Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  May 04, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 9, 2020.

 

In a previous Office action dated April 9, 2020, the trademark examining attorney erroneously issued a Final Office Action to response to applicant’s filing of a document notifying the USPTO of the appointment of a new attorney.  This correspondence concerned matters unrelated to the outstanding Office action dated October 11, 2019 and did not extend the response period for that Office action.  See TMEP §719. 

 

Applicant’s communication filed on April 9, 2020 is a substantive response to the Office Action dated October 11, 2019, in which the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Specimen Requirement

 

SPECIMEN REQUIREMENT

 

The specimen requirement is now made FINAL for the reasons set forth below.  See 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(d), (g)(i); 37 C.F.R. §2.63(b).

 

All previous evidence and arguments are incorporated by reference.

 

Registration is refused because the specimen in International Class 9 is not acceptable as a display associated with downloadable software and does not show the applied-for mark as actually used in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(1); TMEP §§904, 904.03(e), (g), 904.07(a). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods identified in the statement of use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

A display specimen for downloadable software (1) must show use of the mark directly associated with the goods and (2) such use be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1). To show use of a point-of-sale nature, a specimen generally must provide sufficient information to enable the user to download or purchase the software from a website. See TMEP §904.03(a) (citing In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012)).

 

In this case, the specimen does not create an association between the mark and downloadable software. See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §904.03(e), (i). Specifically, the specimen creates an association between SKYWEB and “temporary use of non-downloadable cloud-based software for connecting, operating, and managing networked…devices…in the internet of things (IoT)”, which is classified in International Class 42.  The specimen does not create an association between SKYWEB and “[d]ownloadable software for connecting, operating, and managing networked…devices…in the internet of things (IoT),” which is classified in International Class 9, because the specimen does not provide sufficient information to enable the user to download or purchase the software from a website.  Moreover, the “login” button in the specimen further indicates that SKYWEB is non-downloadable software or software as a service, which are classified in International Class 42.

 

Accordingly, such material is mere advertising, which is not acceptable as a specimen for goods. See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).

 

Examples of specimens. Specimens for downloadable software include instruction manuals or screen printouts from (1) webpages showing (a) the mark associated with the software and (b) ordering or purchasing information or information sufficient to download the software, (2) the actual program while running that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).

 

Response option.  Applicant may respond to the refusal by submitting a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the software identified in the statement of use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior to expiration of the filing deadline for filing a statement of use.”  The substitute specimen cannot be accepted without this statement.

 

Applicant may not withdraw the statement of use.  See 37 C.F.R. §2.88(f); TMEP §1109.17.

 

For an overview of this response option and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.  

 

APPLICANT’S ARGUMENTS

 

Applicant contends, “The term ‘downloadable software’ may also refer to software in the form of interactive webpages which function within a web browser environment” and, therefore, the software does not have a point-of-sale that could be illustrated in a specimen.  The examining attorney does not find this argument persuasive.

 

Applicant uses JAVA as an example of software in the form of interactive webpages that functions within a web browser environment.  However, the attached evidence from Java’s website shows that there is a means by which to download the software.[1]  Since applicant asserts that its software operates similarly to Java, applicant should also be able to provide evidence of the means to enable the user to download or purchase the software from its website.

 

Although the applicant asserts that “the term ‘downloadable software’ is very broad and may refer to variety of different applications,” the USPTO does not interpret the term “downloadable software” broadly.  The TMEP states,

 

For downloadable computer software, an applicant may submit a specimen that shows use of the mark on an Internet website.  Such a specimen is acceptable only if it creates an association between the mark and software and provides sufficient information to enable the user to download or purchase the software from the website.   See In re Azteca Sys., Inc., 102 USPQ2d 1955 (TTAB 2012). If the website simply advertises the software without providing a way to download, purchase, or order it, the specimen is unacceptable.   See In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); see also In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007).  

 

TMEP §904.03(e).

 

Applicant has not provided a specimen that provides a way to download, purchase, or order its software; therefore, the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 9 in the application.

 

This requirement is now made FINAL.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Kerry A. Nicholson/

Trademark Examining Attorney

Law Office 120

Phone: (571) 272-5159

kerry.nicholson@uspto.gov

 

 

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.