UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/256017

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Results

 

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.

 

Section 1(a) Actual Use Basis is Refused  - Verified Specimen of Use is Required

The examining attorney refuses registration of the subject mark for the identified goods because the record fails to establish that the proposed mark is in actual use and is functioning as a source indicating mark for the goods set forth in the application.  Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.  No specimen showing actual use of the mark on the goods was submitted with the application.  Therefore, based on the present record, the mark has not been shown to identify and distinguish the applicant's goods from those of others and to thus indicate source in the applicant. 

A mark is deemed to be in use in commerce on goods when "it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale...." The mode or manner in which the mark is used in connection with the goods is shown by means of specimens.  15 U.S.C. §1051(a)(1)(C) and (d)(1).

Specimens of use provide part of the basis for examination because they show the manner in which the mark is seen by the public.  Specimens also provide supporting evidence of facts recited in the application. A specimen showing actual use of the mark in commerce on or in association with the goods and/or services in each International Class of goods and/or services identified in an application is required where the application is based on a claim of the actual use of the mark in commerce for the goods and/or services.  Trademark Act Section 1(a), 15 U.S.C. §1051(a).  TMEP §904. 

Examples of acceptable specimens to show use of a mark on goods are  labels, tags, or containers for the goods on which the mark appears,  a photograph of  containers for the goods that shows the mark on the goods or on packaging for the goods, or a photograph of display showing the mark associated with the goods.  37 C.F.R. §2.56(b)(1).  In the case of computer programs, an acceptable specimen might be a photograph of a display screen projecting the identifying trademark of a computer program.  For downloadable computer software, the applicant may submit a specimen that shows use of the mark on an Internet website. However, such a specimen is acceptable only if the specimen itself indicates that the user can download the software from the website (e.g., if the specimen shows a download button). If the website simply advertises the software without providing a way to download it, the specimen is unacceptable.

A photocopy or other reproduction of a specimen of the mark as actually used in connection with the goods and/or services  is acceptable.  37 C.F.R. §2.56(c).  However, the specimens may not be a "picture" of the mark, such as an artist's drawing or a printer's proof, which merely illustrates what the mark looks like.  Similarly, a copy of the mark as shown on the drawing page is not an acceptable specimen of actual use of a mark on or in connection with goods or services.  TMEP Section 904.04.  Additionally, advertising material is generally not acceptable as a specimen for goods.  Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use.  Announcements and publicity releases are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods.  TMEP Section 904.05.

In the instant case, the applicant has submitted as its specimen a copy of  the “use of OVAL in [the] description in web based trade press”.  This specimen is not acceptable to show actual trademark use of the subject mark because the “use” shown is only that of the word OVAL in a description of a press release or announcement.  It does not show the actual use of the OVAL OPEN VULNERABILITY ASSESSMENT LANGUAGE & Checkmark Design mark shown in the drawing of record, nor does it show use of the mark in the drawing on the actual program tool. 

Accordingly, in order to maintain the claimed Section 1(a) actual use basis, the applicant must submit, for each Class of goods in the application, a specimen showing the mark as actually used in commerce on the identified goods.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen(s) was/were in use in commerce at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 905.10

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20, which should be signed and dated by a person authorized to sign on behalf of the applicant.   37 C.F.R. Section 2.33(a), as amended. The fully executed and signed Declaration should then be returned with the Applicant’s complete Response to this Office Action.

 

Declaration Under Rule 2.20 in Support of Substitute Specimen

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 he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that the substitute specimen submitted herewith was in use in commerce in association with the goods and/or  services identified in this application as of a date at least as early as the filing date of this application; that the facts set forth in this application are true and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.                                                               

                                                                                    _____________________________

                                                                                                              (Signature)                                                            

                                                                                    _____________________________

                                                                                    (Print or Type Name and Position)

                                                                                    _____________________________

                                                                                                            (Date)

  

Applicant May Amend to Claim Intent to Use Mark in Commerce

 

If the applicant cannot comply with the requirement for a substitute specimen in support of the actual use basis asserted, the applicant may substitute a different basis for filing if the applicant can meet the requirements for the new basis.  In this case, the applicant may wish to amend the application to assert an intent to use basis.

