To: | DNI Realty, LLC, (bfeingold@rbflaw.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88392167 - IBASEMENT - N/A |
Sent: | 6/30/2019 9:48:22 AM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88392167
MARK: IBASEMENT
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CORRESPONDENT ADDRESS: ROBERT B. FEINGOLD & ASSOCIATES, P.C. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: DNI Realty, 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: 6/30/2019
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.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. Nevertheless, the applicant must respond to the following issue(s).
DESCRIPTION OF THE MARK
The following description is suggested, if accurate: The mark consists of the wording I BASEMENT which has an oversized lower case letter I in black, and the word BASEMENT in white. The letter I is has a dark green filled circle in the black dot which dots the I, and the letter I is within a medium green color filled oval. All wording and designs are contained within a dark blue rectangle.
IDENTIFICATION OF GOODS
REGISTERED MARK IN IDENTIFICATION
Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).
The examining attorney has reviewed the identification and the specimen of record and suggests an identification as follows. Applicant may therefore adopt the following identification, if accurate: An internet enabled electronic device for monitoring and controlling environmental conditions in a basement such as humidity, moisture, high water and air quality and for sending electronic alerts when conditions become harmful.
To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual is available for assistance with identifying and classifying goods and services. See TMEP §1402.04.
DISCLAIMER
In this case, applicant must disclaim the wording “I BASEMENT” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. 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).
When a mark consists of this prefix coupled with a descriptive word or term for Internet-related goods and/or services, then the entire mark may be considered merely descriptive. See RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1810-14 (TTAB 2018) (holding IPAD merely descriptive of web-based software for mobile-access database management in which users can store and access their personal information); In re Zanova, Inc., 59 USPQ2d 1300, 1304 (TTAB 2000) (holding ITOOL merely descriptive of computer software for use in creating web pages, and custom designing websites for others); TMEP §1209.03(d).
The attached evidence from the acronymfinder.com abbreviation dictionary shows the letter I denotes a common meaning of “internet.” The attached evidence from the American Heritage Dictionary of the English Languae shows the wording BASEMENT denotes the lowest habitable story of a building, usually below ground level. Thus, the wording merely describes applicant’s goods and/or services and/or a feature thereof because the goods are an electronic, internet enabled basement monitor, control and alert device. When a mark consists of the prefix I coupled with a descriptive word or term for Internet-related goods and/or services, then the entire mark may be considered merely descriptive. See RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1810-14 (TTAB 2018).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “I BASEMENT” 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: The issue(s) raised can likely be resolved by telephone examiner’s amendment. The applicant may wish to telephone the examining attorney in lieu of filing a written response.
Please feel free to contact the undersigned attorney if you wish to discuss this application.
/John S. Yard/
Trademark Examining Attorney
Law Office 115
(571) 272-9486
john.yard@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.