To: | Guardian Industries Corp. (tmdocketing@fishstewip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87315018 - GLASS ANALYTICS - 65010-0773 |
Sent: | 4/21/2017 1:35:23 PM |
Sent As: | ECOM123@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87315018
MARK: GLASS ANALYTICS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Guardian Industries Corp.
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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. 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: 4/21/2017
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS
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).
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
The applicant's mark is GLASS ANALYTICS for "Downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, and for generating reports relating to the foregoing; Downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, for calculating and comparing energy cost and consumption associated with such products based on characteristics of the glass, installation thereof, building parameters and site location, and for generating reports relating to the foregoing" and "Online non-downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, and for generating reports relating to the foregoing; Online non-downloadable software for designing, modeling and visualizing building glass products, for evaluating the optical, thermal, aesthetic and other characteristics thereof, for calculating and comparing energy cost and consumption associated with such products based on characteristics of the glass, installation thereof, building parameters and site location, and for generating reports relating to the foregoing."
The American Heritage Dictionary defines "analytics" as "[t]he branch of logic dealing with analysis", and "analysis" as "[t]he separation of an intellectual or material whole into its constituent parts for individual study" (See attached dictionary evidence). Applicant identifies its goods and services as software for "designing, modeling and visualizing building glass products" and "evaluating the optical, thermal, aesthetic and other characteristics thereof". In this case, the wording "GLASS ANALYTICS" immediately conveys and merely describes a feature of Applicant's identified goods and/or services, namely, software for analysis of various characteristics of glass products for the purpose of designing glass products.
Each word in Applicant's composite mark, when considered individually and as a whole, immediately conveys this feature of Applicant's goods and/or services. Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes, because “each component term retains its merely descriptive significance in relation to the goods, resulting in a mark that is also merely descriptive”); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater ticket sales services, because such wording “is nothing more than a combination of the two common descriptive terms most applicable to applicant’s services which in combination achieve no different status but remain a common descriptive compound expression”). Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). In this case, Applicant's mark does not seem to create any additional non-descriptive meaning in relation to the goods and/or services.
Section 2(e)(1) Refusal Response Options for §1(a) Filing Basis
The applied-for mark has been refused registration on the Principal Register. Applicant may respond by submitting evidence and arguments against the refusal. In addition, Applicant may respond by amending the application to seek registration on the Supplemental Register for International Class 042. See 15 U.S.C. §§1052(f), 1091. However, Applicant should first file an acceptable amendment to allege use for its International Class 009 goods, which were filed under §1(b) (See Supplemental Register Advisory for §1(b) Filing Basis below).
To amend the application to the Supplemental Register, Applicant must request such an amendment. TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.
See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.
Supplemental Register Advisory for §1(b) Filing Basis
Although an amendment to the Supplemental Register can be an appropriate response to this refusal for applications with classes filed under §1(a), classes filed under Trademark Act Section 1(b) are not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
If Applicant files an acceptable allegation of use for International Class 009 and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
To amend the application filing basis from an intent-to-use application under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), applicant must file, prior to approval of the mark for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76. See 15 U.S.C. §1051(c); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.
The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):
1) The following statements: “Applicant believes applicant is the owner of the mark” and “the mark is in use in commerce.”
2) The date of first use of the mark anywhere on or in connection with the goods and/or services.
3) The date of first use of the mark in commerce as a trademark or service mark.
4) The goods and/or services specified in the application.
5) A specimen showing how applicant uses the mark in commerce for each class of goods for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.
6) A filing fee of $100 per class for each international class of goods for which use is being asserted (current fee information should be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
7) Verification of the above (1) through (4) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.
See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b); TMEP §§1104.08, 1104.10(b)(v).
An amendment to allege use may be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp. An amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. Applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
If the applicant has any questions or requires assistance in responding to this Office Action, please contact the examining attorney at the contact information provided below. 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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and/or requirement 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.
Yi, Crystal
/Crystal H. Yi/
Examining Attorney
Law Office 123
571.270.0763
crystal.yi@uspto.gov
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.
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.