UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/231007
APPLICANT: Wi-Fi Alliance
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CORRESPONDENT ADDRESS: Kimberly G. Russell STEINHART & FALCONER LLP 333 MARKET ST STE 3200 SAN FRANCISCO CA 94105-2150
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov
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MARK: WI-FI PROTECTED ACCESS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 93775-1013
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 78/231007
The assigned examining attorney has reviewed the referenced application and determined the following.
A. No Conflicting Marks Noted
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. Section 1052(d). TMEP section 1105.01.
B. Mark is Merely Descriptive
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 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. 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 section 1209.01(b).
The applicant’s mark is WI-FI PROTECTED ACCESS for “computer software, namely, global wireless software solutions.” The mark immediately identifies a feature or function of the goods, i.e., it tells prospective consumers that the goods provide protected access to wireless fidelity networks. See the attached excerpt from the World Wide Web, demonstrating that WI-FI is the official acronym for wireless fidelity networks. The meaning of the wording PROTECTED ACCESS is apparent on its face. As such, the mark is merely descriptive.
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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
Regards,
/Scott Oslick/
Trademark Examining Attorney
Law Office 108
(703) 308-9108 ext. 117 (Telephone)
(703) 746-8108 (Fax - Official Responses Only)
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.