To: | Tyco Electronics Services GmbH (pto@nealmcdevitt.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88054695 - OCEAN SPECTRUM - 61156.00355 |
Sent: | 11/18/2018 1:21:06 PM |
Sent As: | ECOM118@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88054695
MARK: OCEAN SPECTRUM
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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: Tyco Electronics Services GmbH
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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: 11/18/2018
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
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:
The applied-for mark, OCEAN SPECTRUM is to be used with:
International Class 009 Equipment that performs spectrum management and initial loading of submarine cable line, in which computer hardware and software exists in the nature of firmware to establish the proper operating levels for data carrying signals, power controls, and switches; Computer software or firmware for operating the bandwidth of fiber optic telecommunications lines in a shared user environment; computer software or firmware for monitoring and protecting against input signal loss or equipment failures; computer software or firmware for providing alarms in association with a fiber optic communication system, where the alarms are related to the sharing of the spectrum on the line
In this case, applicant must disclaim “SPECTRUM” in the mark, OCEAN SPECTRUM, because it is not inherently distinctive. The unregistrable term at best is merely descriptive of a key 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).
SPECTRUM describes the function of applicant’s computer software hardware and firmware as stated in the identification, e.g., Equipment that performs spectrum management and initial loading of submarine cable line, in which computer hardware and software exists in the nature of firmware to establish the proper operating levels for data carrying signals, power controls, and switches; and computer software or firmware for providing alarms in association with a fiber optic communication system, where the alarms are related to the sharing of the spectrum on the line. Thus, SPECTRUM describes a key function of applicant’s goods, is generic and must be disclaimed. The name of a key feature of goods may be generic for those goods. Any term that the relevant public understands to refer to the genus can be generic. See In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (holding ATTIC generic for automatic sprinklers for fire protection used primarily in attics); In re A La Vieille Russie, Inc., 60 USPQ2d 1895, 1900 (TTAB 2001) (holding RUSSIANART generic for art dealership services). Therefore, SPECTRUM is descriptive and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SPECTRUM” 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.
The trademark suggests substituting the following wording in bold for clarity, Computer hardware, software, and firmware used to perform spectrum management and initial loading of submarine cable line, to establish the proper operating levels for data carrying signals, power controls, and switches, in place of the identification “Equipment that performs spectrum management and initial loading of submarine cable line, in which computer hardware and software exists in the nature of firmware to establish the proper operating levels for data carrying signals, power controls, and switches”, if accurate. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
International Class 009 Computer hardware, software, and firmware used to perform spectrum management and initial loading of submarine cable line, to establish the proper operating levels for data carrying signals, power controls, and switches; Computer software or firmware for operating the bandwidth of fiber optic telecommunications lines in a shared user environment; computer software or firmware for monitoring and protecting against input signal loss or equipment failures; computer software or firmware for providing alarms in association with a fiber optic communication system, where the alarms are related to the sharing of the spectrum on the line
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
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.
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.
If the Applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned Trademark Examining Attorney directly at the number below, or email.
/Odessa Bibbins/
Attorney Advisor
Law Office 118
Odessa.Bibbins@USPTO.GOV
571-272-9425 Telephone
571-273-9425 Fax
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.