To: | Trax Technology Solutions Pte. Ltd. (ipprosecution@orrick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88167081 - TRAX - 38859.6001/1 |
Sent: | 3/15/2019 8:11:37 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88167081
MARK: TRAX
|
|
CORRESPONDENT ADDRESS: KRISTIN S. CORNUELLE AND CHRIS CIVIL |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Trax Technology Solutions Pte. Ltd.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/15/2019
This application was approved for publication on December 3, 2018. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue(s) below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
SUMMARY OF ISSUES
1) Descriptiveness Refusal.
NO CONFLICTING MARKS NOTED
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
REFUSAL UNDER SECTION 2(e)(1)--MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature, ingredient, characteristic, purpose, function of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
“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).
The applicant has applied for registration of the proposed mark, TRAX, for which the applicant describes the services as “Analysis of market research data and statistics; business data analysis; provision of information relating to data processing services; computerized data collection for business purposes for retailers; analysis of market studies; business advice relating to marketing; collection of market research information; computerized market research services; market analysis reporting services, namely, providing reports for the purpose of analyzing and managing retail sales, analysis of market research data and statistics; market research by means of a computer database; electronic data collection for business purposes in the fields of retail sales; data compiling in the field of retail sales; business consultancy services relating to data processing; Compiling and analyzing statistics and data for business purposes; data processing services; online data processing services; market research namely, collecting marketing data; market research, namely, analyzing market research data; conducting marketing studies; marketing research; provision of marketing reports; provision of market research information; Marketing research, namely, market survey analysis; none of the aforesaid services relating to financial services, financial markets, financial securities, transportation, and freight, and none of the aforesaid services relating to the transportation of goods and products.” The term, TRAX is a novel spelling of the word, TRACKS, which is defined as “to observe” or “follow” or “track” and related variations which are often used to describe the collection and analysis of data, including consumer and market behavior. See Attached Evidence. Material obtained from the Internet is generally accepted as competent evidence in trademark examination. See In re Jonathan Drew Inc., 97 USPQ2d 1640, 1641-42 (TTAB 2011); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009); In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008); TBMP §1208.03; TMEP §710.01(b).
A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).
Therefore, the term and merely describes the principal function of the applicant’s services. Terms that describe the function or purpose of a product or service may be merely descriptive. TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies).
Accordingly, the applicant’s proposed mark, TRAX, is merely descriptive of a feature, function, characteristic, use or purpose of the identified services, and is properly refused registration under Section 2(e)(1) of the Trademark Act.
Although the examining attorney has refused registration under Section 2(e)(1) of the Trademark Act, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
RESPONSE GUIDELINES AND ABANDONMENT ADVISORY – FULL REFUSAL
For this application to proceed further, 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.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
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.
/Howard Smiga/
Examining Attorney
Law Office 102
571-272-9220
Howard.Smiga@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.