To: | Panasonic Corporation of North America (pctrademarks@perkinscoie.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88205500 - NSV CONNECT - 118383-4159 |
Sent: | 12/17/2018 2:34:27 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88205500
MARK: NSV CONNECT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Panasonic Corporation of North America
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 12/17/2018
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).
1. Disclaimer.
2. Significance of the mark.
INFORMALITIES
In this case, applicant must disclaim the wording “CONNECT” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The applicant’s mark NSV CONNECT is used for “Computer software, namely, software applications for establishing and performing phone calls, video conferencing and virtual video conferencing over a variety of networks in the nature of the internet; downloadable software for use with telecommunications devices to provide transmission of e-mail, text, music, video, voice, still images, information, data, video conferencing, virtual video conferencing and other content via the internet and local area network devices; telecommunications routers; computer hardware and communications software for use in connecting telecommunications equipment, telephones, computers, and wireless computer networks; computer software and hardware for providing transmission and exchange of voice, video, data, images and graphics in the fields of telecommunications, video conferencing and virtual video conferencing; hardware for telecommunications for connecting devices to access networks, namely, computer routers designed to provide voice over internet protocol (VOIP) communications; virtual PBX communication systems consisting of computer hardware and software designed to provide telephone, facsimile, voicemail, call processing, call waiting, internet telephony, and voice over internet protocol (VoIP) services,” “Telephony communications services; teleconferencing services; video conferencing and virtual video conferencing services; electronic transmission of data, voice, video, audio, facsimile and images; hosted off-site and virtual PBX telephone services; telephone voice messaging services; voice mail services; call forwarding services; caller ID services; telephone conferencing services; telephony call routing services; providing access to a telecommunications network; prepaid minute programs for international telephony communication services; telecommunications network datacenter services, namely, cloud based e-mail communication services and providing user access to cloud based virtual hardware computer programs in data networks,” and “Unified communications as a Service (UCaaS) services featuring software platforms for providing telephony and telecommunications services; providing temporary use of online non-downloadable middleware for software application integration; telecommunications network datacenter services, namely, backup services for computer hard drive data, electronic data storage, electronic storage of documents and archived e-mails, electronic storage of electronic media, namely, images, text and audio data, electronic storage of files and documents, electronic storage services for archiving databases, images and other electronic data, electronic storage services for archiving electronic data, off-site data backup, off-site data backup provided via the cloud, temporary electronic storage of information and data and temporary subscription based provision of virtual hardware that is provided remotely in the cloud for the use by business and enterprise customers for backup of files and data, providing temporary use of virtual desktop infrastructure software that allows end users to store multiple endpoint device data, documents and archived e-mails via virtual desktop that is hosted on remote hardware.”
The attached evidence from The American Heritage Dictionary of the English Language shows CONNECT means “To join to or by means of a communications circuit: Please connect me to the number in San Diego. Her computer is connected to the internet.” Thus, the wording merely describes applicant’s goods and/or services because describes telecommunication features of the applicant’s software, telecommunications services, and telecommunications software as a service.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CONNECT” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
(1) Explain whether the wording in the mark “NSV” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether the wording in the mark “NSV” identifies a geographic place.
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
The USPTO applies the following legal authority to a trademark application:
• The Trademark Act of 1946 (15 U.S.C. §§1051 et seq.)
• The Trademark Rules of Practice (37 C.F.R. pts. 2, 3, 6, 7, 11)
• Precedential court and Trademark Trial and Appeal Board (TTAB) decisions
• The Trademark Manual of Examining Procedure (TMEP)
• The Trademark Trial and Appeal Board Manual of Procedure (TBMP)
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.
/Warren L. Olandria/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 112
Phone: 571-272-9718
Warren.Olandria@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.