To: | Shenzhen Hawk Internet Co., Ltd. (tmparalegal4@owe.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87554919 - HAWK - DONSHE 00004 |
Sent: | 8/30/2017 8:44:27 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87554919
MARK: HAWK
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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: Shenzhen Hawk Internet Co., Ltd.
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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: 8/30/2017
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.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
- Section 2(d) Refusal – Likelihood of Confusion
o Prior Pending Application
- Entity Information
- Translation Statement
- Disclaimer
- Drawing
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
The Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the instant case, the applicant has applied to register the mark HAWK and design for:
“International Class 009: DATA PROCESSING APPARATUS; COMPUTER SOFTWARE FOR USE IN DATA MANAGEMENT; COMPUTER SOFTWARE FOR CREATING SEARCHABLE DATABASES OF INFORMATION AND DATA; COMPUTER SOFTWARE FOR AUTHORISING ACCESS TO DATA BASES; COMPUTER PROGRAMS FOR USING THE INTERNET AND THE WORLD WIDE WEB; COMPUTER SOFTWARE FOR BROWSING THE GLOBAL COMPUTER NETWORK AND SECURE PRIVATE NETWORKS; COMPUTER PROGRAMS FOR ASSISTING USERS IN NAVIGATING THROUGH INTERNAL COMPUTER NETWORKS AND GLOBAL COMMUNICATIONS NETWORKS; COMPUTER SOFTWARE FOR PROVIDING ACCESS TO THE INTERNET; COMPUTER SOFTWARE FOR NETWORK SEARCHING AND COMMUNICATION, NAMELY, WIDE AREA NETWORK BROWSER SOFTWARE; BROWSER SOFTWARE USED TO DISPLAY WEBSITES RETRIEVED FROM GLOBAL AND INTERNAL COMPUTER NETWORKS; DOWNLOADABLE CLOUD-BASED SOFTWARE FOR STORING AND MANAGING ELECTRONIC DATA; RECORDED COMPUTER OPERATING PROGRAMS; COMPUTER ANTI-VIRUS SOFTWARE; SOFTWARE FOR ENSURING THE SECURITY OF ELECTRONIC MAIL; PERSONAL SECURITY ALARMS THAT CONNECT TO A WIRELESS COMMUNICATIONS NETWORK; SECURE DIGITAL (SD) MEMORY CARDS; USB COMPUTER SECURITY KEY; COMPUTER SOFTWARE FOR THE CREATION OF FIREWALLS; COMPUTER SOFTWARE FOR SYSTEM CLEANING AND OPTIMIZATION; COMPUTER SOFTWARE FOR DESKTOP COMPUTERS, MOBILE PHONES, PORTABLE MEDIA PLAYERS, HANDHELD COMPUTERS, WEARABLE ELECTRONIC DEVICES, NAMELY, SOFTWARE FOR USE IN SYSTEM ANTI-VIRUS INFECTION, CLEANING AND OPTIMIZATION THAT MAY BE DOWNLOADED FROM A GLOBAL COMPUTER NETWORK; COMPUTER MONITORS; DOWNLOADABLE MOBILE PHONE APPLICATION SOFTWARE; COMPUTER APPLICATION SOFTWARE FOR MOBILE PHONES, NAMELY, SOFTWARE FOR SYSTEM CLEANING, OPTIMIZATION, AND FOR PREVENTING MOBILE PHONES FROM AFFECTION OF VIRUS; COMPUTER SOFTWARE FOR COMPUTERS, MOBILE PHONES, PORTABLE MEDIA PLAYERS, HANDHELD COMPUTERS, WEARABLE ELECTRONIC DEVICES, NAMELY, SOFTWARE FOR COOLING CENTRAL PROCESSING UNIT (CPU) AND OPTIMIZE THE BATTERY PERFORMANCE THAT MAY BE DOWNLOADED FROM A GLOBAL COMPUTER NETWORK; COMPUTER SOFTWARE FOR WIRELESS CONTENT DELIVERY; DOWNLOADABLE COMPUTER OPERATING SOFTWARE IN THE FIELD OF COMPUTER NETWORK SECURITY FOR VPNS (VIRTUAL PRIVATE NETWORKS); COMPUTER APPLICATION SOFTWARE FOR MOBILE PHONES, NAMELY, SOFTWARE FOR VPN; COMPUTER APPLICATION SOFTWARE FOR MOBILE