN 86767984
Law Office
1987); Plus Products v. Medical Modalities Assocs., 211USPQ1199, 1204-05 (TTAB 1981).
Alternatively, when one must use imagination, mature thought, or follow a multistage reasoning
process to determine what characteristic a term identifies, it is suggestive and registrable. See
Gyulay, 820 F.2d at 1217. Whether a particular mark is merely descriptive is determined in
relation to the services for which registration is sought and the context in which the term is used.
In re Abcor Dev. Corp., 588 F.2d 811, 812 (CCPA 1978).
Applicant’s mark is not merely descriptive but suggestive, because the mark does not
describe Applicant’s goods with particularity. Instead, the mark requires consumers to use
additional thought, perception, or imagination to comprehend the significance of the mark in
relation to Applicant’s clothing. Although the Examining Attorney argues that consumers are
accustomed to seeing climate controlled clothing, there are numerous ways that apps may
relating to clothing. The term APPWEAR is ambiguous because there are numerous ways that
consumers may interpret such a broad term in the context of Applicant’s goods. For example,
there are apps that allow consumers to use their smartphones for precision sizing, see Exhibits A
& B, and apps that deliver tailors on demand. See Exhibit C. Consumers encountering
Applicant’s APPWEAR mark would therefore need to use additional thought, perception, or
imagination to determine the nature of the goods, and the mark is not merely descriptive. See See
In re Shutts, 217 USPQ 363 (TTAB 1983).
Furthermore, the Examining Attorney’s additional evidence of examples of
technologically enabled clothing is not very probative. First, the examples do not show actual use
in commerce within the U.S., but reference academic or prototype projects. For example, two of
the four articles discuss a project developed by a former MIT student. To the extent these goods
are for sale, the articles refer to the goods as India-based and as being used in the Himalayas. A
third article describes goods from Australia.
Second, the goods shown in the Examining Attorney’s evidence are very different from
Applicant’s goods. Neither of the two products described in the articles submitted appear to use
an app—there is no such mention in the articles. Those goods instead use battery operated
controllers attached to the clothing items. Additionally, none of the examples provided by the
Examining Attorney use any term similar to APPWEAR. These examples instead use terms like
“climate control” or “computer clothing” and “smart.” The most similar example seen in the
Examining Attorney’s evidence, CLIMAWARE, is used as a brand name, thus showing that
Law Office
consumers are likely to understand Applicant’s mark as a source-identifier rather than a

descriptor. The only piece of evidence showing a good clearly offered for sale in the U.S. shows
insoles with various smart functions. Insoles are not clothing, and are not typically sold by
clothing manufacturers. Therefore, the only piece of evidence showing use in commerce is not
related to Applicant’s goods.
Because of numerous possible interpretations of Applicant’s mark require consumers to
use additional thought, imagination, or perception and the lack of evidence showing
descriptiveness, the mere descriptiveness refusal should be withdrawn. Applicant’s mark should
proceed to publication.
Applicant has responded to all issues raised in the Office Action. If any further
information or response is required, please contact Applicant’s attorney. The attorney may be
reached by telephone at 703-525-8009.
Respectfully submitted,
Erik M. Pelton, Esq.

Attorney for Applicant
Exhibits
Exhibit A: MTAILOR, https://www.mtailor.com/ (last visited Oct. 11, 2016).
Exhibit B: Eliza Brooke, “8 Startups Trying to Help You Find Clothing That Fits,”
FASHIONISTA (Jul. 22, 2014), http://fashionista.com/2014/07/8-tech-startups-
tackling-clothing-fit (last visited Oct. 11, 2016).
Exhibit C: Sophia Chabbott, “Tailoring at Your Fingertips: This New App Sends Tailors to
You On Demand,” GLAMOUR (Jun. 1, 2015),
http://www.glamour.com/story/ztailors-uber-tailoring (last visited Oct. 11, 2016).
Law Office
November 2, 2016
Dawn Feldman Lehker

Law Office

Mark: APPWEAR
Exhibit A: MTAILOR, https://www.mtailor.com/ (last visited Oct. 11, 2016).

