To: | F5 Networks, Inc. (officeactions@rosenlewis.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88347250 - F5 ACCESS - N/A |
Sent: | 5/24/2019 5:44:23 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88347250
MARK: F5 ACCESS
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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: F5 Networks, 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: 5/24/2019
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 Results
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).
However, before the mark can be approved for publication, the applicant must respond to the following requirements:
1. Identification of Goods
a. The identification for “Computer software” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
b. Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services. See Nice Classification, 11th ed., version 2019 (Nice 11-2019). Applications filed on or after January 1, 2019 must comply with this new version. See 37 C.F.R. §2.85(e)(1); TMEP §1401.09. Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version. See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09. If applicant chooses to comply with the new version, the entire identification must comply with this version. See 37 C.F.R. §2.85(e)(2); TMEP §1401.09. The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries. See TMEP §1402.04.
c. Applicant may adopt the following identification of goods in International Class 9, if accurate: Downloadable computer software for managing secure application access and authentication credentials for computer networks and applications communicating across networks. See TMEP §1402.01.
2. Disclaimer
In this case, applicant must disclaim the word “ACCESS” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a purpose or use of applicant’s computer software. 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 word “access” appears in applicant’s identification of goods: “Computer software for managing secure application access and authentication credentials for computer networks and applications communicating across networks” [emphasis added]. Thus, the word “access” merely describes a function or purpose of applicant’s computer software, i.e., “for managing secure application access.”
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ACCESS” 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.
PLEASE NOTE: All of the issues raised can be resolved by telephone or email. The applicant may call or email the examining attorney, instead of submitting a written response, to expedite the application.
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.
If the applicant has any questions or needs assistance in responding to this Office action, please call the assigned examining attorney.
A prompt response to this Office action will expedite the handling of this matter.
/Barbara A. Gaynor/
Barbara A. Gaynor
Trademark Examining Attorney
Law Office 115
(571) 272-9164
Barbara.gaynor@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.