UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 2/11/2011

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

 

Identification of Services – Amendment Required

 

The identification of services currently reads as follows:  “A web site or user interface for running and accessing applications, programs, widgets, services, and web browser and services through wired or wireless or mobile routers, gateways or modems; and for displaying related status information by wired or wireless or mobile routers, gateways or modems.”

 

This wording is indefinite and must be amended to clarify the nature of the services, as follows.

 

First, the applicant must clarify the introductory phrase that identifies the services, with “a web site or user interface” being indefinite.  Any of the following would be acceptable if accurate to describe this aspect of the applicant’s services:

 

Providing temporary use of online non-downloadable software in the nature of a user interface for . . .

 

Providing a website featuring non-downloadable software that functions as a user interface for . . .

 

Application service provider featuring application programming interface (API) software for . . .

 

And second, with regard to the remainder of the wording, this Office’s identification manual requires that services involving the provision of a web hosting platform or user interface also specifically indicate the purpose of the platform/interface.  In this case, the applicant has identified the purposes of the user interface services in terms of being “for running and accessing applications, programs, widgets, services, and web browser and services.”  The reference to running/accessing “. . . services, and web browser and services” is unclear, with the two listings of the term “services” being highly indefinite and thus requiring either clarification or deletion.  It appears that the reference to a “web browser” could remain with the other part of this phrase so that the amended wording would read as follows (using the above-suggested options for the introductory wording):

 

Providing temporary use of online non-downloadable software in the nature of a user interface for running and accessing applications, programs, widgets and web browsers through wired or wireless or mobile routers, gateways or modems; and for displaying related status information by wired or wireless or mobile routers, gateways or modems

 

Providing a website featuring non-downloadable software that functions as a user interface for running and accessing applications, programs, widgets and web browsers through wired or wireless or mobile routers, gateways or modems; and for displaying related status information by wired or wireless or mobile routers, gateways or modems

 

Application service provider featuring application programming interface (API) software for running and accessing applications, programs, widgets and web browsers through wired or wireless or mobile routers, gateways or modems; and for displaying related status information by wired or wireless or mobile routers, gateways or modems

 

In the above suggestions, the references to running/accessing “applications, programs, widgets and web browsers” is still extremely broad, such that the deletion of the unclear term “services” would not appear to be unnecessarily restrictive.

 

Please also note that identifications of services may be amended only to clarify or limit the services; adding to or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

 

Disclaimer Requirement

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03.  Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  TMEP§1213.  A disclaimer does not affect the appearance of the applied-for mark.  See TMEP§1213.10.  In other words, a disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.  TMEP §§1213, 1213.10.

 

In this case, the applicant must disclaim the term “HOME” apart from the mark as shown.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  This term must be disclaimed because it refers to the fact that the applicant’s services are for purposes of enabling access to users’ personalized home networks and applications.  See the attached examples of third-party registrations showing descriptive treatment of this term, with the attached marks either containing a disclaimer of the term or else registered on the Supplemental Register or pursuant to Section 2(f) due to the descriptiveness of the mark in its entirety. 

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “HOME” apart from the mark as shown.

 

 

 

Search of Office Database – No Conflicting Marks Noted

 

The Office records have been searched and there are no similar registered or pending marks that 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 examining attorney.  Please note:  The above issues may be resolved by an Examiner’s Amendment, and the applicant is encouraged to telephone the examining attorney to expedite processing of this application.

 

           /Elizabeth A. Hughitt/

 

Elizabeth A. Hughitt

Examining Attorney

Law Office 111

U.S. Patent and Trademark Office

(571) 272-9384

beth.hughitt@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 2/11/2011 FOR

SERIAL NO. 85163855

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 2/11/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.