UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 78/382410
APPLICANT: Bocada, Inc.
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
|
MARK: INTELLIGENT INFORMATION MANAGEMENT
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 2103175-115
CORRESPONDENT EMAIL ADDRESS: |
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.
|
Serial Number 78/382410
The assigned examining attorney has reviewed the referenced application and determined the following.
DESCRIPTIVENESS - Section 2(e)(1)
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive. It is enough if the term describes one attribute of the goods/services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). TMEP §1209.01(b).
In this case, the proposed mark INTELLIGENT INFORMATION MANAGEMENT is descriptive because the wording will be immediately understood by prospective customers for its common, plain language meaning as describing intelligent software and services for managing information.
Information management is “an umbrella term for the various activities that contribute to the effective production, co-ordination, storage, retrieval and dissemination of information, in whatever format, and from internal or external sources, leading to the more efficient functioning of the organisation.” See attached evidence consisting of definition(s) and Internet web pages which tends to demonstrate the descriptive significance of the mark in the relevant field of use as applied to the goods/services. The applicant provides software for analyzing data and maintains the licenses intelligent software. Hence, the applicant’s intelligent software and related services are used in the field of information management.
In light of the foregoing, the examining attorney concludes that the proposed mark is at least merely descriptive.
Alternatively, to the extent that the proposed mark does not describe any aspect of the goods, then the idea it conveys would be false because, given the nature of the goods, it is plausible that the proposed mark would immediately be understood as describing some aspect of the goods.
A mark is descriptive if it conveys an accurate or true idea of an ingredient, quality, characteristic, function or feature of the relevant goods/services. If the idea conveyed by the mark is false, and also plausible, then the term is deceptively misdescriptive and is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re Ox‑Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983). TMEP §1209.04.
Therefore, to the extent that the proposed mark does not describe any aspect of the goods as indicated above, the examining attorney concludes that the proposed mark would be deceptively misdescriptive and, therefore, in the alternative, registration is refused on that basis as well.
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.
OFFICE SEARCH
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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
My Law Office will move on 10/19/04. To reach me by phone after that date call (571) 272-9271.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9103.
/Tracy Cross/
Examining Attorney
Law Office 103
Phone: (703) 308-9103 ext. 224
Fax: (703) 746-6488
How to respond to this Office Action:
You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE: For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.
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.