To: | PacketFabric, LLC (TRADEMARKS-LASVEGAS@LRRC.COM) |
Subject: | U.S. Trademark Application Serial No. 88299024 - PACKETFABRIC - 303551-00007 |
Sent: | November 19, 2019 04:46:42 PM |
Sent As: | ecom111@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88299024
Mark: PACKETFABRIC
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Correspondence Address: |
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Applicant: PacketFabric, LLC
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Reference/Docket No. 303551-00007
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: November 19, 2019
This Office action is in response to applicant’s communication filed on October 28, 2019.
In a previous Office action(s) dated April 26, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s services.
The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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
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).
Applicant’s services are “Providing custom network solutions to businesses, namely, design and integration of computer networks for businesses; computer and telecommunications equipment co-location services, namely, providing facilities for use by third parties for the location of their computer servers, routers, switches and other telecommunications and networking equipment to be co-located with the equipment of others; and computer co-location services, namely, providing facilities for the location of computer servers with the equipment of others; Software as a service (SAAS) services featuring software for virtual network infrastructure; Software as a service (SAAS) services featuring software for creating and managing programmable networks on-demand; Software as a service (SAAS) services featuring software for creating and managing virtual computer networks; Software as a service (SAAS) services featuring networking software; Software as a service (SAAS) services featuring software for the creation, control, and automated management of computer networking services in a virtualized environment; Software as a service (SAAS) services featuring software for implementing networking as a service (NAAS); Development of software for secure network operations.”
Specifically, the previously attached evidence from Linktionary shows that PACKET means “a unit of data that is transmitted across a packet-switched network. A packet-switched network is an interconnected set of networks that are joined by routers or switching routers,” and FABRIC means “a multiconnection device in which a mesh of interconnections connects inputs on one side with outputs on the other side. Any input can be switched to any output almost instantaneously.” Also, the previously attached evidence from Big Switch Networks, Big Mon Recorder Node, and Pluribus Networks shows that the wording PACKET and FABRIC are commonly used in conjunction with each other in connection with applicant’s type of services to mean a method from transmitting data over a computer network.
Finally, the attached evidence from OIF, two articles from Lightwave, Gazetta Byte, Telecom Standards Montly, Xelic, Heavy Reading, and Google Patents shows that PACKET FABRICS are a method for sending data over a telecommunication network. Therefore, the wording merely describes a feature of applicant’s services, namely, applicant’s networks feature a mesh of connections to send units of data.
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
Applicant argues that the mark is not descriptive because it does not immediately convey information about applicant’s services. The previously discussed evidence in the record shows that a PACKET FABRIC is a term of art in the computer networking industry. Thus, a professional working within the telecommunication industry would be aware of what the mark means in relation to the services. Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.
Applicant argues that the mark is not descriptive because there is no commonly understood meaning. However, the evidence in the record shows that a PACKET FABRIC is a term of art in computer networking contexts and does have a commonly understood meaning.
Applicant argues the mark is not descriptive because it does not appear in dictionaries. The fact that a word or term is not found in the dictionary is not controlling on the question of registrability when the word or term has a well understood and recognized meaning. In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977); TMEP §1209.03(b); see In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987); In re Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004); In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002).
Applicant argues that the applied-for mark is not descriptive because one or both of the terms can have alternative meanings. Descriptiveness is considered in relation to the relevant goods and/or 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.” 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)).
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
For the foregoing reasons the refusal to register under Section 2(e)(1) is continued and hereby made FINAL.
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)
/Jonathan Falk/
Jonathan R. Falk
Trademark Examining Attorney
Law Office 111
(571)272-5301
Jonathan.falk@uspto.gov
RESPONSE GUIDANCE