Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

Issue date:  March 13, 2020

 INTRODUCTION

This Office action is in response to applicant’s communication filed on February 20, 2020.

In a previous Office action dated August 20, 2019, 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, and Trademark Act Section 2(e)(1) for mere descriptiveness.  Additionally, the examining attorney advised applicant that a prior-filed application may serve as a possible basis for a refusal under Trademark Act Section 2(d) upon registration.  Finally, applicant was required to amend the identification of services.

Based on applicant’s response, the trademark examining attorney notes that the identification requirement has been satisfied.  See TMEP §§713.02, 714.04. 

The Section 2(d) and potential Section 2(d) refusals have been withdrawn.  See TMEP §§713.02, 714.04. 

Applicant’s arguments against the Section 2(e)(1) refusal have been considered and found unpersuasive.  Therefore, the trademark examining attorney maintains and now makes FINAL the refusal below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a feature, characteristic or function of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if “it immediately conveys knowledge of a quality, feature, function, or characteristic of [an applicant’s] goods or services.”  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)).

In the present case, applicant’s proposed mark is FUNNEL for “downloadable software in the field of real estate properties and real estate transactions, namely, software for searching, organizing, managing, monitoring, distributing, and analyzing real estate property information, real estate content, and real estate transactions; downloadable real estate software featuring searching, organizing, managing, monitoring, and analyzing real estate property information, real estate content, and real estate transactions” in International Class 9, and “providing online non-downloadable software in the field of real estate properties and real estate transactions, namely, software for searching, organizing, managing, monitoring, distributing, and analyzing real estate property information, real estate content, and real estate transactions; software as a service (SAAS) services featuring real estate software for searching, organizing, managing, monitoring, and analyzing real estate property information, real estate content, and real estate transactions” in International Class 42. 

The previously attached evidence from Design Pickle shows that FUNNEL software is an “automated marketing funnel,” or “a system that funnels people through your sales process until they ultimately convert, typically into a paying customer.”  Similar defining evidence is presently attached from Entrepreneur.com (“a multi-step, multi-modality process that moves prospective browsers into buyers”).  Further, the previously attached evidence from FitSmallBusiness.com, Paperform, and Mxt Media, as well as the currently attached evidence from Wishpond, 20 Funnels, and SharpLaunch, shows that funnel software is frequently used in the real estate industry.

Based on this evidence, FUNNEL merely describes a feature, characteristic or function of applicant’s goods and/or services, i.e., applicant’s software features an automated marketing or sales funnel to direct potential real estate buyers and/or sellers toward a final listing or sale. 

Applicant argues that FUNNEL is not descriptive of the goods and/or services listed in the identification because neither the term “sales” nor “marketing” appears in the identification, and because the reference to “listings” has been deleted.  However, the field of the software is still defined by the broad wording “real estate properties and real estate transactions,” which are also the subject matter of funnel software in the real estate field.  For instance, the evidence from SharpLaunch shows that real estate funnel software tracks and analyzes closed deals, which are part of real estate transactions.  Likewise, the evidence from Mxt Media and Wishpond shows that real estate funnel software includes distributing real estate property information by creating and organizing websites and widgets to deliver the information to clients.

Applicant further argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive.

Applicant’s proposed mark is therefore refused as merely descriptive under Trademark Act Section 2(e)(1).

RESPONSE GUIDANCE

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

/Andrea B. Cornwell/

Andrea B. Cornwell

Examining Attorney

Law Office 115

571-272-4608

andrea.cornwell@uspto.gov

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on March 13, 2020 for

U.S. Trademark Application Serial No. 88379279

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

(1)  Read the official letter.

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

/Andrea B. Cornwell/

Andrea B. Cornwell

Examining Attorney

Law Office 115

571-272-4608

andrea.cornwell@uspto.gov

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 13, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”