To: | TOOLBOX TVE, LLC (rperez@brickellip.com) |
Subject: | U.S. Trademark Application Serial No. 88411445 - CLOUD UNITY - N/A |
Sent: | July 20, 2019 02:31:22 PM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88411445
Mark: CLOUD UNITY
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Correspondence Address: 1101 BRICKELL AVE FL 8, SOUTH TOWER
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Applicant: TOOLBOX TVE, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: July 20, 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.
SEARCH OF OFFICE’S DATABASE OF MARKS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note the below requirements.
In this case, applicant must disclaim the wording “CLOUD” because it is not inherently distinctive. This unregistrable term is at best are merely descriptive of a feature of applicant’s 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).
The attached evidence from http://www.merriam-webster.com/dictionary/cloud shows that in the context of applicant's services means "the computers and connections that support cloud computing." This wording is merely descriptive because it describes a feature of applicant's software services in that they are provided via cloud computing. Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CLOUD” 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.
Applicant should note the below requirement.
IDENTIFICATION OF SERVICES—AMENDMENT REQUIRED
The wording "Software as a Service (SaS) for the creation of Internet applications and client interfaces; Software as a Service (SaS) to design and manage content of websites and applications; Software as a Service (SaS) to access backend services, namely, syncing data, data storage, data control, data transmission, push notifications, user management, application performance reporting, mobile messaging, social media platforms, video player, mobile payment services" is unacceptable as indefinite because applicant must clarify the acronym "(SaS)," must specify that services feature software for carrying out the specified functions, and must clarify the wording "backend". See id. See suggested amendment below.
SUGGESTED AMENDMENTS
Applicant may adopt the following identification, if accurate (note suggested amendments in bold typeface):
Software as a Service (SaaS) featuring software for the creation of Internet applications and client interfaces; Software as a Service (SaaS) featuring software to design and manage content of websites and applications; Software as a Service (SaaS) featuring software to access back end services, namely, syncing data, data storage, data control, data transmission, push notifications, user management, application performance reporting, mobile messaging, social media platforms, video player, mobile payment services
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.
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.
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
/Michael FitzSimons/
Michael FitzSimons
Trademark Examining Attorney
Law Office 103
(571) 272-0619
michael.fitzsimons@uspto.gov
RESPONSE GUIDANCE