MTailor https://www.mtailor.com/
Stop Wearing Another

Man's Clothing.
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seconds for perfect fitting custom clothing.
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1 of 4 10/11/2016 1:37 PM
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Bit Body, Inc. 2016 · Privacy Policy and Terms (/legal/privacypolicyandterms)
4 of 4 10/11/2016 1:37 PM
Law Office
November 2, 2016
Dawn Feldman Lehker

Law Office

Mark: APPWEAR
Exhibit B: Eliza Brooke, “8 Startups Trying to Help You Find Clothing That Fits,”
FASHIONISTA (Jul. 22, 2014), http://fashionista.com/2014/07/8-tech-startups-
tackling-clothing-fit (last visited Oct. 11, 2016).
8 Startups Trying To Help You Find Clothing That Fits - Fashionista http://fashionista.com/2014/07/8-tech-startups-tackling-clothing-fit
GET YOUR TICKET

NOW
SHOPPING
If advances in fit technology mean fewer returns, we are all for it.
The phrase "fit technology" may initially make your mind leap to step-counting
step-counting
step-countingbands
bands
bands and exercise
exercise
exercise
tracking apps, but there's a whole other breed of fit tech startups out there that you should get on
your radar, ASAP: The ones that are using technology to make your clothing fit better. It's a wide
playing field, from programs that operate within online stores to improve their sizing recommenda-
tions to 3D body scanners that make custom tailoring that much more precise. And the payoffs of
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1 of 1 10/11/2016 1:43 PM
Law Office
November 2, 2016
Dawn Feldman Lehker

Law Office

Mark: APPWEAR
Exhibit C: Sophia Chabbott, “Tailoring at Your Fingertips: This New App Sends Tailors to
You On Demand,” GLAMOUR (Jun. 1, 2015),
http://www.glamour.com/story/ztailors-uber-tailoring (last visited Oct. 11, 2016).
The Uber of Tailoring: Apps That Send Tailors to You | Glamour http://www.glamour.com/story/ztailors-uber-tailoring
Fashion SUBSCRIBE
1 of 6 10/11/2016 1:39 PM
Fashion
DRESSED
Tailoring at Your Fingertips: This New App

Sends Tailors to You On Demand
BY SOPHIA CHABBOTT JUNE 1, 2015 6:45 AM
These days, with hairstylists and manicurists who'll show up on your doorstep at the push of a
button and services such as same-day shipping for e-commerce purchases, there's little need to
leave your house. One less errand you'll have to run now? Going to the tailor.
The New York Times reports that Men's Wearhouse founder George Zimmer has launched an
app called zTailors—and it's already been dubbed the Uber for tailors. The app has already
on-boarded more than 600 tailors in major cities across the country and plans to ramp up to
1,000 on-call across all states by year's end. Prices will range from $16 to hem a pair of pants to
2 of 6 10/11/2016 1:39 PM
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Trademark Office Action Response Regarding Descriptiveness

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Attorneys at Law 111 Park Place *NJ DC Bar

Erik M. Pelton Falls Church, VA 22046 ** NY Bar

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Dawn Feldman Lehker

RE: Serial No: 86767984

APPLICANT'S RESPONSE TO OFFICE ACTION

Where consumers must engage in a multi-stage reasoning process to comprehend a mark

Erik M. Pelton, Esq.

Exhibit D: “Ware,” AM. HERITAGE DICT., https://ahdictionary.com/word/search.html?q=ware

1: Quantifying movements within physical work environments.

2: Working with information more efciently.

presents a new frontier for improvement: Each

3: Analyzing the big data inside us.

This article is about TECHNOLOGY

Related Topics: PRODUCTIVITY

Wearable tech combines style with a social

Save for later Article saved

The future will eat itself: digesting the next

So what can we expect?

Embeddables and invisibles

Save for later Article saved

ware 1 (wâr)

The The The

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Dawn Feldman Lehker

RE: Serial No: 86767984

APPLICANT’S RESPONSE TO OFFICE ACTION

MERE DESCRIPTIVENESS REFUSAL

consumers are likely to understand Applicant’s mark as a source-identifier rather than a

Erik M. Pelton, Esq.

Exhibit A: MTAILOR, https://www.mtailor.com/ (last visited Oct. 11, 2016).

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Dawn Feldman Lehker

RE: Serial No: 86767984

Exhibit A: MTAILOR, https://www.mtailor.com/ (last visited Oct. 11, 2016).

Stop Wearing Another

Customize Your Style

Design your shirt or suit.

Get Measured in Under 30

Enjoy Your Perfect Fit

Receive your shirt or suit in the mail and

Options for Every Occasion

Medium Blue Denim

100% Money 20% Better Free Questions?

Start Customizing Your Shirt

With MTailor in your pocket, perfect

Bit Body, Inc. 2016 · Privacy Policy and Terms (/legal/privacypolicyandterms)

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Dawn Feldman Lehker

RE: Serial No: 86767984

GET YOUR TICKET

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Dawn Feldman Lehker

RE: Serial No: 86767984

Tailoring at Your Fingertips: This New App

Miley Cyrus Talking About

News and Politics

Athletes Weigh in on What

8 Brilliant Tips for Getting

Hinge Announces It’s

CoverGirl Just Announced

15 Scary Good Halloween

UK Greece France Hungary Germany Poland Spain Sweden Russia Netherlands