To: | GOOGLE LLC (trademarks@patentlawworks.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87434918 - BIGTABLE - 10029-00502- |
Sent: | 1/8/2018 11:10:43 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87434918
MARK: BIGTABLE
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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: GOOGLE LLC
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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: 1/8/2018
Applicant’s response dated January 2, 2018, is acknowledged by this Office action. In response to the refusal of the specimen submitted with the application, applicant asserted several arguments in support of withdrawing the two refusals. The examining attorney considered the arguments and has found them to be persuasive. However, applicant’s response indicates that the services provided in association with the mark are database services. The examining attorney has attached evidence to this Office action which shows the wording in the mark used in connection with database services. Consequently, the specimen does not show the mark used in connection with non-downloadable software.
Specimen
In order to show service mark use, the specimen must show use of the mark in a manner that would be perceived by the relevant public as identifying the specified services and indicating their source. See Section 45 of the Act; and In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973). See also In re DSM Pharmaceuticals Inc., 87 USPQ2d 1623 (TTAB 2008) and cases cited therein. At a minimum, the specimen must show a direct association between the services and the mark sought to be registered. See In re Advertising & Marketing Development, 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987).
The mark and a reference to the services must both appear in the same specimen. In order to create the required “direct association,” the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source. See In re Aerospace Optics Inc., 78 USPQ2d, 1861, 1862 (TTAB 2006).
In this case, the specimen shows the term “Bigtable” used to identify a database service. Under the heading “Massively Scalable NoSQL,” the first sentence states the following: “Cloud Bigtable is Google’s NoSQL database service. It’s the same database that powers many core Google services, including Search, Analytics, Maps and Gmail.” Further, in applicant’s response, applicant stated that “. . . consumers and prospective consumers would understand that Applicant’s mark is BIGTABLE and that it is a scalable NoSQL data service under Applicant’s Cloud Platform offering.” (emphasis added). There is no mention in the specimen of non-downloadable software. Attached webpages retrieved from a search on Google® show the proposed mark used to identify a database. The specimen, applicant’s response, and attached webpages support a finding that the mark is used to identify a database service and not used as a source indicator for non-downloadable software.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Specific Requirements
Applicant must comply with the specific requirements set forth below to assist the examining attorney in further examination of the application. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to respond accordingly will be grounds for refusing registration. TMEP §814; see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).
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.
/Christopher Buongiorno/
Attorney
Law Office 102
(571) 272-9251
christopher.buongiorno@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.