To: | Wi-Fi Alliance (sftmdocketing@bclplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88029945 - WI-FI CERTIFIED WPA3 - 0520592 |
Sent: | 6/16/2019 6:14:49 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88029945
MARK: WI-FI CERTIFIED WPA3
|
|
CORRESPONDENT ADDRESS: BRYAN CAVE LEIGHTON PAISNER LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Wi-Fi Alliance
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
PRIORITY 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: 6/16/2019
ISSUES APPLICANT MUST ADDRESS: On June 11, 2019, the trademark examining attorney and Katherine Keating discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Summary of Issues
Disclaimer Required
In this case, applicant must disclaim the wording “WPA3” in addition to “CERTIFIED” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of a feature of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Here, the attached evidence in the November 10, 2018 Office action from applicant’s website and Wikipedia show that “WPA” stands for “wi-fi protected access” and that “3” identifies the newest release version of “WPA.” Further, applicant’s website notes that “building on the widespread adoption of WPA2™ over more than a decade, WPA3™ adds new features to simplify Wi-Fi security, enable more robust authentication, and deliver increased cryptographic strength for highly sensitive data markets. As the Wi-Fi industry transitions to WPA3 security, WPA2 devices will continue to interoperate and provide recognized security.” Therefore, “WPA3” is merely descriptive of the goods that applicant’s mark certifies.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CERTIFIED WPA3” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant should note the following advisory.
Advisory: Section 2(f) Claim
In the alternative to the disclaimer of “WPA3”, applicant may claim Section 2(f) as to “WPA3” if accurate.
(1) Prior Registrations: Applicant may claim ownership of one or more active prior registrations on the Principal Register of that portion of the mark for goods and/or services that are sufficiently similar to those named in the pending application. TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(a)(1). Applicant may do so by submitting the following statement, if accurate: “The wording “WPA3” in the mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No(s). {indicate registration number} on the Principal Register for the same mark for sufficiently similar goods and/or services.” TMEP §1212.04(e).
(2) Five Years’ Use: Applicant may submit a verified statement that that portion of the mark has become distinctive of applicant’s goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for the five years before the date when the claim of distinctiveness is made. TMEP §1212.02(f)(i); see 37 C.F.R. §2.41(a)(2). Applicant may do so by submitting the following statement, if accurate: “The wording “WPA3” in the mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.” TMEP §1212.05(d).
(3) Other Evidence: Applicant may submit other evidence of acquired distinctiveness of that portion of the mark, which 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)). In addition to the evidence, applicant should submit the following statement, if accurate: “The evidence shows that the wording “WPA3” in the mark has become distinctive of the goods and/or services.”
Response to Office Action
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.
/Jessie A. Maihos/
Examining Attorney
Law Office 121
(571) 270-3545
jessie.maihos@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.