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: 6/16/2017

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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).

 

SUMMARY OF ISSUES:

• Refusal Under Section 2(e)(1) – Merely Descriptive

 

Registration is refused because the applied-for mark merely describes a purpose or use for applicant’s goods and services, the intended audience for applicant’s goods and services, and the source 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.

 

Standard of Analysis for Section 2(e)(1) Refusal

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and 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). 

 

“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).

 

Application of Section 2(e)(1) Standard

 

In this case, applicant has applied to register the mark FINANCIAL SERVICES INFORMATION SHARING AND ANALYSIS CENTER for goods and services related to cyber security and physical security threats faced by the financial services industry.

 

The term FINANCIAL is defined as “relating to finance”.  See Oxford English Dictionary, http://en.oxforddictionaries.com/definition/us/financial.  In relation to applicant’s goods and services, the term FINANCIAL is merely descriptive of the intended audience for applicant’s goods and services.  As the application identification states, applicant’s goods and services are all for persons in the financial services industry.  Thus, the wording FINANCIAL is merely descriptive of the intended audience for such goods and services.

 

The term SERVICES is defined as “an act of assistance”.  See Oxford English Dictionary, http://en.oxforddictionaries.com/definition/us/service.  The term SERVICES is merely descriptive of applicant’s services because they are services, as the application identification states.  The term SERVICES is also descriptive of applicant’s goods because, as the application identification states, applicant’s goods relate to and are used by the “financial services industry”.  Thus, the wording SERVICES is merely descriptive of applicant’s goods and services.

 

The term INFORMATION is defined as “facts provided or learned about something or someone”.  See Oxford English Dictionary, http://en.oxforddictionaries.com/definition/us/information.  In relation to applicant’s goods and services, the term INFORMATION is merely descriptive of a purpose of applicant’s goods and services because, as the application identification states, applicant’s goods and services all serve the purpose of providing information.  Thus, the wording INFORMATION is merely descriptive of the purpose of applicant’s goods and services.

 

The term SHARING is defined as telling someone about something.  See Oxford English Dictionary, http://en.oxforddictionaries.com/definition/us/share.  In relation to applicant’s goods and services, the term SHARING is merely descriptive of applicant’s goods and services because, as the application identification states, applicant’s goods and services serve the purpose of sharing information with and between persons in the financial services industry.  Thus, the wording SHARING is merely descriptive of a purpose for such goods and services.

 

The term ANALYSIS is defined as “detailed examination of the elements or structure of something”.  See Oxford English Dictionary, http://en.oxforddictionaries.com/definition/us/analysis.  In relation to applicant’s goods and services, the term ANALYSIS is merely descriptive of applicant’s services because, as the application identification states, those services include detailed examination of threats to the financial services industry.  The wording ANALYSIS is also descriptive of applicant’s goods, which are newsletters, because applicant’s newsletters report on applicant’s analysis (or, detailed examination of) threats to the financial services industry.  Thus, the wording ANALYSIS is merely descriptive of applicant’s goods and services.

 

The term CENTER is defined as “a place at which an activity or complex of activities is carried on”.  See Collins English Dictionary, http://www.collinsdictionary.com/dictionary/english/center.  In relation to applicant’s goods and services, the term CENTER is merely descriptive because it describes the source of applicant’s goods and services, which is the place at which the activities described in the application identification are carried on.  Terms that identify the source or provider of a product or service may be merely descriptive.  TMEP §1209.03(q).  Thus, the wording CENTER is merely descriptive because applicant is a center. 

 

When combined, the phrase FINANCIAL SERVICES INFORMATION SHARING AND ANALYSIS CENTER immediately describes to consumers the purpose or use for applicant’s goods and services and the source of applicant’s goods and services.  That is, the mark immediately describes that applicant’s goods are services are for the purpose of SHARING INFORMATION and providing ANALYISIS to the FINANCIAL SERVICES industry, and that such goods and services are provided by a CENTER.

