To: | Sterling Infosystems, Inc. (trademark@leydig.com) |
Subject: | U.S. Trademark Application Serial No. 88144729 - ELECTRONIC FINGERPRINT CARD - 740825 |
Sent: | July 15, 2019 03:07:07 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88144729
Mark: ELECTRONIC FINGERPRINT CARD
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Correspondence Address: |
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Applicant: Sterling Infosystems, Inc.
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Reference/Docket No. 740825
Correspondence Email Address: |
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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: July 15, 2019
This responds to applicant’s communication filed on June 20, 2019. In the aforementioned communication, applicant submitted an amended identification of services and arguments in favor of registration. The amended identification of services is acceptable and that requirement is now satisfied. See TMEP §713.02, 714.04.
Section 2(e)(1) Refusal: Merely Descriptive
Applicant seeks registration for ELECTRONIC FINGERPRINT CARD for capturing, transferring and reporting biometric data. The previously submitted evidence defines a fingerprint card as a chip embedded card encoding a person’s identification, sometimes including an actual fingerprint image. As used as the proposed mark, ELECTRONIC FINGERPRINT CARD immediately informs consumers that applicant uses an electronic fingerprint cards to perform the identified services. As such, registration is refused under Section 2(e)(1) because the proposed mark immediately describes a feature of the services as using an electronic fingerprint card to carry out the services of capturing, transferring and reporting biometric data.
Applicant argues that the proposed mark is not merely descriptive because the wording could identify a number of things. The examining attorney disagrees. Descriptiveness is considered in relation to the relevant goods and/or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). Here, the proposed mark has one meaning – a fingerprint card used to capture and transfer biometric data.
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
Please note that informal email communication with the Office is not confidential and will be made part of the public record. TMEP §709.04.
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
/Dannean Hetzel/
Trademark Examining Attorney
Law Office 106
571-272-8858
dannean.hetzel@uspto.gov
RESPONSE GUIDANCE