Trademark Office Action Success

Overcoming a 2(e)(1) Descriptiveness Refusal of a Chinese-Character Mark

ZYL Law Firm answered a USPTO merely-descriptive refusal of a stylized four-character Chinese mark for traditional Chinese medicine services by correcting the transliteration and proving the wording functions as a coined brand term, not the name of an herbal ingredient.

Section 2(e)(1) Refusal Serial No. 79404332 Refusal Answered
This case study is based on public USPTO records (U.S. Application Serial No. 79404332, a stylized four-character Chinese mark in Class 44). Confidential strategy details are summarized.

Challenge

The applicant, a traditional Chinese medicine clinic, sought U.S. protection for a stylized four-character Chinese mark in International Class 44. The USPTO refused registration under Section 2(e)(1), reasoning that the leading characters “厚朴” translate to “magnolia bark” (hòu pò) — an herbal ingredient — so the mark merely described a feature of the applicant's medical services.

The refusal rested entirely on how the characters should be read and translated. If the examining attorney's hòu pò / “magnolia bark” reading stood, the mark would be descriptive; the response had to displace that reading with the correct pronunciation and meaning as the applicant actually used the mark.

2(e)(1)Merely-descriptive refusal addressed
ReadingTransliteration corrected to hòu-pǔ
ResultCoined, source-identifying mark shown

Strategy

  • Corrected the transliteration: in the applicant's use the characters are pronounced hòu and pǔ (third tone) and operate as a coined, homophonic reference to the English word “HOPE,” a core element of the applicant's branding and company name — not the herb name hòu pò.
  • Showed the reading is linguistically supported, citing dictionary references that “厚” conveys senses such as “generous” and “kind,” and that the polyphonic “朴” is most commonly read pǔ (“simple, plain”), while the pò (“bark”) reading is comparatively uncommon.
  • Explained that read together “厚朴 (hòu-pǔ)” is not a common Chinese word or phrase and is not intended to identify the herbal ingredient, so Chinese-speaking consumers would not default to a “magnolia bark” meaning.
  • Satisfied the related requirements — the corrected transliteration/translation statement, the amended mark description (“four stylized Chinese characters”), U.S. counsel, and email — so the record fully supported withdrawal of the refusal.

Result

The response replaced the examining attorney's “magnolia bark” reading with the correct hòu-pǔ pronunciation and meaning, establishing that the mark functions as a coined, source-identifying term tied to the applicant's “HOPE” branding rather than describing an ingredient of the services — and asked the USPTO to withdraw the Section 2(e)(1) refusal.