Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  February 07, 2020

 

 Non-Final Action

This Office action is in response to applicant’s communication filed on January 15, 2020, in which the applicant proposed an amendment to the identification of services, discussed the requirement for additional information, and argued against the descriptiveness refusal under Trademark Act Section 2(e)(1).

 

SUMMARY OF ISSUES:

• Identification of Services – Requirement Continued
• Additional Information – Requirement Continued
• Section 2(e)(1) Descriptiveness Refusal Continued
• Section 2(e)(1) Misdescriptiveness Refusal – New Issue

 

Identification of Services – Requirement Continued

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The July 16, 2019 Office Action stated that the following wording in the identification of services is unacceptably indefinite and must be clarified because the purpose(s) or function(s) of the software was not adequately specified:

 

“Software as a service (SAAS) services, namely, software for use by public agencies, land developers and communities for urban planning, infrastructure development, and policy making”.

 

Applicant proposed the following amendment in the January 15, 2020 communication:

 

“Software as a service (SAAS) services, namely, computer simulated software for use by public agencies, land developers and communities for urban planning, infrastructure development, and policy making”.

 

However, the proposed wording remains unacceptably indefinite and must be clarified because the software itself is not presumably simulated by a computer, and the exact purpose(s) or function(s) of the software remains unclear.

 

Accordingly, the requirement for an acceptable identification of services is CONTINUED.

 

Applicant may amend the identification to the following, if accurate.  [Changes are noted in bold type and/or are underlined.]

 

“Software as a service (SAAS) services, namely, software for simulating {specify what is being simulated by the software}, all for use by public agencies, land developers and communities for urban planning, infrastructure development, and policy making; software for accessing, using, and sharing information in the field of urban analytics including mobility and land use patterns; software as a service (SAAS) services, namely, hosting software for use by others for modeling urban mobility patterns and changes in urban mobility patterns for purposes of urban and regional planning and development, zoning analysis and planning, urban transportation infrastructure planning and development, and local and regional regulation; software as a service featuring software providing graphs, maps, data, text and images displaying metrics related to movement patterns in an urban area; software as a service to enable the creating, comparing, commenting, and sharing of urban metrics” [in International Class 042].

 

TMEP §§1402.01 and 1402.03.  [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]

 

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.

 

Applicant’s goods and/or 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 goods and/or services or add goods and/or 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 goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Additional Information – Requirement Continued

The July 16, 2019 request for information contained two parts.  Part (1) involved a general inquiry as to the significance of the mark wording, while Part (2) was comprised of specific “Yes” or “No” questions about Applicant’s software.

 

While Applicant’s January 15, 2020 response addressed Part (1), it failed to provide a simple “Yes” or “No” answer to each of the questions in Part (2).  Accordingly, the requirement for additional information is CONTINUED.

 

To permit proper examination of the application, applicant must answer the following questions with a “Yes” or “No” answer:

 

- Does any of the identified software involve the use and/or creation of one or more copies or reproductions?

 

- Will any of the identified software involve the use and/or creation of one or more copies or reproductions?

 

- Does any of the identified software involve the use and/or creation of one or more representations of regions of the earth?

 

- Will any of the identified software involve the use and/or creation of one or more representations of regions of the earth?

 

- On the applicant’s website at http://replicahq.com (see attachment to July 16, 2019 Office Action), is the following statement about Applicant’s software true and correct?

 

                        “Create charts and maps to visualize your insights.”

 

-          On the applicant’s website at http://replicahq.com (see attachment to July 16, 2019 Office Action), is the following statement about Applicant’s software true and correct?

 

“Download images, maps, and data tables to share with colleagues or the public.”  

 

See 37 C.F.R. §2.61(b); TMEP §814.  

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

Section 2(e)(1) Descriptiveness Refusal Continued

The July 16, 2019 Office Action continued the refusal under Trademark Act Section 2(e)(1) because the applied-for mark merely describes the identified services.  Applicant argued against the refusal in the January 15, 2020 communication.

 

Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

 

Contrary to Applicant’s arguments, the determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); 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, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

In this case, the identified software (especially but not limited to that which provides “maps” and “images”) clearly encompasses such “software” involving the use and/or creation of a “copy or reproduction”.  (See previously supplied entries from www.ahdictionary.com.)  Moreover, the sole term in the mark is commonly used in a descriptive manner in association with urban planning software.  (See previously supplied Internet evidence from www.esri.com, www.kingscrowd.com, www.smartcitylab.com, www.netscribes.com, and www.springwise.com.)  

 

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

As a result of the foregoing, the descriptiveness refusal under Trademark Act Section 2(e)(1) is again CONTINUED.

 

Section 2(e)(1) Misdescriptiveness Refusal – New Issue

In the alternative, if none of the identified software involves the use and/or creation of one or more copies or reproductions, then registration is refused because the applied-for mark is deceptively misdescriptive of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001); TMEP §1209.04.

 

The test for determining whether a mark is deceptively misdescriptive has two parts:  (1) whether the mark misdescribes the goods and/or services; and if so, (2) whether consumers are likely to believe the misrepresentation.  See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984)); TMEP §1209.04. 

 

Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods and/or services that the goods and/or services could plausibly possess but in fact do not.  In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005); see TMEP §1209.04.  To be merely descriptive, a mark must immediately convey knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).

 

In this case, the mark wording clearly identifies a characteristic or feature of the identified software, namely, that they involve and/or create “a copy or reproduction”.  (See previously supplied entries for “replica” and “replicate” from www.ahdictionary.com.)

 

Regarding the second part of the test, the Board has applied the reasonably prudent consumer test in assessing whether consumers are likely to believe the misrepresentation.  In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)). 

 

It is plausible that the services would possess such a feature or characteristic, and that the reasonably prudent consumer is likely to believe the representation because other such software involves the use and/or creation of “replicas”.  (See previously supplied third party Internet evidence referenced above.)  However, Applicant’s January 15, 2020 response asserts that its services do not in fact involve the use and/or creation of one or more copies or reproductions.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

571-272-9284

nelson.snyder@uspto.gov (Informal comms only

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 07, 2020 for

U.S. Trademark Application Serial No. 88098781

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 107

571-272-9284

nelson.snyder@uspto.gov (Informal comms only

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 07, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”