UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: July 02, 2019

 

 

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is supplemental to and supersedes the previous Office action issued on September 26, 2018 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a notice of prior-pending applications relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, there may be a likelihood of confusion with the prior-pending applications cited below now that applicant has further clarified their identification of services.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising these issues. 

 

Applicant must address all issues raised in this Office action, in addition to the issues raised in the Office action dated September 26, 2018.  The issues raised in the previous September 26, 2018 Office action are as follow and are maintained:  Partial Refusal under Trademark Act Section 2(e)(1) – Applicant’s Mark is Merely Descriptive; Amended Classification and/or Identification of Services Required

 

Further, the following requirement has been satisfied:  Unsigned Application – Applicant Needs to Submit Signed and Verified Affidavit or Signed Declaration.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE:  Prior-Filed Pending Applications
• CONTINUED AND MAINTAINED: Partial Refusal under Trademark Act Section 2(e)(1) – Applicant’s Mark is Merely Descriptive
• CONTINUED AND MAINTAINED: Amended Classification and/or Identification of Services Required

 

PRIOR-FILED PENDING APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 86096069 and 86096068 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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 marks in the referenced applications.  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.

 

Partial Refusal under Trademark Act 2(e)(1) – Applicant’s Mark is Merely Descriptive

 

Applicant has applied to register the mark CLIP (standard characters) for use in connection with the following amended relevant services: “Electronic compilation of electronically tagged data, images, videos, audio, and documents; systemization of electronically tagged data, images, videos, audio, and documents in computer databases; analysis of electronically tagged data in the form of images, videos, audio, and documents for use by others in the fields of insurance, credit, real property and real estate, mortgage lending, financial underwriting, financial risk assessment for structures, personal property and real property valuation, real estate valuations for financial underwriting, replacement cost use and risk assessment” in International Class 036.  Please be advised that this refusal only pertains to particular services in International Class 036.

 

Registration is refused because the applied-for mark merely describes a feature and/or characteristic of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Applicant argues that the primary meaning of applicant’s use of CLIP is an acronym for CoreLogic Integrated Property, obviating the meaning of the term CLIP set forth above.  Applicant further cites the TTAB, holding that acronyms of descriptive words are not considered to be descriptive themselves, unless they are generally understood as representing descriptive words as to be accepted as substantially synonymous.  The examining attorney finds this argument unconvincing. 

 

The word CLIP is defined as “a section of filmed, videotaped, or recorded material” (see attached dictionary definition in prior office action; see also attached entry from WIKIPEDIA defining VIDEO CLIP as referring to “any short video less than the length of a traditional television program” in prior office action).  Hence, the wording CLIP refers to video clips, audio clips, and any recorded material.  Although the applicant may be providing computer and/or technological services in amended International Class 036, the underlying objective appears to be compiling, storing, handling, retrieving and disseminating data, including audio and video clips (see attached screen-shots from the applicant’s website and YOUTUBE® showing all the audio and video clips that the applicant has produced, cataloged, tagged and is currently disseminating in prior office action).  When considered in connection with the identified services, the term CLIP refers to the underlying object(s) that the applicant plans to process, store, handle, retrieve, disseminate, etc.  As such, the applied-for mark merely describes a feature and/or characteristic of the identified services.

 

Applicant further argues that the Office has not previously treated the word CLIP             as descriptive in relation to software/data-related services.  The examining attorney finds this argument unconvincing.  First, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).  Second, the applicant’s cited registrations do not indicate video and audio-related services, unlike applicant’s applied-for services.  Therefore, the term CLIP would not be descriptive for the registrants’ services, whereas they are for applicant’s service.

 

In view of the foregoing, the partial refusal to register under Section 2(e)(1) of the Trademark Act is continued and made FINAL.

