Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

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.

 

As stated in the last Office action, “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).  Applicant seems to think that means that it’s arguments can suffice if those arguments pertain only to the subject matter of the website services.  See Page 5 of the June 11, 2013 response.  The conclusion is illogical.  While it is true that applicant may argue only about the subject matter of the services, that tactic is clearly ill-founded and unpersuasive on the question of descriptiveness.

 

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.”

http://webcache.googleusercontent.com/search?q=cache:zQLtED5B5YwJ:www.zettahost.com/clear-cache-browser+free+cache+hosting&cd=5&hl=en&ct=clnk&gl=us

 

 

Finally, applicant has submitted a list of registrations.  However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record.  In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03.

 

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.

 

 

 

The refusal made final in the Office action dated January 29, 2013 is maintained and continues to be final.  Again, 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).  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).

 

 

 

 

 

/Tracy Whittaker-Brown/

Trademark Examining Attorney

Law Office 111

Tracy.Whittaker-Brown@uspto.gov

571-272-9397

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/2/2013 FOR U.S. APPLICATION SERIAL NO. 85587168

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 7/2/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.