 

To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

This statement also must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. Sections 2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b);  37 C.F.R. Section 2.34(a)(2)(i).

 

Substitute Drawing is Required

 

The drawing submitted with the application is not acceptable because the drawing contains gray shading and thus will not satisfactorily reproduce for publication and/or issuance of a certificate of registration of the mark..  Applicant must submit a new drawing that clearly shows the entire mark, meets the size requirements for special form drawings, and otherwise conforms to 37 C.F.R. §§2.52; TMEP §807.07(a).

Drawing Standards

 

The rules for drawings changed November 2, 2003.  Because the applicant’s filing date precedes this date, the applicant may proceed under the former rules or conform to the new rules.  The applicant must state the preference for the mark and comply with the appropriate standards.

Pre November 2, 2003 Standards for Special Form Drawings

 

The pre-November 2, 2003 requirements for a special-form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

Standards After November 2, 2003

 

Post November 2, 2003 Requirements for Special Form Drawings Submitted via Paper Filings

 

The post November 2, 2003 requirements for a special-form drawing submitted via paper are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

Post November 2, 2003 Requirements for Special Form Drawings Submitted via TEAS

 

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The Office will only accept an image in .jpg format.  The image must be formatted at no less than 300 dots per inch and no more than 350 dots per inch; and with a length and width of no less than 250 pixels and no more than 944 pixels.  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.  37 C.F.R. §2.53.

 

Statement of Significance of Shading is Required

 

The Applicant also must clarify whether the gray tones in the drawing now of record are intended to indicate the color gray.

 

(1)   If the color gray is a feature of the mark, then applicant must submit a color claim and description as follows:  “The color gray is a feature of the mark.  The color gray appears in [specify where color gray appears].”  37 C.F.R. §§2.52(b) and (b)(1).

 

(2)   If the color gray is intended to indicate shading only, then applicant must submit a new drawing showing the mark in black and white only, with the gray tones deleted.

 

Disclaimer of Literal Elements of the Mark is Required

 

Under the terms of  Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), an applicant may be required to  disclaim an element of a mark that is merely descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b).

 

In the instant case, the Applicant seeks registration of  OVAL OPEN VULNERABILITY ASSESSMENT LANGUAGE & Checkmark Design for a “Computer software tool to enable testing of computer systems for exploitable vulnerabilities.”  As shown in the attached copies of web page articles and definitions, the term OVAL is, per the applicant’s own website,  the name of the “common language for security experts to discuss and agree upon technical details about how to check for the presence of a vulnerability on a computer system,” or, in the applicant’s shorter version, “The language to determine the presence of software vulnerabilities.”  Per the additional web page articles and definitions, OVAL is the OPEN standard for VULNERABILITY ASSESSMENT LANGUAGE.  As such, the terms OPEN VULNERABILITY ASSESSMENT LANGUAGE are at least merely descriptive of a function of or feature utilized in the software tool in association with which registration of the subject mark is sought here.

 

Moreover, to the extent that the term OVAL is the generic name of  an open standard computer language which is utilized by the software tool in association with which registration is sought here, the term OVAL also merely identifies the standard language used in the software tool, but does not identify the goods (i.e., the software tools to enable the testing) in trade in association with which registration is sought.  As such, the term OVAL also is merely descriptive of a feature of the software tool, and must be disclaimed apart from the mark as a whole.

 

Thus, the applicant must insert a disclaimer of all of the literal descriptive or generic terms appearing in the mark – i.e., the applicant must disclaim OVAL and OPEN VULNERABILITY ASSESSMENT LANGUAGE, apart from the mark as a whole.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1213.  The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use the terms OVAL and OPEN VULNERABILITY ASSESSMENT LANGUAGE, apart from the mark as shown.

 

 

/Barbara Loughran/

Trademark Examining Attorney

Law Office 113

(703) 308-9113  ext 208

 

 

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.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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