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:  December 01, 2020

 

This Office Action responds to applicant’s communication dated 11/04/2020 where applicant:

 

(1)   Provided arguments against the Section 2(d) Refusal.

 

The examining attorney has reviewed the applicant’s response and determined the following:

 

(1)   After further review and in consideration of applicant’s arguments, it has been determined that the Section 2(d) Refusal is no longer required. Therefore, the Section 2(d) Refusal is withdrawn.

 

(2)   Applicant has not provided any additional arguments against the Section 2(e)(1) Refusal. Therefore, the Section 2(e)(1) Refusal is maintained and made FINAL.

 

The trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES:

 

• Section 2(e)(1) Refusal – Merely Descriptive
• Supplemental Register Advisory

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose, function or use of applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and 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)). 

 

Additionally, 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). 

 

Furthermore, an abbreviation, initialism, or acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents.  See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).

 

The attached evidence shows that the term VQ is substantially synonymous with “voice quality.” The term “voice” is further defined as “the sound produced in a person's larynx and uttered through the mouth, as speech or song” and the term “quality” is further defined as “the degree of excellence of something.” Additionally, the previously attached evidence shows the word ANALYZER means “detailed examination of the elements or structure of something.” See attached acronymfinder.com and lexico.com definitions of VQ, “voice,” and “quality” and previously attached lexico.com definitions of ANALYZER and “analysis.” Together the words VQANALYZER mean something that performs a detailed examination of the degree of excellence of the sound produced in a person’s larynx and uttered through the mouth as speech or song. Applicant’s goods and services are various software for processing a captured series of voice and video packets for monitoring and testing the performance of Internet Protocol based data and content. Thus, the wording VQANALYZER merely describes a feature or function of applicant’s goods and services because VQANALYZER immediately conveys to consumers that applicant’s monitoring and testing software performs a detailed examination of the degree of excellence of the sound produced in a person’s larynx and uttered through the mouth as speech or song.

 

The additional attached evidence from polqa.info, sevana.biz, gl.com, etesters.com, opticom.de, and utelsystems.com shows third-party use of the terms VQ and “voice quality” interchangeably as well as the use of both of these terms in combination to the word “analyzer” or “analysis” in reference to the function of software. Thus, consumers are used to encountering VQ and ANALYZER together to indicate a particular function of software that performs a detailed examination of the degree of excellence of the sound produced in a person’s larynx and uttered through the mouth as speech or song. Therefore, upon encountering applicant’s mark in commerce, the mark will immediately convey to consumers information about the function or use of applicant’s software and not information about the source of those services. Therefore, VQANALYZER is merely descriptive.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and 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., In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).

 

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 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 this case, both the individual components and the composite result are descriptive of applicant’s goods and services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services.  Specifically, the terms VQ and ANALYZER maintain their individual meanings of “voice quality” or more specifically, the degree of excellence of the sound produced in a person’s larynx and uttered through the mouth as speech or song, and “a detailed examination of the elements or structure of something,” respectively, despite the combination of the terms. Thus, no unique, incongruous, or nondescriptive meaning in relation to the goods and services is created by the combination of the terms.

 

Applicant argues that VQ means “voice quality” and that VQ is not widely used to mean “voice quality” and thus is suggestive of applicant’s goods and services. First, as shown through the attached evidence and the previously attached evidence, both “vector quantization” and “voice quality” are descriptive of the applied-for goods and services. Descriptiveness is considered in relation to the relevant goods and services.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); TMEP §1209.03(e).  “It is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”  In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018) (quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).

 

Additionally, as applicant notes, VQ means “voice quality.” As shown through the evidence and explanation above, VQ is widely understood as meaning “voice quality” and is used in the relevant industry to mean voice quality. A mark is suggestive if some imagination, thought, or perception is needed to understand the nature of the goods and services described in the mark; whereas a descriptive term immediately and directly conveys some information about the goods and 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). Here, the attached evidence as well as applicant’s statement that consumers are used to seeing VQ as an abbreviation for voice quality, shows that the mark is not suggestive because the term VQ immediately conveys to consumers that applicant’s software analyzes voice quality. Thus, no imagination, thought, or perception is needed to understand the nature of the goods and services described in the mark.

 

Furthermore, as applicant notes, consumers of applicant’s products are accustomed to understanding “VQ” as an abbreviation for “voice quality.” “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 question is not whether someone presented only with the mark could guess what the goods and services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018). Here, as applicant notes, consumers are accustomed to seeing VQ as synonymous with voice quality. Thus, consumers of applicant’s goods and services would immediately understand VQ as meaning “voice quality” and therefore, would immediately understand VQANALYZER to convey that a feature or function of applicant’s software is performing a detailed examination of the degree of excellence of the sound produced in a person’s larynx and uttered through the mouth as speech or song.

 

Lastly, two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

In accordance with the attached evidence, the mark VQANALYZER is descriptive of applicant’s goods and services because the mark immediately conveys to consumers that applicant’s software performs a detailed examination of the degree of excellence of the sound produced in a person’s larynx and uttered through the mouth as speech or song. Therefore, applicant’s mark is merely descriptive and registration on the Principal Register is refused under Section 2(e)(1).

 

SUPPLEMENTAL REGISTER ADVISORY

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal 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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal 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. 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Rebecca D. Coughlan/

Trademark Examining Attorney

Law Office 113

Phone: 571-272-4975

Email: rebecca.coughlan@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 December 01, 2020 for

U.S. Trademark Application Serial No. 88251978

 

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. 

 

 

/Rebecca D. Coughlan/

Trademark Examining Attorney

Law Office 113

Phone: 571-272-4975

Email: rebecca.coughlan@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 December 01, 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.”