PHONES, TABLETS, PORTABLE MEDIA PLAYERS, LAPTOPS, PERSONAL COMPUTERS AND HANDHELD COMPUTERS, NAMELY, SOFTWARE FOR USE IN ANONYMOUS BROWSING, ENCRYPTION, ANTI-TRACKING PROTECTION, PRIVACY PROTECTION, DATA COMPRESSION, AND DATA LEAKAGE PREVENTION; COMPUTER APPLICATION SOFTWARE FOR SMART PHONES, TABLETS, PERSONAL COMPUTERS, SERVERS, NAMELY, SOFTWARE FOR VPN; COMPUTER APPLICATION SOFTWARE, VPN SOFTWARE FOR ESTABLISHING A VIRTUAL POINT-TO-POINT CONNECTION THROUGH THE USE OF DEDICATED CONNECTIONS WITHOUT DISCLOSURE TO PRIVATE INFORMATION; VPN (VIRTUAL PRIVATE NETWORK) OPERATING SOFTWARE; PEDOMETERS; PORTABLE MEDIA PLAYERS; ELECTRONIC BOOK READERS; CAMERAS; TELECOMMUNICATIONS AND DATA NETWORKING HARDWARE, NAMELY, DEVICES FOR TRANSPORTING AND AGGREGATING VOICE, DATA, AND VIDEO COMMUNICATIONS ACROSS MULTIPLE NETWORK INFRASTRUCTURES AND COMMUNICATIONS PROTOCOLS; AIR ANALYSIS APPARATUS; AIR QUALITY MEASUREMENT APPARATUS, NAMELY, PARTICLE COUNTERS; ELECTRONIC-BASED INSTRUMENTS FOR MEASURING ENVIRONMENTAL PARAMETERS INCLUDING HUMIDITY, MOLD, BACTERIA, AIR QUALITY AND WATER QUALITY; COMPUTER APPLICATION SOFTWARE FOR MOBILE PHONES, NAMELY, SOFTWARE FOR USE IN DATABASE MANAGEMENT, USE IN ELECTRONIC STORAGE OF DATA, USE IN ANTI-VIRUS PROTECTION, USE IN OPTIMIZATION OPERATING SYSTEM AND DATA TRAFFIC
International Class 042: COMPUTER SECURITY CONSULTANCY IN THE FIELD OF COMPUTER SECURITY, INTERNET SECURITY AND COMPUTER VIRUS SCANNING SOFTWARE; COMPUTER SERVICES, NAMELY, ON-LINE SCANNING, DETECTING, QUARANTINING AND ELIMINATING OF VIRUSES, WORMS, TROJANS, SPYWARE, ADWARE, MALWARE AND UNAUTHORIZED DATA AND PROGRAMS ON COMPUTERS AND ELECTRONIC DEVICE; COMPUTER VIRUS PROTECTION SERVICES; DESIGN AND DEVELOPMENT OF ELECTRONIC DATA SECURITY SYSTEMS; COMPUTER SECURITY SERVICE, NAMELY, HARD DRIVE ERASURE; DEVELOPMENT OF SOFTWARE FOR SECURE NETWORK OPERATIONS; TESTING OF SECURITY SYSTEMS; MAINTENANCE OF COMPUTER SOFTWARE RELATING TO COMPUTER SECURITY AND PREVENTION OF COMPUTER RISKS; UPDATING OF COMPUTER SOFTWARE RELATING TO COMPUTER SECURITY AND PREVENTION OF COMPUTER RISKS; COMPUTER SECURITY THREAT ANALYSIS FOR PROTECTING DATA; DATA SECURITY CONSULTANCY; COMPUTER PROGRAMMING SERVICES FOR OTHERS IN THE FIELD OF SOFTWARE CONFIGURATION MANAGEMENT; DESIGN AND DEVELOPMENT OF COMPUTER SOFTWARE FOR VPNS (VIRTUAL PRIVATE NETWORKS); RESEARCH SERVICES IN THE FIELD OF INFORMATION AND TELECOMMUNICATIONS TECHNOLOGY; RESEARCH AND DEVELOPMENT OF COMPUTER SOFTWARE; SERVER HOSTING UPDATING OF COMPUTER SOFTWARE; PROVIDING ONLINE NON-DOWNLOADABLE SOFTWARE FOR INTERNET ACCESS; PROVIDING ONLINE NON-DOWNLOADABLE SOFTWARE FOR MANAGING COMPUTER NETWORKS; COMPUTER NETWORK CONFIGURATION SERVICES; PLANNING, DESIGN, DEVELOPMENT AND MAINTENANCE OF ONLINE WEBSITES FOR THIRD PARTIES; OFF-SITE DATA BACKUP; DATA CONVERSION OF COMPUTER PROGRAMS AND DATA, NOT PHYSICAL CONVERSION; DATA ENCRYPTION AND DECODING SERVICES; COMPUTER SERVICES, NAMELY, DATA RECOVERY SERVICES; REMOTE ONLINE BACKUP OF COMPUTER DATA; DOCUMENT DATA TRANSFER FROM ONE COMPUTER FORMAT TO ANOTHER; COMPUTER SERVICES, NAMELY, PROVIDING SEARCH ENGINES FOR OBTAINING DATA ON A GLOBAL COMPUTER NETWORK; MONITORING OF COMPUTER SYSTEMS FOR DETECTING UNAUTHORIZED