To: | Datafoxtrot, LLC (ptocommunications@hoffmanwarnick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88342206 - BUILDINGFOOTPRINTUSA - BFP-0002 |
Sent: | 5/30/2019 5:35:59 PM |
Sent As: | ECOM126@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 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88342206
MARK: BUILDINGFOOTPRINTUSA
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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: Datafoxtrot, LLC
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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: 5/30/2019
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
SUMMARY OF ISSUES:
I. SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
The Mark
The applied-for mark is BUILDINGFOOTPRINTUSA, in standard characters, for “downloadable electronic data files featuring spatially-referenced structure polygons and associated attribute data; downloadable databases in the field of spatially-referenced structure polygons and associated attribute data” in International Class 9, and “electronic storage of databases including spatially-referenced structure polygons and associated attribute data; data warehousing; data conversion of electronic information” in International Class 42.
Primarily Geographically Descriptive Analysis
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark is a generally known geographic place or location;
(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).
The applied-for mark BUILDINGFOOTPRINTUSA primarily geographically describes the origin of applicant’s goods and services. The attached evidence from the American Heritage dictionary, AcronymFinder.com, USGS.gov, Google.com, and Wikipedia.org shows that the wording USA in the applied-for mark identifies the United States of America. The same evidence shows, further, that the United States of America is a generally known geographic place, namely “a country comprising fifty states, a federal district, five major self-governing territories, and various possessions” that occupies rough 3.8 million square miles and has a population of over 327 million people. The primary significance of the wording USA is also that of a geographic location, when it primarily denotes the United States of America as the origin of an applicant’s goods and services. Cf. In re Monograms Am., Inc., 51 USPQ2d 1317 (TTAB 1999); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986); Am. Diabetes Ass’n, Inc. v. Nat’l Diabetes Ass’n, 533 F. Supp. 16, 214 USPQ 231 (E.D. Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982); TMEP §1210.02(b)(iv).
The additional wording BUILDINGFOOTPRINT fails to significantly alter or diminish the mark’s geographical descriptiveness in this case, because that wording merely describes applicant’s goods and services. The addition of generic or highly descriptive wording to a geographic word or term does not diminish that geographic word or term’s primary geographic significance. TMEP §1210.02(c)(ii); see, e.g., In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853-54 (TTAB 2014) (holding HOLLYWOOD LAWYERS ONLINE primarily geographically descriptive of attorney referrals, online business information, and an online business directory); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1920 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive of cheese).
The attached evidence from the American Heritage dictionary shows that a “building” is “something that is built, as for human habitation; a structure”, and that at a “footprint” is “the surface space occupied by a structure or device; the footprint of a building.” The attached evidence from DigitalGlobe.com, GISLounge.com, LawInsider.com, and Wiki.OpenstreetMap.org also shows that the compound term “building footprint” is commonly used to denote the surface space occupied by a structure or building. Applicant’s goods and services all feature “spatially referenced structure polygons”, which presumably encompass all such items, including those depicting the surface space occupied by a structure or building, i.e. a building footprint. Applicant’s specimen of use also shows that the “spatially referenced structure polygons” featured in applicant’s goods and services “describe the physical, two-dimensional extent of any building or structure.” The wording BUILDINGFOOTPRINT in the applied-for mark therefore merely describes applicant’s goods and services, and does not significantly alter or diminish the mark’s geographical descriptiveness.
Applicant’s goods and services presumably originate in the United States of America, because applicant is located in the United States, specifically Albany, New York, and because applicant has declared that it is using the applied-mark—or intends to use the applied-for mark—in U.S. commerce connection with the identified goods and services. Applicant’s goods and services also particularly relate to the United States of America’s geography, to wit, applicant’s goods and services feature “spatially referenced structure polygons” that depict the surface space occupied by structures in the United States of America.
An association between applicant’s goods and services and the United States of America may also be presumed in this case. When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods and/or services with the place is presumed if an applicant’s goods and/or services originate in the place named in the mark. TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver).
Conclusion
The applied-for mark BUILDINGFOOTPRINTUSA primarily geographically describes the origin of applicant’s goods and services. Registration of the applied-for mark on the Principal Register is therefore refused under Section 2(e)(2) of the Trademark Act.
Advisory – Section 2(f) / Supplemental Register – Goods in International Class 9
To seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f), applicant generally may (1) submit actual evidence that the mark has acquired distinctiveness of the goods and/or services, (2) claim ownership of an active prior U.S. registration for the same mark for sufficiently similar goods and/or services, or (3) provide the following verified statement of five years’ use: “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least five years immediately before the date of this statement.” See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1212.03-.06 et seq.
To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register. TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.
Advisory – Section 2(f) / Supplemental Register – Services in International Class 42
An intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).
The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.
TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).
II. SECTION 1 & 45 REFUSAL - SPECIMEN OF USE – GOODS IN INTERNATIONAL CLASS 9
Applicant’s specimen of use comprises a “website screenshot”, “written promotional material”, and a “redacted invoice.” The “website screenshot” displays the applied-for mark BUILDINGFOOTPRINTUSA, but does not show the mark on the goods, on packaging for the goods, or associated with the goods and with a means to purchase them. The “written promotion material” also displays the applied-for mark, but does not show the mark on the goods, on packaging for the goods, or associated with the goods and with a means to purchase them. The “redacted invoice” also shows the applied-for mark, but does not show that this invoice is for the sale of the goods identified in the application. Invoices are, moreover, generally not acceptable as specimens of use for goods. See TMEP §904.04(b)-(c).
Advertising materials are generally not acceptable as specimens to show use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); TMEP §904.04(b), (c). Advertising materials may consist of the following: online advertising banners appearing on search engine result pages and in social media; advertising circulars and brochures; price lists; listings in trade directories; and business cards. See TMEP §904.04(b).
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 identified in the application or amendment to allege use. 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).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(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 or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. 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 the Specimen webpage.
Advisory – Specimen Submitted with §1(b) Application
Applicant may file an amendment to allege use at any time between the application filing date and the date the trademark examining attorney approves the mark for publication. 37 C.F.R. §2.76(a)(1); TMEP §1104.03. If applicant does not file a timely and acceptable amendment to allege use or files and then withdraws an amendment to allege use, and the USPTO then issues a notice of allowance under 15 U.S.C. §1063(b)(2), applicant must file a statement of use within six months after the date of issuance of the notice of allowance or within a previously granted extension of time for filing the statement of use. 37 C.F.R. §2.88(a)(1); TMEP §1109.04. See TMEP §§1104 et seq. regarding requirements for amendments to allege use and TMEP §§1109 et seq. regarding requirements for statements of use.
III. INFORMATION REQUIRED - GOODS
- Are applicant’s goods sold, manufactured, produced, or packaged and shipped from the USA?
- Are applicant’s services rendered at least in part in the USA?
- Will applicant’s services be rendered at least in part in the USA?
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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Carl A. Konschak/
Carl A. Konschak, Esq.
Examining Attorney
Law Office 126
(571) 270-3878
carl.konschak@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.