UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/519222
APPLICANT: EverGreen Data Continuity, Inc.
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CORRESPONDENT ADDRESS: MICHELLE A. MASSICOTTE HINCKLEY, ALLEN & SNYDER LLP 28 STATE STREET BOSTON, MASSACHUSETTS 02109-1775
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: MITIGATOR
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/519222
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
TRADEMARK ACT SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods and services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
The applicant seeks registration of the mark “MITIGATOR,” in typed form, for software for use in business continuity planning, disaster recovery planning, business impact assessment, technology risk assessment, business continuity strategy recommendation, business continuity testing, disaster recovery management, and business development; business consultation, namely business continuity planning, disaster recovery planning, business impact assessment, technology risk assessment, business continuity strategy recommendation, business continuity testing, disaster recovery management, and business development consultation; training related to software for use in business continuity planning, disaster recovery planning, business impact assessment, technology risk assessment, business continuity strategy recommendation, business continuity testing, disaster recovery management, and business development consultation.
A “mitigator” is “one who, or that which, mitigates.” The Online Plain English Text Dictionary. “Mitigate” is defined as “to reduce the impact of something,” Investorwords.com, (2003), and “to lessen negative impact,” MoneyGlossary.com. The United Nations Department of Humanitarian Affairs defines “mitigation” as “measures taken in advance of a disaster aimed at decreasing or eliminating its impact on society and environment.” Internationally agreed glossary of basic terms related to Disaster Management, (December 1992). The examining attorney also refers to the attached sampling of articles from the Lexis/Nexis® database as evidence of the descriptiveness of the proposed mark.
The function of the applicant’s goods and services is to aid in mitigating the extent to which events or conditions impact a business, therefore, the goods and services are a “mitigator.” Accordingly, the proposed mark is merely descriptive for a function and purpose of the relative goods and services and registration must be refused under Section 2(e)(1) of the Trademark Act.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Amendment to the Supplemental Register: Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The identification of goods and services is unacceptable as indefinite. Moreover, the identification refers to goods and services falling in at least three international classes. The applicant must either delete the goods or services falling in the additional class or add a class to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
The applicant may adopt the following identification, if accurate:
“computer software for use in business continuity planning, disaster recovery planning, business impact assessment, technology risk assessment, business continuity strategy recommendation, business continuity testing, disaster recovery management, and business development,” in International Class 9; and/or,
“business consultation services in the areas of business continuity planning, disaster recovery planning, business impact assessment, technology risk assessment, business continuity strategy recommendation, business continuity testing, disaster recovery management, and business development consultation,” in International Class 35; and/or,
“educational services, namely, training in the use of software in the field of business continuity planning, disaster recovery planning, business impact assessment, technology risk assessment, business continuity strategy recommendation, business continuity testing, disaster recovery management and business development consultation,” in International Class 41.
TMEP §§1402.01 and 1402.11.
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. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
On-line Acceptable Identification of Goods and Services Manual information: For the applicant’s reference the examining attorney provides the following address for the identification of goods and services manual on the United States Patent and Trademark Office’s web site:
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
The applicant may wish to consult the on-line identification manual for a listing of acceptable common names of goods and services. While the list is not exhaustive, the manual should give the applicant direction regarding proper international classification and information and specificity required in the applicant’s identification of goods and/or services.
The application identifies goods and services that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date. 37 C.F.R. §2.6(a)(1).
If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods and services in each class and list the goods and services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods and services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
Goods: The specimen is unacceptable as evidence of actual trademark use because it shows use of the mark on advertising for the identified software as opposed to on the software itself. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP §§904.05 and 904.07. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq.
Services: The specimen does not show use of the mark for any of the services identified in the application. Rather, the specimens of record merely show the proposed mark in the advertising of the identified Class 9 goods. The applicant must submit a specimen showing use of the mark for the services specified. 37 C.F.R. §2.56; TMEP §904. Examples of acceptable specimens for services are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
Declaration in support of specimens: The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09. A properly worded declaration is provided for the applicant’s use.
RESPONSE GUIDELINES
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant’s telephone number.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Martha L. Fromm/
Martha L. Fromm
Trademark Attorney
Law Office 106
Phone: (703) 308-9106 ext. 221
Fax: (703) 746-8106 (formal responses)
Fee increase effective January 1, 2003:
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods and services will be $335.00 per class for classes added on or after January 1, 2003.
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
Declaration in support of substitute specimen:
The substitute specimen was in use in commerce at least as early as the filing date of the application.