 

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 goods and/or 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, both the individual components and the composite result are descriptive of applicant’s goods and services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services.  Specifically, each individual component of the mark retains its descriptive meaning in relation to the goods and services:  FINANCIAL and SERVICES describe the intended audience for applicant’s goods and services; INFORMATION, SHARING, and ANALYSIS all refer to a purpose or use for applicant’s goods and services; and CENTER refers to the source of applicant’s goods and services.  When combined, the phrase FINANCIAL SERVICES INFORMATION SHARING AND ANALYSIS AND CENTER immediately describes to consumers that applicant is a center providing the financial services industry with information sharing and analysis. 

 

Thus, because each individual component of the composite mark is merely descriptive and the combination of terms does not result in a different overall meaning, the entire composite mark conveys the same meaning when the individual components are combined.  That is, neither the individual terms nor the composite phrase creates a unique, incongruous, or nondescriptive meaning in relation to the goods and services.

 

Applicant’s use of the wording “FINANCIAL SERVICES” in the application identification for each class of goods and services is strong evidence of this wording’s descriptiveness in relation to the goods and services.

 

As for the wording “INFORMATION SHARING AND ANALYSIS CENTER”, the attached third party evidence lends strong support to a finding that this wording is descriptive of the goods and services in the application.  The attached internet evidence consists of websites for third-party providers of the same goods and services as those in the application, all of whom use the phrase “INFORMATION SHARING AND ANALYSIS CENTER” to convey similar information to consumers.    

 

Third party sites using “INFORMATION SHARING AND ANALYSIS CENTER” in relation to newsletters similar to applicant’s Class 9 newsletters include:

 

http://www.waterisac.org/waterisac-membership

http://www.cisecurity.org/ms-isac/

http://nhisac.org/nh-isac-newsletters/

 

Third party sites using “INFORMATION SHARING AND ANALYSIS CENTER” in relation to association services similar to applicant’s Class 35 association services include:

http://www.a-isac.com/aboutus

http://www.surfacetransportationisac.org/index.php?option=com_content&view=article&id=47&Itemid=56

 

Third party sites using “INFORMATION SHARING AND ANALYSIS CENTER” in relation to the service of providing notification alerts similar to applicant’s Class 38 services include:

 

http://www.waterisac.org/

http://www.usfa.fema.gov/operations/ops_cip.html

 

Third party sites using “INFORMATION SHARING AND ANALYSIS CENTER” in relation to educational services similar to applicant’s Class 41 services include:

 

http://www.ren-isac.net/membership/benefits.html

http://nhisac.org/nh-isac-membership/

http://www.cisecurity.org/ms-isac/

 

Third party sites using “INFORMATION SHARING AND ANALYSIS CENTER” in relation to providing information via a website regarding cyber security threats, similar to applicant’s Class 42 services, and providing information via a website regarding personal security threats, similar to applicant’s Class 45 services include:

 

http://www.eisac.com/

http://www.cisecurity.org/ms-isac/

http://www.nhisac.org/

In fact, there is even a Wikipedia page explaining that the wording INFORMATION SHARING AND ANALSYSIS CENTER is the common name for “a nonprofit organization that provides a central resource for gathering information on cyber threats to critical infrastructure and providing two-way sharing of information between the private and public sector.”  See Wkipedia, http://en.wikipedia.org/wiki/Information_Sharing_and_Analysis_Center.

This internet evidence demonstrates that the wording INFORMATION SHARING AND ANALYSIS CENTER is commonly used as descriptive terms for goods and services similar to applicant’s goods and services.  The common usage of these terms supports the conclusion that consumers will immediately understand the significance of INFORMATION SHARING AND ANALYSIS CENTER not as an indication of the source of the goods and services, but rather as merely describing a purpose or use of the goods and services being offered by the applicant.  Therefore, the mark is merely descriptive and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

RESPONSE GUIDELINES: For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(b)(1).

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. 

 

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.  

 

 

 

Ankhi Lindemyer

/Ankhi Lindemyer/

Trademark Examining Attorney

Law Office 123

(571) 270-0254

ankhi.lindemyer@uspto.gov

 

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 6/16/2017 FOR U.S. APPLICATION SERIAL NO. 87373523

 

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 6/16/2017 (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.