Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 23, 2019

 

 

 

 

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.  

 

The Office has reassigned this application to the undersigned trademark examining attorney.  This Office action is in response to applicant’s communication filed on August 1, 2019.

 

In the initial Office action, the Examining Attorney issued a specimen refusal and a requirement for an acceptable identification of goods/services.  The applicant has satisfied the identification requirement.  The applicant has submitted an additional specimen that is similar to the original specimen and does not address the refusal.  Therefore, the refusal is maintained and continued, and a new information requirement is now issued.  Accordingly, this is a non-Final Office action.

 

Summary of Issues Applicant Must Address

• Specimen Refusal – Different Goods
• Requirement for Additional Information and Documentation

 

Specimen Refusal – Different Goods

 

Applicant has applied for registration of the mark ADIANTUM in standard character form for the following goods (as amended by the applicant’s 8/1/2019 response):

 

Downloadable computer software, namely, open source software for use in the encryption and decryption of digital files, in Class 9.

 

The term “‘Open-source software’ refers to “a type of computer software in which source code is released under a license in which the copyright holder grants users the rights to study, change, and distribute the software to anyone and for any purpose.”  Wikipedia®, Open-source software, http://en.wikipedia.org/wiki/Open-source_software (viewed on Sep-19-2019, 10:26 EDT).  This is in contrast to traditional closed source or proprietary software whose source code is not released to the public.  Wikipedia®, Comparison of Open-source and Closed-source Software, http://en.wikipedia.org/wiki/Comparison_of_open-source_and_closed-source_software (viewed on Sep-19-2019, 10:31 EDT).  See also Techopedia, Open-Source Software (OSS), http://www.techopedia.com/definition/5602/open-source-software-oss (viewed on Sep-19-2019, 12:00 EDT) (“Open-source software (OSS) is software that is distributed with source code that may be read or modified by users.”) (emphasis added).

 

The best-known example of open-source code is the LINUX operating system.  Opensource.com, What is Linux?, http://opensource.com/resources/linux (viewed on Sep-19-2019, 10:58 EDT).  Because it is open source, developers may view and edit the code.  However, consumers who actually want to use Linux as an operating system must download a software package (distribution) similar to software packages downloaded for proprietary/closed source software.  Id.; e.g., Ubuntu, Download, http://ubuntu.com/#download (viewed on Sep-19-2019, 11:01 EDT).

 

Similarly, GitHub, the website shown on the applicant’s website, features both a marketplace and package registry, where consumers may download software packages.  GitHub Help, About GitHub Package Registry, http://help.github.com/en/articles/about-github-package-registry (viewed on Sep-19-2019, 11:15 EDT).  The software made available on the GitHub marketplace has a similar layout and download/installation button to software from proprietary/closed source sources.  See, e.g., GitHub, Clickup, http://github.com/marketplace/clickup (viewed on Sep-19-2019, 10:54 EDT).

 

The applicant’s software does not appear in the GitHub Marketplace, Search Results, http://github.com/marketplace?utf8=%E2%9C%93&category=free&query=adiantum (viewed on Sep-19-2019, 11:20 EDT).  Similarly, the applicant’s specimens indicate there are no software releases (packages) available on the GitHub site.

 

In support of the initial application and the applicant’s response, applicant has submitted specimens described as “screenshot from the Applicant's GitHub page that hosts the ADIANTUM software code for download.” 

 

As described, these specimens appear to feature the software source code for download, not software that may be used for the specified function of encryption and decryption of digital files. Attached is an additional screenshot from that page, which further indicates that the files are a variety of algorithms, not intended for production use.

 

Thus, the initial specimen was refused because it appeared to feature downloadable files featuring code for use in further development, not software that may be used for the specified functions.  The applicant may not amend the identification to include such goods.  Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06. 

 

Because the substitute specimen shows essentially the same information as the initial specimen, the refusal to register the mark because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in the application is maintained and continued.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i). 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  E

 

Applicant may respond to this refusal by satisfying one of the following:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

Identification and Documentation

 

To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimens.  See 37 C.F.R. §2.61(b); TMEP §814.  For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date.  TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).

 

(1)        Does the zip file shown on the applicant’s substitute specimen contain executable software code for use in the encryption and decryption of digital files?

 

(2)        Does the zip file shown on the applicant’s substitute specimen only contain source code and documentation for use by developers in further development of the code?

 

(3)        Would developers accessing the source code on the specimen be able to convert the code into an executable software for use in the encryption and decryption of digital files?  If so, how would the developers do this?

 

(4)        If the answer to (1) is “yes,” provide screenshots showing each step from download to use of the software.

 

(5)        If the answer to (3) is “yes,” provide representative screenshots showing the steps in this process.

 

(6)        Is the applicant’s software available for sale/download on any other sites by third parties?  If so, provide representative web addresses and screenshots.

 

Failure to comply with a requirement to furnish information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  However, amending the application filing basis to intent-to-use under Section 1(b) will resolve this requirement for information and documentation.

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@uspto.gov

 

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  Because applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 23, 2019 for

U.S. Trademark Application Serial No. 88327856

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kim Teresa Moninghoff/

Examining Attorney

Law Office 113

Phone:  571-272-4738

Email:  kim.moninghoff@uspto.gov

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 23, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”