United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88298440
Mark: UNIFIED SECURITY PLATFORM
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Correspondence Address:
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Applicant: WatchGuard Technologies, Inc.
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Reference/Docket No. 131603.4000
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 28, 2019
This Office action is in response to applicant’s communication filed on 10/10/2019.
In a previous Office action dated 04/11/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, and Trademark Act Section 2(e)(1) for mere descriptiveness of the mark. In addition, applicant was required to satisfy the following requirement: amend the identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
In addition, the following refusal have been withdrawn: Section 2(d) refusal. See TMEP §§713.02, 714.04.
Further, 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 MADE FINAL that applicant must address:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature, characteristic and purpose 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.
Applicant has applied to register the mark UNIFIED SECURITY PLATFORM for use in connection with “Providing online non-downloadable software for identifying malware attacks; Providing online non-downloadable software used for detection of malicious websites, botnets, and wireless access points; Providing online non-downloadable software providing the ability to manage traffic on a computer network; online computer services, namely, providing spam filtering services to protect websites and online applications from receiving unsolicited messages; Providing online non-downloadable software for management of computer software applications on a user's network; Providing online non-downloadable computer software for visualization of connected devices and wireless access points; Providing online non-downloadable software for monitoring, managing, and anonymizing personally identifying information and protecting confidential data on computer networks; computer security services in the nature of providing authentication, issuance, and validation of network users; online cloud-based services used for authentication in the fields of security monitoring, access control, information flow control, and facilitating computer connections for local area, wide area and global computer networks; Computer security services, namely, online monitoring computer networks for securing and protecting data and information from unauthorized access and malware attacks; Technical support, namely, online monitoring the technological functions of computer network systems.”
The word “UNIFIED” means brought together, combined or united. See previously attached dictionary entries. Further, the term “UNIFIED” is commonly used in the industry to in relation to similar goods and services to describe software and hardware that works together. See attached Internet evidence. The word “SECURITY” refers to something that secures or protects. See attached dictionary entries. The word “PLATFORM” refers to the type of computer system you are using, in relation to the type of software you can use on it. See the previously attached dictionary entries. As applied to the identified goods and/or services, the combined term “UNIFIED SECURITY PLATFORM”, immediately conveys the idea that the goods and/or services are a unified software, hardware and services system for use in protecting computer systems and networks. Applicant’s identification of goods confirms that applicant’s goods perform that function, and are for use in that field. Thus, the term “UNIFIED SECURITY PLATFORM” is merely descriptive of a feature, characteristic and purpose of applicant’s goods and/or services.
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 Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Putnam Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”). In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
“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/or 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). “That a term may have other meanings in different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); 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)).
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Thus, third-party registrations of applicant’s mark or portions of applicant’s mark are not probative on the question of descriptiveness. Each case must be taken on its own facts. In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1758 (TTAB 1991); TMEP §1209.03(a).
Therefore, the mark UNIFIED SECURITY PLATFORM, as applied to the identified goods and/or services, merely describes a feature of applicant’s goods and/or services, namely, that the goods and/or services are a unified software, hardware and services system for use in protecting computer systems and networks. Accordingly, the proposed mark is merely descriptive, and the refusal on the Principal Register under Section 2(e)(1) is made final.
ADVISORY: SUPPLEMENTAL REGISTER
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.
ADVISORY: DISCLAIMER REQUIRED – SUPPLEMENTAL REGISTER
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “SECURITY PLATFORM” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
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)
/John Salcido/
John Salcido
Examining Attorney
Law Office 122
571-272-7549
John.Salcido@uspto.gov
RESPONSE GUIDANCE