United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79280976
Mark: TCS ION PAPER
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Correspondence Address: |
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Applicant: TATA CONSULTANCY SERVICES LIMITED
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1520002
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
MARK DESCRIPTION REQUIREMENT:
To clarify whether color is claimed as a feature of the mark, applicant must satisfy one of the following:
(1) If color is not a feature of the mark, applicant must submit (a) a new black-and-white drawing of the mark to replace the color drawing in the record, (b) a statement that no claim of color is made in the international registration, and (c) a description of the literal and design elements in the mark omitting any reference to color. 37 C.F.R. §2.37; TMEP §§807.07(b), 807.12(c); see TMEP §§808 et seq.
The following description is suggested, if accurate:
The mark consists of the stylized word “PAPER”. The top left portion of the letter “P” in “PAPER” looks like a folded corner of a piece of paper. In smaller stylized lettering at the top right portion of “PAPER” are the words “TCS iON”. The top middle portion of the letter “O” in “iON” features a gap with a small vertical oblong shape.
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors claimed as a feature of the mark and (b) describing where the colors appear in the literal and design elements in the mark. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(b), 807.12(c). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must include a statement indicating that in the description. See TMEP §807.07(d), (d)(iii).
The following color claim and description are suggested, if accurate:
Color claim: “The colors blue, orange, gray, black, and yellow are claimed as a feature of the mark.”
Description: “The mark consists of the stylized word “PAPER” in yellow. The top left portion of the letter “P” in “PAPER” looks like a folded corner of a piece of paper that is colored gray with the bottom short horizontal portion colored black. In smaller stylized lettering at the top right portion of “PAPER” are the words “TCS iON”. “TCS” is colored blue. “iON” is colored orange. The top middle portion of the letter “O” in “iON” features a gap with a small blue colored vertical oblong shape.”
DISCLAIMER OF “PAPER” REQUIRED:
Applicant must disclaim the wording “PAPER” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
“Paper” means an “examination in which you answer a number of questions in a particular period of time.” See attachments from <http://www.collinsdictionary.com/dictionary/english/paper>.
PAPER immediately conveys to consumers that applicant’s goods and services are about examinations in which you answer a number of questions in a particular period of time.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PAPER” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).
CANNOT CHANGE CLASSIFICATION (ADVISORY):
IDENTIFICATION OF GOODS & SERVICES:
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods. See below for suggestions.
Class 9 -
In Class 9, applicant’s identification is: “Handheld mobile digital electronic devices comprising a tablet computer, electronic book reader, digital audio and video player, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (gps) device, and capable of providing access to the internet and sending, receiving, and storing messages and other data, mobile phone and tablet computer operating system software; mobile telephones; personal digital assistants (pdas); portable computers; software for storing, retrieving, managing, tracking, maintaining, analyzing, communicating, transferring, sharing and securing images, video, audio, and data content in digital form, all to facilitate the use of such content.”
The following wording is unacceptable:
“Software for storing, retrieving, managing, tracking, maintaining, analyzing, communicating, transferring, sharing and securing images, video, audio, and data content in digital form, all to facilitate the use of such content” is indefinite. In Class 9, software must be downloadable or recorded. Clarification is required. See below for suggestion.
Taking the above together, applicant may adopt the following:
Class 9: Handheld mobile digital electronic devices comprising a tablet computer, electronic book reader, digital audio and video player, electronic personal organizer, personal digital assistant, electronic calendar, and global positioning system (GPS) device, and capable of providing access to the internet and sending, receiving, and storing messages and other data; downloadable or recorded operating system software for mobile phones and tablet computers; personal digital assistants (PDA); portable computers; downloadable or recorded software for storing, retrieving, managing, tracking, maintaining, analyzing, communicating, transferring, sharing and securing images, video, audio, and data content in digital form, all to facilitate the use of such content
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 16 -
In Class 16, applicant’s identification is: “Instructional and teaching materials (other than apparatus); printed manuals and brochures related to handheld computer; printed operating instructions; educational guides, notes and compilations; journals; workbooks; printed operating manuals for tablet computer.”
The following wording is unacceptable:
“Instructional and teaching materials (other than apparatus)” is indefinite. The subject matter of the materials must be stated. See below for suggestion.
“Printed manuals and brochures related to handheld computer” is indefinite. More specificity is required as to the subject matter. It is unclear what aspect of handheld computers the publications are about. See below for suggestion.
“Printed operating instructions” is indefinite. The subject matter of the instructions must be stated. See below for suggestion.
“Educational guides, notes and compilations” is indefinite. The subject matter of the goods must be stated. Applicant must describe the notes and compilations in greater detail. See below for suggestions.
“Journals” is indefinite. Applicant must state whether the journals are blank or if they contain contents, then the subject matter must be stated. See below for suggestion.
“Workbooks” is indefinite. The subject matter of the workbooks must be stated. See below for suggestion.
“Printed operating manuals for tablet computer” is indefinite. More specificity is required as to the subject matter. It is unclear what aspect of tablet computers the publications are about. See below for suggestion.
Taking the above together, applicant may adopt the following:
Class 16: Printed instructional and teaching materials in the field of best practices for designing and grading tests and exams; printed manuals and brochures about using handheld computers and tablet computers for taking and administering tests and exams; printed operating instructional materials about using software for taking and administering tests and exams; compilation of printed educational guides featuring notes about exam and test taking skills; blank journals; educational publications, namely, workbooks about exam and test preparation skills
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 42 -
In Class 42, applicant’s identification is: “Scientific and technological services and research and design relating thereto; industrial analysis and research services; research and development of new products, technology and methods of operation in the field of industry including information technology and digital or electronic contents processing and providing information thereof; consultancy relating to design and development of computer software and hardware; services of consultancy, evaluations, estimates, research in the scientific and technological fields.”
The following wording is unacceptable:
“Scientific and technological services and research and design relating thereto”. More specificity is required. The type of scientific and technological services and research and design services must be stated. See below for suggestion.
“Industrial analysis and research services” is indefinite. More specificity is required. See below for suggestion.
“Services of consultancy, evaluations, estimates, research in the scientific and technological fields” is indefinite. More specificity is required. See below for suggestions.
Taking the above together, applicant may adopt the following:
Class 42: Scientific and technological services, namely, scientific research and new product design services in the field of information technology; industrial analysis and research services in the nature of product research; research and development of new products, technology and methods of operation in the field of industry including information technology and digital or electronic contents processing and providing information thereof; consultancy relating to design and development of computer software and hardware; scientific and technological consultancy services, namely, scientific research, technological product quality evaluation, and geological estimations and research
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
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.
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@uspto.gov
RESPONSE GUIDANCE