To: | Jaron Gilinsky (dwbarman@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87943460 - FIELD - N/A |
Sent: | 10/16/2018 12:56:52 PM |
Sent As: | ECOM107@USPTO.GOV |
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UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87943460
MARK: FIELD
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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: Jaron Gilinsky
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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: 10/16/2018
The examining attorney has reviewed the referenced application and determined the following.
DATABASE SEARCH
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).
THE MARK IS MERELY DESCRIPTIVE
This Refusal Applies to International Classes 9 and 42 Only
Applicant has applied to register the mark FIELD for “computer software for freelancer and/or independent contractor management, payroll services, a marketplace of service providers, and to facilitate talent discovery, hiring, submissions, management, communication, payments, contracts, as well as providing real-time workforce management, communication and analytics reporting tools; operating on-line marketplaces for sellers and buyers of goods and/or services; providing on-line non-downloadable software for freelancer and/or independent contractor management, payroll services, a marketplace of service providers, and to facilitate talent discovery, hiring, submissions, management, communication, payments, contracts, as well as providing real-time workforce management, communication and analytics reporting tools.” Registration is refused because the applied-for mark merely describes a quality, characteristic, feature, function or purpose of applicant’s software 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.
Moreover, “[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.
Websites and prior registrations are generally competent sources for determining how the public perceives particular wording 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). In this case, the examining attorney has established that the applied-for mark refers to working, operating, or performing activities off-site or “in the field,” physically separated from co-workers or colleagues. See attached printouts from websites and the USPTO’s X-Search database. Indeed, applicant has explicitly stated that its software connects media companies with freelancers in the field. See attached website printout.
In short, because the wording in the mark immediately brings to mind an important quality, characteristic, feature, function or use of applicant’s field management software, the examining attorney is compelled to refuse registration under §2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused on the Principal Register, applicant may present arguments and evidence in support of registration.
SUPPLEMENTAL REGISTER
If applicant chooses to respond to the substantive refusal set forth above, applicant must also respond to the following informality.
IDENTIFICATION OF GOODS AND SERVICES
The identification of software goods and services is indefinite and must be clarified by further specifying the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for an examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant may, for example, substitute the following identification, if accurate:
In International Class 9: database management software for use in freelancer and/or independent contractor management, payroll services, a marketplace of service providers, talent discovery, hiring, submissions, management, communication, payments, contracts, real-time workforce management, communication and analytics reporting tools.
In International Class 35: operating on-line marketplaces for sellers and buyers of goods and/or services.
In International Class 42: providing a website portal featuring on-line non-downloadable software that enables users to manage freelancers and/or independent contractors, payroll services, a marketplace of service providers, to facilitate talent discovery, hiring, submissions, management, communication, payments and contracts, and to provide real-time workforce management, communication and analytics reporting tools.
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.
If applicant has any questions or needs assistance responding to this Office action, please do not hesitate to contact the examining attorney.
/Nicholas K. D. Altree/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 107
571-272-9336
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.