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:  October 09, 2019

 

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on March 18, 2019, in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal and requirement:  applied for mark is generic; and mark on drawing and specimen do not match.  See TMEP §§706, 711.02. 

 

In a previous Office action dated March 18, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for the applied for mark being merely descriptive.  In addition, applicant was required to satisfy the following requirement:  provide additional information about applicant’s services.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied:  provide additional information about applicant’s services.  See TMEP §713.02. 

 

The following refusal has also been obviated:  Section 2(e)(1) refusal, based on the applicant’s amendment to the Supplemental Register.  See id. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Refusal – Applied-For Mark is Generic

            •  NEW ISSUE:  Mark on the Drawing and Specimen Differ – Required

 

Applicant must respond to all issues raised in this Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

REFUSAL – APPLIED-FOR MARK IS GENERIC

 

Registration is refused on the Supplemental Register because the applied-for mark is generic and thus incapable of distinguishing applicant’s services.  Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq.

 

“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 “financial risk management services”, which adequately defines the genus at issue. While the application does contain further limiting language, applicant’s services are properly under genus of financial risk management services.

 

Regarding the second part of the inquiry, the previously attached evidence from The American Heritage shows that the wording “RISK,” in the applied for mark means “the possibility of suffering harm or loss; danger” and thus this wording is essentially the apt or common name for the genus of the services, e.g, financial risk management services. Specifically, see the attached screenshots from the following:

 

• Wikipedia page stating that “financial risk management is the practice of economic value in a firm by using financial instruments to manage exposure to risk: operational risk, credit risk and market risk, foreign exchange risk, shape risk, volatility risk, liquidity risk, inflation risk, business risk, legal risk, reputational risk, sector risk etc.”;

 

• KPMG which offers financial risk management services that advise clients on “risk, financial engineering, actuarial services & the management of assets, capital, treasury & commodity/energy risk.”;

 

• EY which offers financial services risk management that assists its clients with enterprise risk, liquidity risk, credit risk, operational risk, compliance risk, and market risk, among other services.; and

 

• Deloitte, which also offers financial risk management services that assist with market and credit risk; capital management, liquidity and treasury risk; and accounting and financial reporting risk.

 

Based on the evidence, “RISK”, is the clear and common name used in the financial risk management industry to refer to managing the possibility of suffering harm or loss.

 

Further, in the applied-for mark, this wording is combined with the non-source-identifying generic top-level domain (gTLD) “.NET”.  The previously attached evidence from Wikipedia, and the newly attached screenshots form Lifewire, Wikipedia, and ICANN, shows that this gTLD “.NET” is defined as meaning a network infrastructure, but now has an unrestricted use.  Because this gTLD will usually be perceived as part of an Internet address, it generally serves no source-indicating function and adding it to an otherwise unregistrable mark typically does not render the mark registrable.  TMEP §1209.03(m); see In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); In re Hotels.com, LP, 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009); TMEP §1215.05; cf. In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (“Only in rare instances will the addition of a [g]TLD indicator to a descriptive [or generic] term operate to create a distinctive mark.”).

 

In the present case, the non-source-identifying gTLD, when combined with the generic wording in the mark, adds no source-identifying significance but retains its significance as indicating an Internet address only.  Accordingly, the relevant public would understand this designation comprising generic wording and a non-source-identifying gTLD to refer primarily to the genus. 

 

The trademark examining attorney has established by “clear evidence” that the applied-for mark is generic; thus the USPTO’s evidentiary burden has been met.  See In re Hotels.com LP, 573 F.3d 1300, 1302, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009); In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); TMEP §1209.01(c)(i). 

 

Applicant cannot overcome this refusal by submitting a claim of acquired distinctiveness under Trademark Act Section 2(f).  See 15 U.S.C. §1052(f).  Such a claim would be insufficient because “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.”  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1370, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

MARK ON THE DRAWING AND SPECIMEN DIFFER – REQUIRED

 

Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 36, which is required in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen.  See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).

 

In this case, the specimen displays the mark as RISKNET.  However, the drawing displays the mark as RISK.NET.  The mark on the specimen does not match the mark in the drawing because the specimen deletes the period placed between the words “RISK” and “NET”.  Applicant has thus failed to provide the required evidence of use of the mark in commerce.  See TMEP §807.12(a).

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)       Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.

 

Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).

 

(2)       Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen. PLEASE NOTE that the applicant has amended the application to the Supplemental Register, which is only available to applications that are based on use in commerce. Thus, if applicant amended to intent to use, the application will be refused registration on the Supplemental Register. Further, if applicant attempted to revert back to the Principal Register, the previously obviated Section 2(e)(1) Refusal would be re-raised again. Also, although there is no restriction on the number of times an applicant may amend from one register to another, one amendment is usually sufficient, and subsequent amendments should be avoided except for unusual circumstances. See TMEP §816.03.

 

The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended.  See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.  Specifically, the commercial impression of the mark in the drawing, RISK.NET, would be that of a website address. Deleting the period from the drawing would completely alter the commercial impression of the mark away from a website address to just a single compound word. Such a drastic change in the commercial impression would result in a material alteration of the mark.

 

For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

RESPONSE GUIDELINES 

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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 nonfinal Office action  

 

 

/Kyle Aurand/

Kyle Aurand

Trademark Examining Attorney

Law Office 126

(571) 270-3039

kyle.aurand@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 October 09, 2019 for

U.S. Trademark Application Serial No. 88238276

 

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. 

 

 

/Kyle Aurand/

Kyle Aurand

Trademark Examining Attorney

Law Office 126

(571) 270-3039

kyle.aurand@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 October 09, 2019, 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.”