| To: | Anna Carloss (ptotmcommunication@lockelord.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 85587168 - CACHE - N/A |
| Sent: | 1/29/2013 10:06:47 AM |
| Sent As: | ECOM111@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
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. 85587168
MARK: CACHE
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CORRESPONDENT ADDRESS: JASON NARDIELLO |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Anna Carloss
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 1/29/2013
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on December 31, 2012. Applicant argued against the refusal under Trademark Act Section 2(e)(1) for descriptiveness. The refusal under Trademark Act Section 2(e)(1) is maintained and made FINAL. Applicant seeks to register the mark CACHE for creating websites for others; design, creation, hosting and maintenance of websites for others, all of the foregoing in the field of personal curation or personal biographies.
Descriptiveness Refusal Maintained
Registration was refused because the applied-for mark merely describes important feature of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
As established by the dictionary evidence attached to the original Office action, the term CACHE refers to storing data (web pages) in a faster storage system or a storage system closer to the usage of the data, allowing the data to be accessed and reused more efficiently. The copy of applicant’s website contains evidence of the descriptive nature of the term CACHE. The website states “CACHE can collaborate and archive all your existing media and events.” Emphasis added. A CACHE is an archive of data.
The term CACHE refers to a feature of web page/site design that increases the efficiency of the page. By way of example, imagine a television news station performs a live broadcast for a breaking story and says further information and photos regarding the story can be viewed on its website. Once viewers public hear the news, they flock to the website to view further details and photos online. The Internet traffic is likely to overwhelm the server, so the site will crash. In order to avoid crashing, most web sites has CACHEd pages, namely, a version of site temporarily stored pages in a number of servers so that the load is more even distributed avoid site crash. Overwhelming traffic to a particular web page can also cause slow response, which can make video choppy and cause the respective audio and video from the page to be out of sync. This can lead to viewer frustration and cause consumers to lose interest in the site. The following excerpts discuss the benefits of CACHEd web pages:
“The other benefit is to the client, where the reduced network delay between the client and the local cache results in an increase in speed of Web page delivery for cached content.”
“Caching is helpful in improving the efficiency and speed of your web-page.” “We can increase performance of the web page using caching, and also reduce server request traffic. The way to improve the throughput is to use caching in web pages.”
“Every time a visitor clicks a page, your store's server is forced to send the content to the client's browser. Using the Cache HTML module, page reloading is bypassed, thus an e-shop can greatly enhance page speeds and reduce latencies for visitors with limited internet connections.”
While the links have been included for applicant’s convenience, copies of the evidence are attached hereto.
Applicant argues ‘“CACHE does not immediately call to mind a service of creating websites for others in the field of “personal curation or personal biographies.”’ Applicant further contends that “Because the nature of applicant’s website services – creating websites in the field of personal curation or personal biographies – are not immediately apparent…the mark is at least suggestive.” See Page 3 of the December 31, 2012 response at Paragraphs 2 and 3. These arguments tend to focus on the subject matter of the services, namely, personal curation and biographies. “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371. The mark need not convey the subject matter to be descriptive. The mark describes the crux of the identified services: “design, creation, hosting and maintenance of websites.”
For the foregoing reasons, registration is refused under Trademark Act Section 2(e)(1).
Response Guidelines
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A response that fully satisfies all outstanding requirements;
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06. Any arguments regarding the content of this Office action should be made in writing, as those discussions should be kept of record.
/Tracy Whittaker-Brown/
Trademark Examining Attorney
Law Office 111
Tracy.Whittaker-Brown@uspto.gov
571-272-9397
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.
