UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88303966
MARK: ADAPTIVE DATA PROTECTION
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: COBALT IRON, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/7/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES
In response to this Office action, applicant must address the following issues:
(1) Section 2(e)(1) Mere Descriptiveness Refusal
SEARCH RESULTS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SECTION 2(e)(1) REFUSAL - MERE DESCRIPTIVENESS REFUSAL
Applicant has applied to register the mark “ADAPTIVE DATA PROTECTION” in standard characters for use in connection with “Providing temporary use of non-downloadable computer software for data protection, data management, data backup, and restoration; Software as a service (SAAS) services featuring software for storage, protection, monitoring, migration, integration, archiving, and management of data; software as a service (SAAS) services featuring software for managing, automating, and monitoring data protection operations, providing reports for data protection operations, and providing alerts for data protection operations; software as a service (SAAS) services featuring software for providing analytics for data storage, protection, monitoring, migration, integration, and management of data; software as a service (SAAS) services featuring software for providing security access controls for data and providing hierarchical, role-based management of data and for providing management of data based on user access permissions; software as a service (SAAS) services featuring software for providing a portal for viewing and managing analytics and operations for data storage, protection, monitoring, migration, integration, and management of data; software as a service (SAAS) services featuring software for providing an interface for management of data operations, namely, enrolling systems into data protection management, creating and changing schedules for data protection and management operations, adjusting management policies for data protection and management operations; consulting in the field of information technology relating to data protection, data management, data backup and restoration” in Class 042.
Please see the attached dictionary definitions from the Merriam-Webster Dictionary showing that the term “ADAPTIVE” means “providing, contributing to, or marked by adaptation: arising as a result of adaptation” and “adapt” means “to make fit (as for a new use) often by modification.” The term “DATA” means “information in digital form that can be transmitted or processed,” while the term “PROTECTION” means “the act of protecting: the state of being protected” and protect means “to cover or shield from exposure, injury, damage, or destruction.” The combination of these terms immediately conveys that applicant’s services continually modify to shield information in digital form from damage or destruction.
In the context of the services, the term “ADAPTIVE” describes a characteristic of the software service that the applicant is providing. Please see the attached Internet evidence from digitalguardian.com showing the use of “ADAPTIVE” in relation to data security, stating that “Adaptive security is a security model in which the monitoring of threats remains continuous and improves as cybersecurity risks change and evolve over time” and is commonly used in the industry for the practice of “early detection of security compromises and an automatic, autonomous response when a malicious event occurs.” Furthermore, as also shown in the attached evidence, adaptive-applications.com provides a similar service as the applicant and describes what they do as “ADAPTIVE DATA PROTECTION.”
Similarly, please see the attached Internet evidence from microfocus.com, which provides services to “protect data” and calls its service “Data Protector Premium.” In addition, further attached web pages from both StorageCraft.com and Quest.com also offer data protection software using two out of three terms applicant uses in its mark, namely DATA PROTECTION, on their respective websites.
Moreover, applicant’s identification includes software for “DATA PROTECTION” and for overseeing “DATA PROTECTION operations,” and its specimen includes pages from its website and promotional materials explaining it “Deliver[s] Modern DATA PROTECTION” and offers “Enterprise DATA PROTECTION Software-as-a-Service.” The term DATA PROTECTION therefore merely describes a characteristic and purpose of applicant’s software.
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 this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. In the context of applicant’s services, the combined wording “ADAPTIVE DATA PROTECTION” mark immediately conveys the information that the applicant’s service protects data, provides software as a service which monitors data protection, and that its software is flexible and changes according to the conditions that are input.
In view of the above, the applied-for mark is merely descriptive of the purpose and a characteristic of the applicant’s services, and therefore, registration is refused under Trademark Act Section 2(e)(1).
RESPONSE TO SECTION 2(e)(1)—MERE DESCRIPTIVENESS REFUSAL
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Alternatively, applicant may respond by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s). TMEP §816.04.
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:
(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).
DISCLAIMER ADVISORY
Applicant is advised that, if the application is amended to seek registration on the Supplemental Register, applicant will be required to disclaim “DATA PROTECTION” because such wording appears to be generic in the context of applicant’s services, based on the evidence and arguments in the descriptiveness refusal above. See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “DATA PROTECTION” 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.
RESPONDING TO THIS OFFICE ACTION
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
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.
/Sasha Boshart/
Trademark Examining Attorney
USPTO
Law Office 125
P: (571)272-2616
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