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
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(Signature)
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(Print or Type Name and Position)
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(Date)
108B8C
Print Request: Selected Document(s): 12,14-16,28,32-34,36,37,39,41
Time of Request: November 07, 2003 08:48 AM EST
Number of Lines: 291
Job Number: 1862:0:20794226
Client ID/Project Name:
Research Information:
News, Most Recent Two Years (English, Full Text)
mitigat! w/10 ("disaster recovery" or "risk assessment" or "impact assessment")
Send to: FROMM, MARTHA
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
12 of 346 DOCUMENTS
Copyright 2003 Washington Business Information, Inc., All Rights Reserved
Part 11 Compliance Report
October 15, 2003
SECTION: Vol. 3, No. 20
LENGTH: 696 words
HEADLINE: RISK ASSESSMENT TECHNIQUES CAN PROVIDE COMPLIANCE DIRECTION
BODY:
...evaluated early on during the design of a system, Geiger said. But if you already have completed your computer systems risk assessment, your main concern is to make sure that you mitigate the risks you have identified, she said.
FMECA: FMECA was introduced in the 1950s and first used by the aerospace industry and U.S. military. ...
14 of 346 DOCUMENTS
Copyright 2003 Reed Business Information UK, a division of Reed Elsevier Inc.
All Rights Reserved
Utility Week
October 10, 2003
SECTION: Features; Pan-Utility; Pg. 21
LENGTH: 878 words
HEADLINE: Don't risk it;
Utility companies' IT security policy should be driven by a sensible appraisal of risk, rather than panic-induced, short-term solutions. Jay Heiser reports.
BYLINE: by Jay Heiser; Jay Heiser is an analyst at security intelligence specialist TruSecure (
BODY:
...effect, they should be matched against real risk, not supposition. This approach is security with intelligence, involving what can be termed the three R's: risk assessment, risk mitigation and risk monitoring.
Risk assessment is the first and most crucial element of risk management. Risk assessment involves the identification of core vulnerabilities within the business, and key ...
15 of 346 DOCUMENTS
Copyright 2003 American Banker, Inc.
The American Banker
October 8, 2003, Wednesday
SECTION: TECHNOLOGY: THE TECH SCENE; Pg. 1
LENGTH: 919 words
HEADLINE: Backup-Site Sharing Gets A Following
BYLINE: BY Chris Costanzo
BODY:
...operations, along with a small number of shared seats whose support costs would be spread out among the participating banks. This configuration would mitigate the types of problems that erupt at commercial disaster recovery sites when several institutions at once vie for seats on a first-come, first-served basis, and ...
16 of 346 DOCUMENTS
Copyright 2003 The Washington Post
The Washington Post
October 05, 2003, Sunday, Final Edition
SECTION: METRO; Pg. C03
LENGTH: 1056 words
HEADLINE: Insidious Hazard In Wake of Floods; Bleach in Hand, Residents Fight Mold
BYLINE: Annie Gowen, Washington Post Staff Writer
BODY:
...it can become a health hazard and an air quality issue," said Roger Faris, a hazard mitigation counselor with the Federal Emergency Management Agency's disaster recovery center in Alexandria. "It can be done, but you really have to be diligent. It's a serious issue."
Miriam Newton, a ...
28 of 346 DOCUMENTS
Copyright 2003 Federal News Service, Inc.
Federal News Service
September 11, 2003 Thursday
SECTION: PREPARED TESTIMONY
LENGTH: 5190 words
HEADLINE: PREPARED STATEMENT OF BARBARA D. BOVBJERG
BEFORE THE HOUSE COMMITTEE ON THE JUDICIARY SUBCOMMITTEE ON IMMIGRATION, BORDER SECURITY, AND CLAIMS
SUBJECT - PROPOSED TOTALIZATION AGREEMENT WITH MEXICO PRESENTS UNIQUE CHALLENGES
BODY:
...benefit payment accuracy or expose the nation's system to undue risk. Our Internal Control Management and Evaluation Tool provides a risk assessment framework to help federal managers mitigate fraud, waste, abuse, and mismanagement in public programs, such as social security. A key component of this framework is the identification of internal and ...
32 of 346 DOCUMENTS
Copyright 2003 PR Newswire Association, Inc.
PR Newswire
September 3, 2003, Wednesday
SECTION: FINANCIAL NEWS
DISTRIBUTION: TO LEGAL AFFAIRS, NATIONAL AND POLITICAL EDITORS
LENGTH: 596 words
HEADLINE: Kipp Coddington, Alston & Bird Attorney, to Chair and Speak at Homeland Security Conference for the Utility Industry;
Authority on Homeland Security to Lead Electric Industry Event on Disaster Response and Recovery Planning
DATELINE: WASHINGTON, Sept. 3
BODY:
...a variety of international and domestic requirements pertaining to chemicals and the environment. Coddington has developed a particular expertise in the use of risk assessment techniques to mitigate legal and policy concerns associated with human exposure to various agents.
