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:  June 25, 2020

 

This Office action is in response to applicant’s communication filed on April 27, 2020.  The referenced correspondence has been reviewed by the assigned trademark examining attorney and the following determination has been made.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

AMENDMENT TO THE SUPPLEMENTAL REGISTER IS REFUSED

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services based upon the evidence of record.  “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances.  In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a).  Therefore, the trademark examining attorney cannot accept the applicant’s amendment to the Supplemental Register in response to the Section 2(e)(1) refusal.  See TMEP §1209.01(c).

 

Specifically, registration is refused on the Supplemental Register because the applied-for mark is generic for applicant’s services.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127; see TMEP §§1209.01(c) et seq., 1209.02(b).  “A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.”  TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)).

 

Determining whether a mark is generic requires a two-step inquiry:

 

(1)        What is the genus of services at issue?

 

(2)        Does the relevant public understand the designation primarily to refer to that genus of services?

 

In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of the services may be defined by an applicant’s identification of services.  See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).   

 

In this case, the application identifies the services as “Software as a service (SAAS) services featuring software for finding information for an IP (internet protocol) address,” which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified services.  The Loglan Inst. Inc. v. The Logical Language Grp., 962 F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of consumers. 

 

The mark in this case is comprised of a combination of the lettering “IP” and “API”.  It is being used in connection with “Software as a service (SAAS) services featuring software for finding information for an IP (internet protocol) address.”  The “IP” portion of the mark is readily recognizable as the “IP” or “internet protocol” referenced in the description of the relevant services. 

 

An IP address is a unique identifier assigned to a device or domain that connects to the Internet. Each IP address is a series of characters, such as '192.168.1.1'. Via DNS resolvers, which translate human-readable domain names into IP addresses, users are able to access websites without memorizing this complex series of characters. Each IP packet will contain both the IP address of the device or domain sending the packet and the IP address of the intended recipient, much like how both the destination address and the return address are included on a piece of mail.

 

See http://www.cloudflare.com/learning/network-layer/internet-protocol/http://www.cloudflare.com/learning/ddos/glossary/internet-protocol/, a copy of which is attached to the December 11, 2019 Office action.

 

In the context of the applicant’s SAAS services, “API” refers to “[a] set of function and procedures allowing the creation of applications that access the features or data of an operating system, application, or other service.”  Oxford Living Dictionaries.  A copy of this entry is attached to the Office action issued on May 1, 2019.  For a further explanation as to how SAAS and APIs function together, please note the following: 

 

SaaS is short for software as a service. It is one of the more innovative new tools that has been developed for businesses. It is designed to help businesses integrate the applications they use into a format that they can use throughout their offices. One of the main things to consider is how the new software will work with your existing software, as well as with future software applications you may need to purchase.

 

In order to address this issue there is an option that will allow you to purchase a complete suite of applications that are designed to work together. Since this is not the optimal choice for all businesses there is also the option to have an open API that will allow the business to easily integrate future applications they purchase.

 

Inside a business all of the different software applications that are implemented for use need to work well with the existing software. It is a bad business practice to have one department use a software that the other departments do not use, or that will not work with the software the other departments have. This creates confusion among the different departments. SaaS API is designed to stop this problem and to create software packages that are designed to keep the lines of communication in the inner office open.

 

See http://apprenda.com/library/software-on-demand/saas-interfaces-apis/, a copy of which is attached to the December 11, 2019 Office action.

 

The lettering “IP” and “API” immediately and directly communicate information about the applicant’s SAAS services to potential purchasers.  The combination of this descriptive lettering into a unitary mark does not create a unique mark with a non-descriptive meaning.  Purchasers could readily and reasonably determine that the mark is comprised of the descriptive lettering “IP” and “API” based upon the information readily available to the public on the applicant’s website.  For instance, the website clearly indicates that the applicant’s services feature “an API to find postal code of an IP address,” “an API to find latitude/longitude of an IP address,” “an API to find location of an IP address,” “an API to find location of an IP address,” “an API to find timezone of an IP address,” “API for IP address geolocation for your website & mobile app,” “The API can also help you to find the public IP address of a device,” “Find your public (external) IP address in your favorite language with a secure API,” etc.  Several relevant web pages from the applicant’s website are attached to the December 11, 2019 Office action. 

 

Furthermore, the terms “IP” and “API” are extensively used by the applicant’s competitors to describe their related services.  For instance, “IP-API has been running since 2012 and we are now providing one of the most popular and reliable IP Geolocation API.”  “We update our database as soon as we have new information about an IP block. For each API request, you will always have the most accurate location data, without having to worry about updating a local database.”  See http://ip-api.com/, a copy of which is attached to the December 11, 2019 Office action.  Also attached to the December 11, 2019 Office action is an online article featuring “What is the Best IP Geolocation API?”  This article provides a comparison of “several commercial IP Geolocation APIs based on a number of factors such as data quality, API infrastructure and latency, documentation and more.”  The entities identified as offering these services are as follows:

 

•IPData.co (“IPData provides a highly available API running on Amazon’s global infrastructure.”)

 

•Maxmind GeoIP2 Precision Service

 

•IPInfo.io (“The IPInfo.io API returns basic geolocation data on their Free Tier and on their cheapest plan.”)

 

•IP-API.com

 

•IPGeolocation.com

 

•ipapi.co

 

•ipstack.com (“You can sign up for an API key here. You need to sign up for the free tier. Then lookup your own ip address data.”)

 

•db-ip.com

 

•ipify.org (“If all you need is a simple API to determine the IP Address of a host in Javascript then we recommend ipify.org.”)

 

•ipgeolocationapi.com

 

See http://medium.com/@ipdata_co/what-is-the-best-commercial-ip-geolocation-api-d8195cda7027#4fa6, a copy of which is attached to the December 11, 2019 Office action.  

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

RESPONSE TO OFFICE ACTION

 

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

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 25, 2020 for

U.S. Trademark Application Serial No. 88156495

 

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. 

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@uspto.gov

 

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 June 25, 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.”