ACCESS OR DATA BREACH; COMPUTER SECURITY SERVICES IN THE NATURE OF PROVIDING AUTHENTICATION, ISSUANCE, VALIDATION AND REVOCATION OF DIGITAL CERTIFICATES; DEVELOPMENT, UPDATING AND MAINTENANCE OF SOFTWARE AND DATABASE SYSTEMS; INSTALLATION AND MAINTENANCE OF INTERNET ACCESS SOFTWARE; APPLICATION SERVICE PROVIDER (ASP) SERVICES, NAMELY, HOSTING COMPUTER SOFTWARE APPLICATIONS OF OTHERS, NAMELY, COMPUTER OPERATING SOFTWARE, COMPUTER BROWSING SOFTWARE, AND COMPUTER SOFTWARE FOR PROVIDING ACCESS TO THE INTERNET; TECHNICAL SUPPORT SERVICES, NAMELY, TROUBLESHOOTING IN THE NATURE OF DIAGNOSING COMPUTER HARDWARE AND SOFTWARE PROBLEMS RELATING TO COMPUTER OPERATING SOFTWARE, COMPUTER BROWSING SOFTWARE, AND COMPUTER SOFTWARE FOR PROVIDING ACCESS TO THE INTERNET; INDIVIDUAL DESIGN AND DEVELOPMENT OF COMPUTER PROGRAMS, SYSTEMS, WEBSITES, BROWSERS AND NETWORKS FOR OTHERS; COMPUTER SERVICES, NAMELY, CLOUD HOSTING PROVIDER SERVICES; CONSULTING SERVICES IN THE FIELD OF CLOUD COMPUTING; UPDATING AND MAINTAINING CLOUD-BASED COMPUTER SOFTWARE THROUGH ON-LINE UPDATES, ENHANCEMENTS AND PATCHES; RECOVERY OF COMPUTER DATA
The registered marks are:
HAWQ for, “Computer software for information processing, namely, software for managing, developing, analyzing, summarizing, editing, and sorting data stored in computer databases; computer software for collecting, summarizing, editing, and analyzing data stored in distributed networks” in International Class 009, and “Providing temporary use of non-downloadable software for information processing, namely, software for managing, developing, analyzing, summarizing, editing, and sorting data stored in computer databases; providing temporary use of non-downloadable software for collecting, summarizing, editing, and analyzing data stored in distributed networks” in International Class 042
HAWK SEARCH for “Software as a service (SAAS) services featuring software for intelligent web searching”
The examining attorney acknowledges the word, SEARCH in U.S. Registration No. 4767656, however, the term has been disclaimed apart from the mark as shown and carries less trademark significance. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).
In addition, the examining attorney acknowledges the design elements in the applied-for mark, however, for a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Goods and Services
In the instant case, the parties have highly related, potentially identical, software and software services relating to anti-virus protection, system security, Internet use, data storing and management, web searching and browsing, and system cleaning and optimization such that the goods and services would be marketed in the same channels of trade.
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The marks are highly similar. The computer security, anti-virus protection, system cleaning and access, database and browsing software goods and services are very highly related. The similarities among the marks and the goods and services are so great as to be marketed in the same channels of trade and create a likelihood of confusion among consumers.
Accordingly, registration is refused under Section 2(d) of the Trademark Act.
