To: | UV Partners, Inc. (trademarks@wnj.com) |
Subject: | U.S. Trademark Application Serial No. 88150081 - DISINFECTION AS A SERVICE - N/A |
Sent: | March 17, 2020 02:01:37 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88150081
Mark: DISINFECTION AS A SERVICE
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Correspondence Address: |
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Applicant: UV Partners, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: March 17, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
PROCEDURAL HISTORY
The applied-for mark was previously approved for publication on January 22, 2019. However, upon further review, the Commissioner’s Office has determined that the following refusal of registration must issue. Apologies are extended to the applicant.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
The applicant’s mark DISINFECTION AS A SERVICE is for “Software as a service (SAAS) services featuring software for use in compiling, managing, and processing statistical information regarding the monitoring and disinfection of surfaces by ultraviolet antimicrobial devices.”
The wording “DISINFECTION” is descriptive of the subject matter of applicant’s software, as the software is providing data regarding the disinfection of surfaces by ultraviolet antimicrobial devices.
The wording “AS A SERVICE” is commonly used to describe similar software. For example, see the attached evidenced from: http://searchcloudcomputing.techtarget.com/definition/XaaS-anything-as-a-service, http://www.horsesforsources.com/as-a-service-economy_100614 and http://www.techopedia.com/definition/155/software-as-a-service-saas. The attached evidence from Horses for Sources indicates that the “As a service” model is an “available as needed model” for services. Specifically, “Software as a Service” or “SaaS” is a model for distribution of software whereby customers access software over the Internet. An internet service providers hosts the application at its data center, while customers are provided the application over a web browser. “AS A SERVICE” is descriptive of applicant’s services because applicant offers software through an “AS A SERVICE” model.
The wording “DISINFECTION” and “AS A SERVICE” are individually descriptive of the applied-for services. As a whole, the mark “DISINFECTION AS A SERVICE” is also descriptive of the applied-for services.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, applicant’s mark indicates that it provides DISINFECTION data through a software as a service model.
Accordingly, registration of the applied-for mark is hereby refused under Section 2(e)(1) of the Trademark Act.
ADVISORY: SUPPLEMENTAL REGISTER CANNOT BE RECOMMENDED UNTIL AAU IS FILED
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). 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.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or 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).
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Cuello, Gidette
/Gidette Cuello/
Trademark Examining Attorney
Law Office 125
(571)272-1122
gidette.cuello@uspto.gov
RESPONSE GUIDANCE