To: | Amazon Technologies, Inc. (trademarks@beharlawfirm.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88319286 - AMAZON PROJECT ZERO - 15018/0326 |
Sent: | 4/19/2019 8:40:48 PM |
Sent As: | ECOM122@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88319286
MARK: AMAZON PROJECT ZERO
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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: Amazon Technologies, 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: 4/19/2019
SEARCH OF OFFICE’S DATABASE OF MARKS
PRIOR-FILED APPLICATION ADVISORY
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant may adopt the following identification, if accurate:
Class 35: Business services, namely, providing, conducting, and administering a program to record intellectual property rights and report violations; Business services, namely, providing, conducting, and administering a program to protect intellectual property rights on a marketplace using recordation of trademark registrations, reporting of violations, and removal of listings; Providing business information in the field of intellectual property in the nature of a program to combat infringement, counterfeiting, tampering and diversion; Supply chain management services, namely, administration of a program to monitor and manage product through a supply chain; Business services, namely, administration of a program to record and protect intellectual property rights; Compilation of information into computer databases for purposes of tracing and tracking product origin, ingredients, materials, and manufacture
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
In this case, applicant must disclaim the wording “PROJECT” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of a characteristic, purpose, or feature of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from http://www.ahdictionary.com/word/search.html?q=project shows this wording means “a plan or proposal for accomplishing something” or “an undertaking requiring concerted effort.” Additionally, the attached evidence from http://www.theverge.com/2019/2/28/18244603/amazon-project-zero-counterfeit-listing-remove-products (an online article describing applicant’s services that include “a new initiative” and “a new effort”), http://feedvisor.com/resources/industry-news/how-brands-can-use-amazons-project-zero-to-defend-against-counterfeiters/ (an online article describing applicant’s services that include a “program”), http://www.junglescout.com/blog/amazon-project-zero/ (an online article discussing applicant’s services of an initiative or program that includes information to help protect brands), http://marketingland.com/amazons-project-zero-launches-to-help-brands-fight-counterfeiters-257852 (an online article describing applicant’s services of a program that includes information to help protect brands), and http://blog.payoneer.com/e-sellers/marketplaces/amazon-is-cracking-down-on-counterfeit-products-heres-what-esellers-need-to-know/ (an online article describing applicant’s services that include “an initiative” and including applicant’s “concerted effort”), shows that applicant is providing a program that features a plan or concerted effort to protect intellectual property rights. Thus, the wording merely describes applicant’s services because applicant’s program feature a concerted effort, plan, or “project” to protect intellectual property rights.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PROJECT” apart from the mark as shown.
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 TO OFFICE ACTION
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.
/Corinne Kleinman/
Examining Attorney
Law Office 122
(571) 272-7461
corinne.kleinman@uspto.gov
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.