To: | National Institute of Aerospace Associat ETC. (Karl.Drews@nianet.org) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88358766 - SMART AIRPORT AND AVIATION - N/A |
Sent: | 6/17/2019 5:49:54 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88358766
MARK: SMART AIRPORT AND AVIATION
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CORRESPONDENT ADDRESS: NATIONAL INSTITUTE OF AEROSPACE ASSOCIAT NATIONAL INSTITUTE OF AEROSPACE ASSOCIAT |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: National Institute of Aerospace Associat ETC.
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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: 6/17/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:
NO CONFLICTING MARKS FOUND
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, applicant must respond to the following requirement(s) before registration can be granted.
INFORMATION ABOUT GOODS AND SERVICES REQUIRED
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
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 and services 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).
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
Applicant’s goods and services are identified as follows:
Class 12: On Demand Mobility and Unmanned Aerial Systems
Class 39: On Demand Mobility and Unmanned Aerial Systems
Class 42: On Demand Mobility and Unmanned Aerial Systems
Goods in International Class 12
Services in International Classes 39 and 42
Generally, identical language cannot be used to describe services in more than one international class. TMEP §1401.05(c). For the USPTO to determine the proper classification of applicant’s services, applicant must specify the purpose for which the service activity is rendered. Id. For example, “layout services” is unacceptable because it refers to services in more than one international class – layout services “for advertising purposes” are classified in International Class 35 and “other than for advertising purposes” are classified in International Class 41 – and does not clearly indicate which would be the appropriate international class. The following identifications, however, would be acceptable: “layout services for advertising purposes” in International Class 35 and/or “layout services other than for advertising purposes” in International Class 41. See TMEP §1401.05(c) for more information about this issue.
In this case, classification would be determined by the purpose of the activities applicant provides. Thus, applicant must amend the identification to specify the purpose of applicant’s services using wording that is relevant to each designated international class. See id.
Applicant may adopt the following identification of goods and services, if accurate [the examining attorney’s suggestions appear in bold, underlined text]:
Class 12: On Demand Mobility and Unmanned Aerial Systems, namely, unmanned aerial systems (UAS) comprised of drones, remote controls for drones, and remote control (RC) aircraft, other than toys, and related software and manuals therefor sold as a unit
Class 39: Services relating to On Demand Mobility and Unmanned Aerial Systems, namely, {list specific services by common commercial or generic name, e.g., flight and air traffic control services for unmanned aerial systems (UAS), drones, and unmanned aerial vehicles (UAVs), GPS navigation services, providing information to third parties regarding air traffic navigation and control by means of a global computer information network}
Class 42: Services relating to On Demand Mobility and Unmanned Aerial Systems, namely, {list specific services by common commercial or generic name, e.g., technical support services in the nature of troubleshooting of computer software problems in the fields of drones, unmanned aerial vehicles (UAVs), unmanned aircraft systems (UAS), remotely piloted aircraft systems (RPAS), remote-control (RC) aircraft}
ID Manual Online
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.
DISCLAIMER REQUIRED
The applicant must insert a disclaimer of “SMART AIRPORT AND AVIATION PARTNERSHIP” in the application because this wording merely describes a feature and provider of applicant’s goods and services. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.10.
Wording is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
In this case, applicant’s mark is SMART AIRPORT AND AVIATION PARTNERSHIP (SAAS) for “On Demand Mobility and Unmanned Aerial Systems.” The term “SMART” is defined as “operating as if by human intelligence by using automatic computer control.” http://search.credoreference.com/content/entry/hcengdict/smart/0. The term “AIRPORT” refers to “[a] place where aircraft take off and land, usually equipped with hard-surfaced landing strips, a control tower, hangars, aircraft maintenance and refueling facilities, and accommodations for passengers and cargo.” http://www.ahdictionary.com/word/search.html?q=airport. The word “AVIATION” is defined as “[t]he operation of aircraft.” http://www.ahdictionary.com/word/search.html?q=aviation. The term “PARTNERSHIP” is defined as “[a] relationship between individuals or groups that is characterized by mutual cooperation and responsibility, as for the achievement of a specified goal: Neighborhood groups formed a partnership to fight crime.” http://www.ahdictionary.com/word/search.html?q=partnership. When considered in relation to the identified goods and services, the wording “SMART AIRPORT AND AVIATION PARTNERSHIP” merely describes a feature and provider of the goods and services. That is, applicant’s unmanned aerial systems and related services are provided by/through an airport and aviation partnership featuring automated technology.
Thus, the wording “SMART AIRPORT AND AVIATION PARTNERSHIP” is descriptive as applied to applicant’s goods and services and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SMART AIRPORT AND AVIATION PARTNERSHIP” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
(1) Explain whether the wording in the mark “SMART AIRPORT AND AVIATION PARTNERSHIP” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether the wording in the mark “SMART AIRPORT AND AVIATION PARTNERSHIP” identifies a geographic place.
(3) Respond to the following questions:
What does the wording “SMART AIRPORT AND AVIATION PARTNERSHIP” mean, refer to, or signify as applied to the goods and services listed in the application?
What is a “smart airport”?
What is “smart aviation”?
See 37 C.F.R. §2.61(b); TMEP §814.
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.
GUIDELINES FOR RESPONDING TO THIS OFFICE ACTION
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.
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.
/Amy L. Kertgate/
Examining Attorney
Law Office 113
Tel: (571) 272-1943
Email: amy.kertgate@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.