 

Advisory:  Section 1(b) Application Not Eligible for Supplemental Register Until Acceptable Allegation of Use is Filed

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

Benefits of Supplemental Registration

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

Filing an Allegation to Allege Use

 

To amend an intent-to-use application under Trademark Act Section 1(b) to use in commerce, an applicant must file, prior to approval of the mark for publication, an acceptable amendment to allege use.  See 15 U.S.C. §1051(c); 37 C.F.R. §2.76; TMEP §§806.01(b), 1103.  An amendment to allege use must satisfy the following requirements:

 

(1)       STATEMENTS:  The following statements:  “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”

 

(2)       DATES OF FIRST USE:  The date of first use of the mark anywhereon or in connection with the services, and the date of first use of the mark in commerceas a trademark or service mark.  See more information about dates of use.

 

(3)       SERVICES:  The services specified in the application.

 

(4)       SPECIMEN:  A specimen showing how applicant uses the mark in commerce for each class of services for which use is being asserted.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  See more information about specimens.

 

(5)       FEE(S):  A filing fee for each international class of services for which use is being asserted (find current fee information).

 

(6)       VERIFICATION:  Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20.  See more information about verification.

 

See 37 C.F.R. §2.76(b); TMEP §1104.08.

 

An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS).  Filing an amendment to allege use is not considered a response to an Office action.  37 C.F.R. §2.76(h); TMEP §1104.  An applicant must file a separate response to any outstanding Office action.  TMEP §1104; see 37 C.F.R. §2.76(h). 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Amended Classification and/or Identification of Services Required

 

Applicant has applied to register the mark CLIP for services in Classes 042 and 036.  Some of the wording in the identification of services is indefinite and/or broad and may comprise services in several international classes.  In the present case, where indicated, applicant must further specify the nature of the services, using common commercial names, and classify the services accordingly.  In addition to the suggestions below, applicant should be advised of the following: 

 

First, compiling and analyzing data for business purposes is a service classified in International Class 035, but if it is done for financial purposes it is a service classified in International Class 036.  Hence, where indicated, the applicant must indicate the nature and/or purpose of the underlying services.

 

Suggestions and explanations are incorporated into the proposed wording below in bolded font.  Applicant may adopt the following wording, if accurate:

 

• “Electronic compilation of electronically tagged data, images, videos, audio, and documents, all relating to business management in the fields of insurance, credit, real property and real estate, mortgage lending, financial underwriting, financial risk assessment for structures, personal property and real property valuation, real estate valuations for financial underwriting, replacement cost use and risk assessment; systemization of electronically tagged data, images, videos, audio, and documents in computer databases; analysis of electronically tagged business data in the form of images, videos, audio, and documents” in International Class 035;

 

• “Electronic compilation of electronically tagged data, images, videos, audio, and documents, all for financial purposes in the fields of insurance, credit, real property and real estate, mortgage lending, financial underwriting, financial risk assessment for structures, personal property and real property valuation, real estate valuations for financial underwriting, replacement cost use and risk assessment; systemization of electronically tagged data, images, videos, audio, and documents in computer databases; analysis of electronically tagged financial data in the form of images, videos, audio, and documents” in International Class 036;

 

§  “Electronic storage of electronically tagged data, images, videos, audio, and documents; handling and processing of electronically tagged data, images, videos, audio, and documents, namely, _____ {list specific services, using common commercial names, in International Class 042}; searching and retrieval of electronically tagged data, images, videos, audio, and documents available on computer networks for others; transcription and dissemination of electronically tagged data, images, videos, audio, and documents, namely, _____ {list specific services, using common commercial names, in International Class 042}; design and development of computer software for creating unique data identifiers for use in the compilation, analysis, processing, searching, retrieval, and dissemination of real estate and real property derived data; Software as a service (SAAS) services featuring software for use by others for electronic data collection, electronic data storage, electronic data management, data conversion and data tagging of electronic information and data pertaining to insurance, credit, real property and real estate, mortgage lending, financial underwriting, financial risk assessment for structures, personal property and real property valuation, real estate valuations for financial underwriting, replacement cost use and risk assessment” in International Class 042.

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  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.

 

Multiple-class Application Requirements

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Response Guidelines

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

Applicant must respond to all issues raised in this Office action and the previous September 26, 2018 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

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.  

 

 

 

/Arriola, Kimberly/

Attorney Advisor

Law Office 128

(571)270-7984

kimberly.arriola@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.