To: | Inmarsat Global Limited (efiling@knobbe.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88340667 - FLEET HOTSPOT - REDD024.009T |
Sent: | 4/12/2019 11:31:18 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88340667
MARK: FLEET HOTSPOT
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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: Inmarsat Global Limited
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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: 4/12/2019
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.
Summary of Issues:
· Information about Goods and Services Required
· Application Signature Required
· Identification of Goods and Services Requires Amendment
· Multiple Class Application Requirements
· Advisory – Copy of Foreign Registration Required
Search of Office Records
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).
Registration Refusal - §2(e)(1) Mark is Merely Descriptive
Applicant seeks to register FLEET HOTSPOT for various communications and electronic goods and services. The attached dictionary evidence indicates that a fleet is a group of (as of ships, planes, or trucks) operated under unified control.” A hotspot is “a location where wi-fi is publicly available.” Among applicant’s services are several communications services and communications & electronic goods and services geared for maritime applications. Indeed, the attached article from Maritime Executive describes applicant’s FLEET HOTSPOT product as “a managed Wi-Fi solution” that allows the user to access the internet with a unique login. Therefore, the mark merely describes features of the services, namely, wireless internet hotspots being made available on a group of ships.
Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act.
ADVISORY – Amendment to Supplemental Register Suggested
(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).
ADVISORY – Disclaimer Required if Amending to Supplemental Register
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “HOTSPOT” 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.
Information about Goods and Services Required
Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and/or services and wording appearing in the mark:
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(3) Applicant must respond to the following questions:
Do applicant’s goods and/or services include or involve wireless internet hotspots?
Are applicant’s goods and/or services marketed to and/or made for use in fleets?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
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.
Application Signature Required
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Identification of Goods and Services Requires Amendment
In addition, software can be classified in three international classes (International Classes 9, 41, and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use), and if non-downloadable, whether it is game software. For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.
The wording “making available information in electronic form, and telecommunication of information, to third parties to allow tracking and location of third party assets, cargos and personnel” in the class 38 identification of services must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass business information services in class 35 or website technology services in class 42 (see proposed amendments in these classes).
Moreover, “managing communication networks for others” in class 39 appears to be misclassified; managing wireless communication networks is a class 42 service. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.
The following amendments are suggested, if accurate (added language in bold; deleted language struck; requests for further information in
bold and italicized):
Class 9: downloadable computer software for {specify software function, e.g., database management, use in electronic storage of data, and, if field-specific, add field}; downloadable computer software platforms for {specify software function, e.g., database management, use in electronic storage of data, and, if field-specific, add field}; downloadable cloud computing software for {specify software function, e.g., database management, use in electronic storage of data, and, if field-specific, add field}; cloud servers; downloadable cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems, namely, {specify common commercial name of goods, e.g., telecommunications transmitters}; data processing apparatus and instruments; downloadable computer software for the collection and analysis of data; radio apparatus; marine radios; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units in the nature of {specify common commercial name, e.g., flexible flat panel displays for computers}, antennae, mobile internet equipment and apparatus in the nature of {specify common commercial name, e.g., wireless internet devices which provide telematics services and have a cellular phone function}, modems, {specify type of routers, e.g., network} routers, advanced satellite modems and downloadable computer software for {specify software function, e.g., database management, use in electronic storage of data, and, if field-specific, add field}; satellite tracking and positioning systems for maritime use, namely, {specify common commercial name, e.g., GPS navigation devices}; downloadable computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus, namely, {specify common commercial name, e.g., oxygen breathing units}; hazard alert systems for maritime use; distress alert systems for maritime use comprising {specify components, e.g., hardware and downloadable software for notifying or identifying users of users’ surrounding conditions}; emergency transmitters for emitting distress signal; parts and fittings for all the aforesaid goods
Class 35: providing electronic tracking and location information of third party assets, cargos, and personnel to third parties for business administration purposes
Class 38: {specify type of communications services, e.g.,
wireless broadband, long distance telephone} communications services; satellite communications services; {specify common commercial name of digital
transmission services, e.g., transmission of digital files} digital and satellite transmission services; data transfer services, namely, {provide
common commercial name, e.g., transfer of data by telecommunications, providing frame relay connectivity services for data transfer}; electronic mail services, namely,
{provide common commercial name, e.g., transmission of electronic mail}; telecommunications services, namely, {provide common commercial
name, e.g., telecommunication access services}; voice and data transmission services, namely, {provide common commercial name, e.g., electronic, electric,
and digital transmission of voice and data}; telex and facsimile services, namely, {provide common commercial name, e.g., facsimile communication and
retrieval services}; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission
of encrypted communications {specify transmission medium, e.g., through electronic communications networks, via digital communications networks}; secure
e-mail services, namely, {provide common commercial name, e.g., providing electronic transmission of secure email}; secure transmission of data, sound or
images {specify transmission medium, e.g., through electronic communications networks, via digital communications networks}; provision of wireless
application protocol services including those utilising a secure communications channel; radio satellite ship to shore telecommunication services; making available information in electronic form,
and telecommunication of information, {specify common commercial name of
telecommunication services, e.g., transmission of information on optical telecommunication networks} to third parties to allow tracking and location of third party assets, cargos and
personnel; providing user access to the internet and other online systems; providing access to databases; communication and broadcasting services relating to the internet, namely,
{provide common commercial name, e.g., providing voice communication services via the internet}; {specify type of broadcasting, e.g.,
television and radio, internet} broadcasting of data, visual images, sound, graphics and other information; maritime radio-telephone network services; Maritime telephone communications
services and maritime satellite telecommunications services, namely, telephone services, electronic mail services in the nature of {provide common commercial name,
e.g., transmission of electronic mail}, voice and data transmission services in the nature of {provide common commercial name, e.g., electronic, electric,
and digital transmission of voice and data}, facsimile transmission and retrieval services, provision of user access to the internet and other online systems, radio
satellite ship to shore telecommunication services, {specify type of communication services, e.g., satellite, wireless broadband} communication services to
enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services;
telecommunication of information, {specify common commercial names of telecommunication services, e.g., transmission of information on optical
telecommunication networks} to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; return path management for the provision of internet
applications and broadcasts, namely, {provide common commercial name, e.g., broadcast transmission by satellite}; leasing and sub-leasing bandwidth and
uplink services; managing communication networks for others; providing access to and leasing access time to computer networks and computer databases including telecommunications networks and
databases; consultancy, information and advisory services relating to the aforesaid
Class 39: {clarify nature of services, e.g., GPS navigation services}, namely,tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; {clarify nature of services, e.g., GPS navigation services}, namely,provision of maritime tracking and positioning services and systems; GPS navigation services; rental of GPS equipment for navigational purposes; {clarify nature of services, e.g., GPS navigation services}, namely,provision of tracking and positioning services and systems; {clarify nature of services, e.g., GPS navigation services}, namely,tracking and locating objects and equipment by means of satellite technology for third parties; launch and placement in prescribed orbit of satellites of others; information, advisory and consultancy services relating to the aforesaid; Orbit transfer services in relation to satellites, namely, {provide common commercial name, e.g., launch and placement in prescribed orbit of satellites of others}
Class 42: providing a website featuring technology that enables telecommunication of electronic tracking and location information of third party assets, cargos, and personnel to third parties; managing wireless computer networks for others
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.
Multiple Class Application Requirements
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 5 classes; however, applicant submitted a fee sufficient for only 3 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Advisory – Copy of Foreign Registration Required
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
Response Guidelines
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Dinisha Fernando Nitkin
/dfn/
Examining Attorney
Law Office 110
(571) 272-0212
dinisha.nitkin@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.