UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 5/9/2018

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on November 7, 2017, in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now addresses Applicant's Section 2(f) acquired distinctiveness claim based on five years' use.  See TMEP §§706, 711.02. 

 

In previous Office actions dated April 21, 2017, and November 7, 2017, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(e)(1) for mere descriptiveness.

 

Applicant now claims acquired distinctiveness based on Section 2(f); however, in this case, five years' use alone is insufficient to show acquired distinctiveness.  It is also noted that Applicant has deleted its goods in International Class 009 and amended its dates of use. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•        NEW ISSUE:  Section 2(f) Acquired Distinctiveness – Five Years' Use Alone Insufficient

•        Section 2(e)(1) Refusal – Merely Descriptive (CONTINUED AND MAINTAINED)

 

Applicant must respond to all issues raised in this Office action and the previous November 7, 2017 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

SECTION 2(f) ACQUIRED DISTINCTIVENESS – FIVE YEARS' USE ALONE INSUFFICIENT

 

Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s services for five years prior to the date on which the claim is made.  See 15 U.S.C. §1052(f).  However, as the previously attached evidence demonstrates, the allegation of five years’ use is insufficient to show acquired distinctiveness because the applied-for mark is highly descriptive of applicant’s services.  See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015); Alacatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013); TMEP §1212.05(a).  Applicant may respond by providing additional evidence of acquired distinctiveness.  

 

An applicant bears the burden of proving that a mark has acquired distinctiveness under Trademark Act Section 2(f).  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); TMEP §1212.01.  “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.”  In re Steelbuilding.com, 415 F.3d at 1297, 75 USPQ2d at 1422.  

 

In the present case, applicant’s claim of acquired distinctiveness based on five years’ use in commerce is insufficient to show acquired distinctiveness of the applied-for mark because the wording in the mark is highly descriptive of Applicant's services of providing non-downloadable software for designing and analyzing glass products.  "GLASS ANALYTICS" is highly descriptive of a purpose, use and/or feature of Applicant's services of providing non-downloadable software for the analysis of characteristics of glass products, i.e., glass analytics.  Further, as discussed in the Section 2(e)(1) Refusal below, the wording "GLASS ANALYTICS" is commonly used in the context of the analysis of glass and glass characterization, and specifically in relation to software tools and solutions for analyzing glass. 

 

To support the claim of acquired distinctiveness, applicant may respond by submitting other evidence.  See TMEP §1212.02(g).  Such evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

If applicant cannot submit additional evidence to support the claim of acquired distinctiveness, applicant may respond to the refusal by arguing in support of registration and/or amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091(a); 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  If applicant amends the application to the Supplemental Register, applicant is not precluded from submitting evidence and arguments against this refusal.  TMEP §816.04.

 

 

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

(CONTINUED AND MAINTAINED)

 

Registration of the applied-for mark was previously refused because the applied-for mark merely describes a feature of Applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.   The refusal under Trademark Act Section 2(e)(1) is now CONTINUED AND MAINTAINED for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)).   Descriptiveness is considered in relation to the relevant goods and services.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e).  “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).

 

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."

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.

 

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 previously attached dictionary evidence).  The term "ANALYTICS" is commonly used in relation to glass, as well as other products, to describe the study and analysis of component parts (See previously attached evidence from ceramicindustry.com, industry.siemens.com, nlign.com, sas.com, and software.slb.com).  Moreover, the previously attached evidence from hostanalytics.com, jaspersoft.com, polyvista.com, and salesforce.com shows that the wording "ANALYTICS" is commonly used in reference to software that performs the function of analysis.  Accordingly, consumers would readily recognize the significance of the wording "ANALYTICS" in relation to analysis and software used for such purposes. 

 

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".  Furthermore, Applicant's own website explains that "GLASS ANALYTICS" refers to an "online suite of engineering and analytic tools for glass" featuring "advanced software for glass and glazing system analysis" that allows users to, inter alia, create "analytical reports that demonstrate the advantages of high performance glass" (See previously attached Applicant's website).  A website or advertising material is generally a competent source for determining how the public perceives the mark in connection with applicant’s goods and services.  See In re N.C. Lottery, 866 F.3d 1363, 1367-68, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986)); TMEP §1209.01(b).  It follows that consumers would reasonably conclude that the wording "GLASS ANALYTICS" used as a mark in the context of Applicant's analytical software for glass products merely describes the function of Applicant's goods. 

 

Furthermore, each word in Applicant's composite mark, when considered individually and as a whole, immediately conveys this feature of Applicant's goods and services.  Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and 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 services.

 

Further, the previously attached evidence shows the wording "GLASS ANALYTICS" used in the context of the analysis of glass and glass characterization (See previously attached evidence from glassglobal.com, glasstec-online.com, glassandmirrorcraft.com, movementsarch.com, and speciation.net).  Analogously, similar wording such as "carbon analytics", "steel analytics", and "plastics analytics" are often used in a similar manner, especially in relation to software, to describe the analysis of goods in the relevant field (See previously attached evidence from adsabs.harvard.edu, angelscube.com, climatecare.org, fia.fs.fed.us, flyzen.net, forestcarbonpartners.com, fossilfreeindexes.com, geobjects.com, renewablepower.net, thisisxy.com, usgbc.org, bristolwhoswho.com, post-gazette.com, steelframing.org, labco.info, mt.com, ompg.de, recyclingtoday.com, and sulzer.com).  Consumers are familiar with various fields of analytics, especially in relation to software. 

 

Therefore, in this case, the wording "GLASS ANALYTICS" immediately conveys and merely describes a feature of Applicant's identified software goods and services, namely, software for analysis of various characteristics of glass products for the purpose of designing glass products. 

 

Although Applicant argued that analyzing glass characteristics is only one aspect of Applicant's software, that the wording immediately conveys one significant function of Applicant's software goods and services is sufficient in a merely descriptive analysis.  “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. 

 

For the reasons set forth above, the Refusal of Registration pursuant to Trademark Act Section 2(e)(1) is hereby CONTINUED AND MAINTAINED.

 

 

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(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.

 

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/9/2018 FOR U.S. APPLICATION SERIAL NO. 87315018

 

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 5/9/2018 (or sooner if specified in the Office action).  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.  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 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.