To: | ITS Technologies & Logistics, LLC (tmdocket@mfgip.com) |
Subject: | U.S. Trademark Application Serial No. 88262319 - INTEGRATING INTERMODAL - C0558/71141 |
Sent: | October 22, 2019 11:24:16 AM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88262319
Mark: INTEGRATING INTERMODAL
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Correspondence Address: |
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Applicant: ITS Technologies & Logistics, LLC
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Reference/Docket No. C0558/71141
Correspondence Email Address: |
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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 22, 2019
This responds to applicant’s communication filed on September 30, 2019. In the aforementioned communication, applicant submitted arguments in favor of registration after a Section 2(e)(1) refusal. The examining attorney has carefully considered applicant’s arguments but is not persuaded. 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).
Section 2(e)(1) Refusal: Merely Descriptive
Applicant seeks registration for INTEGRATING INTERMODAL for operation of intermodal terminals, transportation logistics, distributorship services, maintenance of shipping containers, freight loading, freight transportations and warehouse and related storage services. The previously submitted evidence defines INTEGRATING as closely linking or intertwining and INTERMODAL as transportation that incorporates different modes or means. This wording combined is merely descriptive of the nature and feature of the services by informing consumers that applicant integrates a variety of transportation modes to provide its services to consumers. The previously submitted evidence includes applicant’s website which uses the proposed mark to inform consumers to this. The submitted specimen further demonstrates this descriptive use. As such, registration is refused under Section 2(e)(1)
Applicant argues that the mark is not descriptive. Applicant contends that this refusal is a misapplication of the law because the wording has multiple meanings. The examining attorney respectfully disagrees. 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). Here, applicant’s mark is immediately descriptive of the services because it informs consumers that applicant integrates various aspects of transportation needs.
Applicant’s contention that the wording has multiple meanings is also unpersuasive because of applicant’s own website. This website, please see attached, shows applicant using this wording in a descriptive manner by informing consumers that applicant integrates a variety of services for their intermodal services.
Response Guidelines
Please note that informal email communication with the Office is not confidential and will be made part of the public record. TMEP §709.04.
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)
/Dannean J Hetzel/
Examining Attorney
Law Office 106
dannean.hetzel@uspto.gov
571-272-8858
RESPONSE GUIDANCE