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:  July 10, 2020

 

This Office action is in response to applicant’s communication filed on June 16, 2020.

 

SUMMARY OF ISSUES:

 

• Further Clarification of Identification of Goods Required
• Section 2(e)(1) Mere Descriptiveness Refusal Continued
• Requirement for Information Regarding the Nature of the Goods Continued

 

The amendment to the identification of goods has been received, but requires further clarification to be acceptable. The requirement for an acceptable identification of goods is continued and modified as indicated below.

 

Applicant’s arguments regarding the Section 2(e)(1) mere descriptiveness refusal have been considered, but are unpersuasive for the reasons specified below. The Section 2(e)(1) refusal is continued and maintained.

 

The requirement for information regarding the nature of the goods is also continued: applicant’s response to this requirement is insufficient.

 

Further Clarification of Identification of Goods Required

 

The amended wording “Computing systems used in cooling immersion environments for high speed computing comprised of data centers with modular servers and enclosures for same” in the identification of goods is indefinite and must be clarified because it is not clear whether the phrase “high speed computing” refers to the environments or to the systems.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:  “Computing systems, comprised of data centers with modular servers and enclosures, for use in high speed computing in cooling immersion environments.”

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

Section 2(e)(1) Mere Descriptiveness Refusal Continued and Maintained

 

Applicant argues that the term “HYDROBLADE” has many meanings and that as used in connection with applicant’s goods is merely suggestive rather than immediately descriptive of a feature of the goods.  

 

Applicant’s argument is unpersuasive. 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. The most obvious and direct interpretation of the proposed mark “HYDROBLADE” used in connection with applicant’s identified goods is to describe features of the goods as described below. “That a term may have other meanings in different contexts is not controlling.” Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *5 (TTAB 2019) (citing In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)); 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)).

 

The proposed mark is a combination of two terms “HYDRO” and “BLADE” that are potentially merely descriptive of the goods.  Although applicant has indicated that the systems will not use water but instead a dielectric fluid, the term “hydro” can mean something other than “water” (see definitions of “hydro” attached to the Office action mailed December 18, 2019 from Google search engine; December 17, 2019; www.collinsdictionary.com:  “containing hydrogen” and www.thefreedictionary.com:  “Liquid”).  If the dielectric fluid includes hydrogen, the term “HYDRO” is merely descriptive of a primary feature of the goods.  Attached to a previous Office action was a definition of a “blade” as a type of computer hardware component (see excerpt from www.computerhope.com; Google search engine; May 22, 2019; attached to the Office action of the same date).  Applicant acknowledges that the term “BLADE” is descriptive of an element of the goods (“The contemplated immersion cooling system will include blades in the sense shown in a portion of the Office Action's excerpt.”).  Applicant is the source of goods described in the following articles as both employing blades and liquids or fluid (Google search engine; December 18, 2019; attached to the Office action of December 18, 2019; www.tmgcore.com:  ‘Redefining “high-density data centers through innovative two-phase liquid immersion cooling technology.’ and “Support for extremely high density compute blades consuming up to 6,000 watts (6kW) per blade”; www.anandtech.com:  “Each unit is fitted with TMGcore’s own blade infrastructure, aptly named as ‘OTTOblade’.” and “Two-phase immersion cooling in which servers are immersed in coolant fluid….”; and http://datacenterfrontier.com:  “Those data points are based on racks filled with OTTOblade servers, which pack 6kW of compute power into a single 1U blade.”).

 

Requirement for Information Regarding the Nature of the Goods Continued

 

Applicant has provided some information regarding the nature of the goods, but has failed to provide all information as indicated in bold type below.

 

To permit proper examination of the application, applicant must submit additional product information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Assistance

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107, USPTO

571/272-9157

jeri.fickes@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.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If 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 July 10, 2020 for

U.S. Trademark Application Serial No. 88330304

 

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. 

 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107, USPTO

571/272-9157

jeri.fickes@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 July 10, 2020, 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.”