To: | Index Engines, Inc. (jdevine@indexengines.com) |
Subject: | U.S. Trademark Application Serial No. 88366082 - CYBERSENSE - N/A |
Sent: | January 04, 2020 03:39:58 PM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88366082
Mark: CYBERSENSE
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Correspondence Address:
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Applicant: Index Engines, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: January 04, 2020
This Office action is supplemental to and supersedes the previous Office action issued on June 18, 2019 (“Initial Office action”), in connection with this application. Based on information and/or documentation in applicant’s response submitted on October 31, 2019 (“Response”), the trademark examining attorney now issues the following new refusal: Specimen refusal. See TMEP §§706, 711.02.
In the Initial Office action, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirements: amend the identification of goods and/or services, and meet the multiple-class application requirements.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification of goods was provided. See TMEP §713.02.
The following requirements has also been obviated: meeting the multiple-class application requirements. See id.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Specimen Refusal – Mark Not Shown in Association with the Goods
• MAINTAINED AND CONTINUED ISSUE: Section 2(d) Refusal – Likelihood of Confusion
Applicant must respond to all issues raised in this Office action and the Initial Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
NEW ISSUE
SPECIMEN REFUSAL – MARK NOT SHOWN IN ASSOCIATION WITH THE GOODS
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 downloadable software include instruction manuals and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). 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. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §§904.03(i) et seq.
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 software 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.
MAINTAINED AND CONTINUED ISSUE
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In the Initial Office action, registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 4632428. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The attached registration as well as all arguments and attached evidence in the Initial Office action are incorporated herein. In the Response, applicant did not submit any evidence or arguments against this refusal and in support of registration. Accordingly, the trademark examining attorney maintains a continues the refusal of the applied-for mark under Trademark Act Section 2(d) for likelihood of confusion with the registered mark.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal in this Office action and the Initial 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.
SUGGEST HIRING TRADEMARK COUNSEL
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
How to respond. Click to file a response to this nonfinal Office action.
/G. Iñaki Liñero Guarda/
G. Iñaki Liñero Guarda
Examining Attorney
Law Office 127
(571)270-1783
Gerardo.LineroGuarda@uspto.gov
RESPONSE GUIDANCE