With offices in Atlanta, Washington, D.C., Charlotte and the Research ...
33 of 346 DOCUMENTS
Copyright 2003 Trusecure Corporation
Information Security
September, 2003
SECTION: FEATURES; Q & A; Pg. 62
LENGTH: 1207 words
HEADLINE: MOVING BEYOND FEAR
BYLINE: by LAWRENCE M. WALSH; LAWRENCE M. WALSH (lwalsh@infosecuritymag.com) is managing editor of Information Security.
BODY:
...applying it from individual security decisions to national security decisions. The simplicity of the framework is what makes it useful.
Do you think appropriate risk assessment and risk mitigation is missing in enterprise environments?
Companies do risk assessment and mitigation naturally. Business is risk, and smart businesses manage risks well, whether they're the risks of doing business in a foreign ...
34 of 346 DOCUMENTS
Copyright 2003 Glasser LegalWorks. All rights reserved.
The M&A Lawyer
September 2003
The M&A Lawyer, September 2003, at Page 1
SECTION: Vol. 7, No. 4, Pg. 1
LENGTH: 7540 words
HEADLINE: A New Voice in the Corporate Governance Debate--The Recommendations of WorldCom's Corporate Monitor
AUTHOR: Warren S. do Wied
BODY:
...including reviewing management's identification of all major risks to the business and their relative weight.
* The Committee should regularly assess the adequacy of management's risk assessment, its plans for risk control or mitigation, and disclosure, and should consult from time to time with major shareholders.
* The Committee should meet not less than six times per year.
* * * * * * * * * * *
The scope of the ...
AUTHOR-NOTES: Copyright © 2003 Fried, Frank, Harris, Shriver & Jacobson. Warren S. de Wied (dewievva@ffhsj.cnm) is a Partner of Fried, frank, Harris, Shriver & Jacobson in New York City and a member of the Editorial Advisory Board for The M&A Lawyer.
36 of 346 DOCUMENTS
Copyright 2003 CMP Media LLC
Optimize
September 1, 2003
SECTION: BUSINESS LEADERSHIP; Pg. 48
LENGTH: 2247 words
HEADLINE: Fending Off Disaster -- CIOs understand backup better than any other executive. Now's the time to act on that knowledge.
BYLINE: Mark Dangelo
BODY:
...employee turnover.
- Infrastructure. This is the most commonly addressed segment of business-continuity efforts, but also where executives least understand the risk-mitigation and investment analysis. The billions of dollars corporations spend on disaster recovery every year too often is viewed as insurance rather than part of the operational fabric of high availability. Invest in your infrastructure ...
37 of 346 DOCUMENTS
Copyright 2003 CMP Media LLC
Optimize
September 1, 2003
SECTION: CORPORATE CULTURE; Pg. 63
LENGTH: 3611 words
HEADLINE: Send In The Chief Risk Officer -- A coordinated, enterprisewide risk-management plan is essential for survival
BYLINE: Sandra Pundmann and Bill Kobel
BODY:
...rework. Incorporate risk management into the entire IT life cycle.
- If risk assessments haven't been performed historically, do a baseline risk assessment of the IT environment to identify critical IT assets, threats and vulnerabilities, and risk-mitigation alternatives. Establish a risk-mitigation plan for the critical IT assets.
- Monitor the regulatory and legal environment. Define ...
39 of 346 DOCUMENTS
Copyright 2003 Gale Group, Inc.
ASAP
Copyright 2003 American Society for Industrial Security
Security Management
September 1, 2003
SECTION: No. 9, Vol. 47; Pg. 49; ISSN: 0145-9406
IAC-ACC-NO: 108150164
LENGTH: 283 words
HEADLINE: Patch as patch can; Tech Talk; Brief Article
BODY:
...more than just a good idea for network administrators: It is a topic that needs to be included in periodic risk assessments provided to a company's board of directors. These assessments should detail measures taken to mitigate the risks to the network infrastructure.
@ The FDIC's guidance document is at www.securitymanagement.com.
41 of 346 DOCUMENTS
Copyright 2003 The New York Times Company
The New York Times
August 16, 2003, Saturday, Late Edition - Final
SECTION: Section C; Page 1; Column 2; Business/Financial Desk
LENGTH: 1291 words
HEADLINE: Good Day for Concerns That Help Save Data
BYLINE: By JOHN SCHWARTZ
BODY:
...companies like Sungard seems rather low, she said.
She asked, "did they go all the way" to upgrade their systems and procedures to make disaster recovery painless? "Absolutely not," she answered. "But there appears to be an increase in mitigating controls and recovery practices that companies have done. We're not hearing about large businesses failing."