Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 07, 2019

 

 

 

This Office action is in response to applicant’s communication filed on September 23, 2019.

 

The Examining Attorney acknowledges and accepts the amended identification of services.

 

The Applicant’s arguments in response to the refusal to register on the Principal Register under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), have been carefully considered, but found unpersuasive.

 

In addition, the Applicant’s response to the Request for Information is incomplete because it neglects to provide any of the material requested.

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

The requirement for a complete response to the Disclaimer Advisory and the Request for Information is now made FINAL for the reasons set forth below. See TMEP §1213.05. 37 C.F.R. §2.61(b).  37 C.F.R. §2.63(b).

 

The evidence attached to the initial Office Action is incorporated by reference herein.

 

Trademark Act Section 2(e)(1) – FINAL Merely Descriptive Refusal

 

Registration is refused and made FINAL because the applied-for mark merely describes a quality, characteristic or feature of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.  (See definitions attached to initial Office Actin  from The American Heritage Dictionary of the English Language (Houghton Mifflin Harcourt Publishing Co. 5^th ed 2019) – Liquidity -

http://www.ahdictionary.com/word/search.html?q=liquidity and “score” - http://www.ahdictionary.com/word/search.html?q=score

Oxford English Dictionary (Oxford University Press 2019) - “liquidity” - http://www.oed.com/view/Entry/108920?redirectedFrom=liquidity#eid

 

 “score” - http://www.oed.com/view/Entry/173033?rskey=lXRRo9&result=1&isAdvanced=false#eid). 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“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).

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or 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 re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1086 (TTAB 2012) (holding CENTER OF SCIENCE AND INDUSTRY merely descriptive of operating a museum and conducting workshops, programs, and demonstrations in the field of science); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light-emitting diodes (LEDs) for industrial and commercial applications); In re Putman Publ’g Co., 39 USPQ2d 2021, 2021-22 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of news and information service for the food processing industry); In re Copytele, Inc., 31 USPQ2d 1540, 1541-42 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of facsimile terminals employing electrophoretic displays).

 

Applicant seeks registration on the Principal Register of LIQUIDITY SCORE for services identified as “Feature of software platform used to monitor, initiate, track, and participate in the trading of corporate bonds.”

 

As demonstrated by the following printouts attached to the initial Office Action, “liquidity score” is a term in the trade that is used to the evaluation or scoring of the liquidity of investments:

 

Intercontinental Exchange

http://www.theice.com/market-data/pricing-and-analytics/analytics/liquidity

 

HIS Markit

http://www.markit.com/Product/File?CMSID=00bd57831a874fd1b1333717b563f77d

 

Bloomberg Liquidity Assessment (LQA)

http://data.bloomberglp.com/professional/sites/10/LQA-Fact-Sheet-1.pdf

 

Bloomberg

http://www.bloomberg.com/professional/blog/practically-speaking-determine-liquidity/

 

Blackbaud

What are Liquidity Scores

http://kb.blackbaud.com/articles/Knowledge/97306

 

Real Capital Analytics

RCA Launces Capital Liquidity Scores for Commercial Real Estate

http://www.rcanalytics.com/rca-capital-liquidity-scores-17/

 

(See printouts attached to initial Office Action). 

 

Because the Applicant’s platform services feature software for evaluating or scoring the liquidity of investments, the applied-for mark immediately informs consumers of a quality, feature, function or purpose of the software and is merely descriptive thereof.

 

The Applicant has argued that the applied-for mark is suggestive as applied to the services.  A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and/or services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and/or services.  See Stoncor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1332, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012)); TMEP §1209.01(a). 

 

The Applicant’s objection to the evidence is similarly unpersuasive. The evidence of record confirms that “liquidity score” is a unitary expression to refer to a measurement of liquidity of investments. The Applicant’s software is used to monitor and track the performance of corporate bonds. As identified, these services would include the assessment of the liquidity of the investments. Therefore, the applied-for mark is merely descriptive.

 

Here, the evidence of record confirms that “liquidity score” is a term in the trade and that it has a direct, readily understood significance as applied to the services in this application. Therefore, it is merely descriptive.

 

Disclaimer FINAL

 

The application includes a disclaimer of the word “liquidity.” Because “liquidity score” is a unitary express and registration on the Principal Register has been refused because the mark, as a whole, is merely descriptive of the services, the disclaimer of “liquidity” is unnecessary.  Unitary matter in a mark is wording and/or designs that when combined create a single commercial impression or that have a distinct commercial impression independent of the separate parts.  See TMEP §1213.05.  If the constituent elements are so integrated or merged together that they cannot be regarded as separable, then the entire matter is unitary.  See In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983); TMEP §1213.05.

 

Request for Information- FINAL Requirement

 

To permit proper examination of the application, applicant must submit additional information about applicant’s services.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  The requested information should include fact sheets, brochures, and/or advertisements and promotional materials.  If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ.  If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.

 

Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the services will not satisfy this requirement for information.

 

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.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Assistance

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Susan A. Richards/

Susan A. Richards

Trademark Examining Attorney

Law Office 103

(571) 27 2-8266

Susan.Richards@uspto.go

 

 

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 07, 2019 for

U.S. Trademark Application Serial No. 88247486

 

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. 

 

 

/Susan A. Richards/

Susan A. Richards

Trademark Examining Attorney

Law Office 103

(571) 27 2-8266

Susan.Richards@uspto.go

 

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 07, 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.”