To: | Rescale, Inc (trademarks@ipxlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87200644 - RESCALE - RESCALE-003T |
Sent: | 1/31/2017 9:16:52 AM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87200644
MARK: RESCALE
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Rescale, Inc
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/31/2017
REFUSAL BASED ON DESCRIPTIVENESS – TRADEMARK ACT SECTION 2(e)(1)
The examining attorney refuses registration on the Principal Register because the proposed mark is merely descriptive of the identified services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
In this case, applicant’s mark, “RESCALE” is a descriptive characteristic of the services. The applicant’s services are “Platform as a service (PAAS) featuring computer software platforms for running simulations; Software as a service (SAAS), non-downloadable, accessible over a global computer network, for simulating and managing computer applications, operating systems and data; Providing virtual computer systems and virtual computer environments through cloud and hybrid computing; Computer consultation in the field of cloud and hybrid computing and simulations; Storage mechanisms for reading, writing, archiving and organizing data.” The applicant’s mark merely describes a feature, quality or characteristic of applicant’s services. “RESCALE” is defined as “to revise the scale of, especially to make smaller or more modest: to rescale a budget. to revise the scale of, especially to make smaller or more modest: to rescale a budget.” www.dictionary.com. In this case, applicant’s services are software for performing simulations and allowing rescale of engineering plans, thus the term RESCALE describes a characteristic of the services. See, http://www.rescale.com/about/. Because the term RESCALE describes a characteristic of the services, the entire mark is descriptive based on Trademark Act Section 2(e)(1).
“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. In this case, the proposed mark describes a characteristic of the services, that they perform rescale of product designs and engineering plans.
Finally, there is nothing incongruous or indefinite about the term “RESCALE.” Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for a significant portion of the purchaser’s of applicant’s goods and services to readily perceive the merely descriptive significance of the mark as it relates to “Platform as a service (PAAS) featuring computer software platforms for running simulations; Software as a service (SAAS), non-downloadable, accessible over a global computer network, for simulating and managing computer applications, operating systems and data; Providing virtual computer systems and virtual computer environments through cloud and hybrid computing; Computer consultation in the field of cloud and hybrid computing and simulations; Storage mechanisms for reading, writing, archiving and organizing data.” Such significance in regard to the proposed mark would be immediately apparent. In re Gould Paper Corp., 5 USPQ2d 1110, 1112 (Fed. Cir. 1987).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION OF SERVICES INDEFINITE
The identification of services is indefinite and must be clarified because terms are overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must indicate the specific nature of the services. Applicant may adopt the following identification, if accurate:
Platform as a service (PAAS) featuring computer software platforms for running simulations; Software as a service (SAAS), featuring non-downloadable software, accessible over a global computer network, for simulating and managing computer applications, operating systems and data; Cloud computing featuring virtual computer systems and virtual computer environments through cloud and hybrid computing; Computer consultation in the field of cloud and hybrid computing and simulations; Data warehousing, namely, storage of data and online non-downloadable software for reading, writing, archiving and organizing stored data. (Class 42)
An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
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.
SEARCH OF THE RECORDS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Caroline E. Wood/
Examining Attorney
Law Office 110
571-272-9243
caroline.wood@uspto.gov
(responses are not accepted via e-mail)
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.