Offc Action Outgoing

[Important Email Information]

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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  78/898813

 

A.              No Conflicting Marks Found

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

             B.            Mark is Merely Descriptive

Registration is refused because the examining attorney finds the proposed mark merely describes the subject matter and purpose of the applicant’s goods and/or 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/or 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). 

A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive.  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).

 

The applicant applied to register the mark ISENSOR for Computer hardware, namely network devices for use in computer network security, unauthorized network intrusion detection and network misuse in class 009. The dictionary definition of the word SENSOR means: a device capable of detecting and responding to physical stimuli such as movement, light, or heat

 

1. http://encarta.msn.com/encnet/features/dictionary/DictionaryResults.aspx?refid=1861717860

 

Moreover, the prefix “i” or “I” would be understood by the purchasing public to signify “Internet,” when used in relation to Internet-related products or services.  Therefore, when this prefix is coupled with a descriptive term or terms for the Internet-related goods and/or services, then the entire mark is merely descriptive under Section 2(e)(1).  In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2000) (ITOOL merely descriptive of computer software for use in creating web pages, and custom designing websites for others).

 

Therefore the wording above namely ISENSOR describes a purpose and function of the applicant’s goods namely hardware for detecting network intrusions. Below are some examples of the terminology used in a similar descriptive nature found on the Internet.

 

1. http://www.usenix.org/events/sec05/tech/bethencourt.html

 

2. http://news.com.com/Worms+could+dodge+Net+traps/2100-7349_3-5819293.html

                       

3. http://utopia.poly.edu/~daveri01/proj/Dimitry_SFS_2006_mapping.pdf

 

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.

 

 

             C.            Amendment to Supplemental Register

           

Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal(s) under 2(e)1 by amending 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.

 

Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

 

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

           D.             Proof of Distinctiveness for 2(f) claim

 

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).

 

             E.             Additional Evidence Necessary

 

However, additional evidence is needed to support the claim of distinctiveness.  Applicant’s allegation of five years’ use alone would be insufficient evidence of distinctiveness in this case because applicant’s mark is highly descriptive of the goods and/or services.  TMEP §1212.05(a).  In re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB 1989).

 

Such evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  The Office will decide each case on its own merits. Applicant must show that the wording is not in common use in the industry.

 

If additional evidence is submitted, the following factors will be considered when assessing its sufficiency:  (1) how long applicant has used the mark; (2) the type and amount of advertising of the mark; and (3) applicant’s efforts to associate the mark with the goods and/or services.  See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 173 USPQ 820 (S.D.N.Y. 1972); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); 37 C.F.R. §2.41; TMEP §§1212, 1212.01 and 1212.06 et seq.

 

             F.            Response Guidelines

 

Please note, there is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at <http://www.gov.uspto.report/teas/index.html>.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

/William Rossman/

Trademark Examining Attorney

Law Office 109

William.Rossman@USPTO.Gov

(571) 272- 9029

 

 

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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 2 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 5 attachments  

1. Sensor-1  

2. Sensor-2  

3. sensor2-1  

4. sensor2-2  

5. sensor3-1  

 

Email 2 includes the following 3 attachments  

1. sensor3-2  

2. sensor3-3  

3. sensor4  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.