UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

SEARCH RESULTS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, applicant must address the following issues.

 

 

IDENTIFICATION OF GOODS

 

Applicant has classified “computer gaming machines, namely hand-held units for playing electronic games for use with external display screen or monitor” in International Class 9; however, the proper classification is International Class 28.  Therefore, applicant must either (1) add International Class 28 to the application and reclassify these goods in the proper international class, or (2) delete the wording “computer gaming machines, namely hand-held units for playing electronic games for use with external display screen or monitor” from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may adopt the following identification of goods, if accurate:

 

“Computers; computer hardware; mobile digital electronic devices for sending and receiving of telephone calls, electronic mail, and for use as a handheld computer, digital audio and video player, personal digital assistant, electronic organizer, electronic book reader, electronic notepad, electronic calendar, global positioning system (GPS) device, and camera; computer software for use in uploading, downloading, storing, backing up, transmitting, receiving, accessing, retrieving, managing, organizing, and synchronizing data, email, documents, images, audio, video, multimedia content, electronic publications, computer files and other computer software; computer software for tracking the location of mobile digital electronic devices; computer software for use in accessing the Internet or other computer or communications networks; computer programs for personal information management; electronic mail and messaging software; database synchronization software; database management software; computer game software for use with or on personal computers, telephone, mobile telephones, or videophones; telephones; mobile telephones; videophones” in International Class 9

 

“Computer gaming machines, namely hand-held units for playing electronic games for use with external display screen or monitor” in International Class 28

 

See TMEP §1402.01.

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

MULTIPLE CLASS APPLICATIONS REQUIREMENTS

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)       LIST GOODS BY INTERNATIONAL CLASS:  Applicant must list the goods by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the descriptive wording “ICLOUD” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (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); TMEP §§1213, 1213.03(a). 

 

According to the attached evidence, the letter “i” or “I” used as a prefix would be understood by the purchasing public to refer to the Internet when used in relation to Internet-related products or services.  Specifically, the attached excerpt from www.abbreviations.com shows that “I” means “Internet.”

 

“Cloud computing” is “Cloud computing is a type of computing that relies on sharing computing resources rather than having local servers or personal devices to handle applications.” See attached evidence from www.webopedia.com.

 

When a mark consists of this prefix coupled with a descriptive word or term for Internet-related goods, then the entire mark may be considered merely descriptive.  See In re Zanova, Inc., 59 USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive of computer software for use in creating web pages, and custom designing websites for others); TMEP §1209.03(d).

 

As the attached evidence from www.google.com/hostednews and paidcontent.org shows that applicant’s goods offered under the proposed mark are used in connection the internet cloud. Thus, the wording “ICLOUD” merely describes a feature of applicant’s goods as being used in connection with the “internet cloud.”

 

Applicant may submit the following standardized format for a disclaimer:

                       

No claim is made to the exclusive right to use “ICLOUD” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

/Kristina Morris/

Examining Attorney

Law Office 116

571-272-5895

kristina.morris@uspto.gov (informal queries only)

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.