Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

NON-FINAL OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/188803

 

This letter responds to applicant's communication filed on June 1, 2006.

 

Registration was refused under Section 2(e)(1).  In response, applicant indicates that it wishes to amend the application to seek registration under Section 2(f); however applicant has failed to satisfy the requirements of amending an application to seek registration pursuant to Section 2(f).  Accordingly, the proposed amendment is rejected and the refusal under Section 2(e)(1) is continued.

 

Additionally, registration was refused under Sections 1, 2 and 45 because the proposed mark failed to function as a trademark.  Applicant has submitted a specimen showing use of the mark as a trademark.  However, as indicated below, until applicant amends the identification of goods to make clear that applicant’s goods are downloadable, the refusal under Sections 1, 2 and 45 is continued.   

 

Finally, applicant was required to amend the identification of goods; applicant has failed to comply with this requirement.  Additionally, per the new specimen, applicant will be required to amend the identification as indicated below.  Accordingly, the requirement for an acceptable identification of goods is hereby continued. 

 

New Refusal:  Claim of Acquired Distinctiveness Under Section 2(f) Insufficient

 

In order to amend an application to seek registration pursuant to Section 2(f), applicant must satisfy certain requirements, i.e., applicant must present evidence that the mark has acquired distinctiveness.  TMEP §§ 1212 and 1212.01.  The burden of proving that a mark has acquired distinctiveness is on applicant.  See In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959).   It is insufficient to simply state that applicant wishes to amend the application to seek registration under Section 2(f).

 

There are three basic types of evidence that may be used to establish acquired distinctiveness under §2(f):

 

(1)   A claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application (see 37 C.F.R. §2.41(b);  et seq.);

 

(2)   A statement verified by the applicant that the mark has become distinctive of the applicant's goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made (see 37 C.F.R. §2.41(b);  et seq.);

 

(3)   Actual evidence of acquired distinctiveness (see 37 C.F.R. §2.41(a);  et seq.).

 

 Here, the record indicates that applicant has used its mark for a long time; therefore, applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness.  To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

 

Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d).

 

Continued Refusal:  Descriptiveness Refusal Under Section 2(e)(1)

 

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the goods.

 

Briefly, the “e” prefix has become commonly recognized as a designation for goods or services that are electronic in nature or are sold or provided electronically.  When the “e” prefix is coupled with a descriptive term or terms for electronic goods and/or services, then the entire mark is considered merely descriptive under Section 2(e)(1).  In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (E-AUTODIAGNOSTICS merely descriptive of an “electronic engine analysis system comprised of a hand-held computer and related computer software”); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (E FASHION held merely descriptive of software for use in shopping via global computer network and electronic retailing services); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET held generic for computerized reservation and ticketing of transportation services).

 

Here, the applicant’s own specimen indicates that the goods provide “a complete view of the AS/400 environment.”  In other words, the goods are used for the electronic viewing, i.e., they provide an “electronic view” or an “eview.”  Accordingly, the mark is descriptive of the goods. 

 

In response, applicant has indicated that its seeks registration under Section 2(f), but has failed to satisfy the requirements as indicated above. 

 

Thus, until applicant satisfies the requirements of amending the application to seek registration under Section 2(f), the refusal under Section 2(e)(1) is continued.

 

Continued Refusal:  Failure to Function as a Mark Under Sections 1, 2, and 45 – Improper Specimen

 

Registration is refused because the proposed mark, as used on the specimen of record, does not function as a trademark to indicate the source of the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127; In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987); TMEP §§1202 et seq.  The proposed mark does not function as a trademark  because the specimen submitted does not show use of the mark on the goods listed in the application.  Accordingly, the proposed mark cannot identify and distinguish applicant's identified goods from those of others nor indicate their source. 

 

The specimen is unacceptable as evidence of actual trademark use because it shows use of the mark on downloadable software; the identification of goods does not specify that the goods are downloadable.  Applicant must submit a specimen showing the mark as used in commerce on the actual goods.  37 C.F.R. §2.56.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

Alternatively, applicant may amend the identification of goods as indicated below to indicate that the goods are indeed downloadable.

 

Continued and New Requirement:  Identification of Goods

 

The identification of goods is unacceptable as indefinite. Accordingly, applicant must amend the wording of the identification of goods as indicated.  TMEP sections 1402.01.

 

Software in the field of network and systems management – Applicant was required to amend the identification of goods to clearly indicate the function of the software.  Applicant has refused to do so, seeming to indicate that the function is implicit from the present wording.  Applicant must indicate the purpose(s) or function(s) of the computer software. If the software is field-specific, then applicant must also specify the field of use.  TMEP §1402.03(d).  While applicant has specified a field, it has failed to clearly indicate the function of the software.  Applicant should note the attached sampling from this Office’s Manual of Acceptable Identifications of Goods and Services which demonstrates that the function of the software must be identified. 

 

Additionally, applicant has provided a specimen showing the mark as used on downloadable software.  Applicant must amend the identification of goods to indicate that the goods are indeed downloadable.

 

For example, the wording may be amended as follows:

 

-         downloadable computer software used for managing computer networks and computer systems.

 

In the identification, applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms, such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then those words must be followed by the word "namely" and the goods listed by their common commercial names.  TMEP sections 1402.01 and 1402.03(a).

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 1402.06.  Therefore, applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Responding to This Office Action

 

No set form is required for response to this Office action.  Applicant must respond to each point raised.  Applicant should simply set forth the required changes or statements and request that the Office enter them.

 

If applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116

(571) 272-9186

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.