PRIOR FILED PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
IDENTIFICATION OF GOODS AS TO INTERNATIONAL CLASS 009
Applicant must address the required clarifications and may adopt the following identification format, if accurate:
International Class 009: RECORDED COMPUTER OPERATING PROGRAMS; COMPUTER ANTI-VIRUS SOFTWARE; SOFTWARE FOR ENSURING THE SECURITY OF ELECTRONIC MAIL; PERSONAL SECURITY ALARMS THAT CONNECT TO A WIRELESS COMMUNICATIONS NETWORK; SECURE DIGITAL (SD) MEMORY CARDS; USB COMPUTER SECURITY KEY; COMPUTER SOFTWARE FOR THE CREATION OF FIREWALLS; COMPUTER SOFTWARE FOR SYSTEM CLEANING AND OPTIMIZATION; COMPUTER SOFTWARE FOR DESKTOP COMPUTERS, MOBILE PHONES, PORTABLE MEDIA PLAYERS, HANDHELD COMPUTERS, WEARABLE ELECTRONIC DEVICES, NAMELY, SOFTWARE FOR USE IN SYSTEM ANTI-VIRUS INFECTION, CLEANING AND OPTIMIZATION THAT MAY BE DOWNLOADED FROM A GLOBAL COMPUTER NETWORK; COMPUTER MONITORS; DOWNLOADABLE MOBILE PHONE APPLICATION SOFTWARE for (specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.); COMPUTER APPLICATION SOFTWARE FOR MOBILE PHONES, NAMELY, SOFTWARE FOR SYSTEM CLEANING, OPTIMIZATION, AND FOR PREVENTING MOBILE PHONES FROM VIRUS INFECTION; COMPUTER SOFTWARE FOR COMPUTERS, MOBILE PHONES, PORTABLE MEDIA PLAYERS, HANDHELD COMPUTERS, WEARABLE ELECTRONIC DEVICES, NAMELY, SOFTWARE FOR COOLING CENTRAL PROCESSING UNIT (CPU) AND OPTIMIZE THE BATTERY PERFORMANCE THAT MAY BE DOWNLOADED FROM A GLOBAL COMPUTER NETWORK; COMPUTER SOFTWARE FOR WIRELESS CONTENT DELIVERY.
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.
ENTITY INDEFINITE
The entity designation contains extraneous geographic wording that is not pertinent to the entity designation.
The applicant must amend the entity designation to delete the extraneous geographic wording and specify the type of legal entity, e.g., limited liability company.
TRANSLATION STATEMENT
The applicant has submitted a transliteration with translation statement for the non-Latin characters in the applied-for mark. In addition, the application has submitted a separate translation statement, however, the foreign wording, separate from the non-Latin characters, does not appear in the applied-for mark and the separate translation statement is misplaced. The applicant must delete the separate translation statement from the record.
DISCLAIMER
Applicant must disclaim the non-Latin characters that transliterate to HU LIAN because, as stated by the applicant, this wording translates to “Internet.” This wording merely describes a characteristic, function, or purpose of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
The attached evidence from Merriam-Webster.Com shows the word “Internet” is defined as “an electronic communications network that connects computer networks and organizational computer facilities around the world.” The function and purpose of the applicant’s software goods and services is to provide computer network and system access services, browsing services, database services and anti-virus and security functions. The term “Internet” immediately describes the function or purpose of the goods and services as used on the Internet.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use the “non-Latin characters that transliterate to HU LIAN” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
DRAWING
A clear drawing of the mark is an application requirement. 37 C.F.R. §2.52. Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).
To submit a new drawing via the Trademark Electronic Application System (TEAS), applicant must use the response form and follow the instructions regarding submission of a drawing. TMEP §807.05(a); see 37 C.F.R. §2.53(a). An applicant must submit a drawing via TEAS in jpg format, and the USPTO recommends a digitized image with a length and width no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c).
For drawings submitted on paper, the paper should be approximately 8.5 inches wide by 11 inches long, white, non-shiny, and include the caption “DRAWING PAGE” at the top. 37 C.F.R. §2.54(a)-(c); TMEP §807.06(a). The mark in the drawing must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide. 37 C.F.R. §2.54(b); TMEP §807.06(a). Further, the drawing must be made with ink or by a process that will provide a high definition when scanned. 37 C.F.R. §2.54(e); TMEP §807.06(a). A photolithographic, printer’s proof copy, or other high-quality reproduction of the mark may be used. 37 C.F.R. §2.54(e); TMEP §807.06(a).
The USPTO will not accept amendments or changes to the applied-for mark shown in a new drawing if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.
ASSISTANCE
/AKhan/
Asmat Khan
Law Office 114
(571)-272-9453
asmat.khan@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.