To: | Anna Carloss (ptotmcommunication@lockelord.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85587168 - CACHE - N/A - Request for Reconsideration Denied - No Appeal Filed |
Sent: | 7/2/2013 12:42:53 PM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85587168
MARK: CACHE
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.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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REQUEST FOR RECONSIDERATION DENIED
ISSUE/MAILING DATE: 7/2/2013
The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below. See 37 C.F.R. §2.64(b); TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a). The refusal made final in the Office action dated January 29, 2013 is maintained and continues to be final. See TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).
In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues. Accordingly, the request is denied.
The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date the final Office action was issued/mailed. See 37 C.F.R. §2.64(b); TMEP §715.03, (a)(2)(B), (a)(2)(E), (c).
If time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to comply with and/or overcome any outstanding final requirement(s) and/or refusal(s) and/or to file an appeal with the Board. TMEP §715.03(a)(2)(B), (c). However, if applicant has already filed a timely notice of appeal with the Board, the Board will be notified to resume the appeal when the time for responding to the final Office action has expired. See TMEP §715.04(a).
Final Refusal Maintained
The determination of whether a mark is merely descriptive is made in relation to an applicant’s 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). The services identified in this application are “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.”
As discussed in the Office action issued on January 29, 2013, applicant’s arguments tend to overlook the fact that the services are website services that just happen to be used for personal curation or biographies. The evidence attached to all prior Office actions prove the mark CACHE is descriptive for website services, namely, design, creation, hosting and maintenance of websites. The fact that the services deal with personal curation and biographies does not obviate the descriptive nature of the mark.
In further support of the finding that the mark is descriptive of the services, please find Internet dictionary entries defining web site hosting:
“In a general sense, "hosting" refers to "Web site hosting" which is the business of providing the equipment and services required to display Web sites. The business of hosting also involves maintaining files and providing fast Internet connections. If you run a Web site or do business on the Web, you have a host and you know the importance of having a good, reliable host.”
http://www.netlingo.com/dictionary/h.php
“Making a Web site available on the Internet. A Web site contains pages of information stored in a Web server, which is a computer running Web server software connected to the Internet (see Web site and Web server).
http://encyclopedia2.thefreedictionary.com/Web+hosting
Moreover, website caching impacts the quality of applicant’s use of the web pages that it creates:
“The web cache is very important for the fast loading of web pages and overall the better experience for Internet users. The web cache temporarily stores web pages and images reducing the server load, the delay while loading and the bandwidth usage. So, the web cache is very useful when your Internet connection is bad or the website is down. Search engines also create cache copies of pages they have indexed.”
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Ruffin Gaming, 66 USPQ2d, 1924, 1925 n.3 (TTAB 2002); TBMP §1208.02; TMEP §710.03.
(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).
/Tracy Whittaker-Brown/
Trademark Examining Attorney
Law Office 111
Tracy.Whittaker-Brown@uspto.gov
571-272-9397