To: | TOOLBOX TVE, LLC (rperez@brickellip.com) |
Subject: | U.S. Trademark Application Serial No. 88411557 - CLOUD MIRROR - N/A |
Sent: | July 20, 2019 03:34:04 PM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88411557
Mark: CLOUD MIRROR
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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
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).
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
Class 038
The wording "Provide access to cached data, text, images and other visual works, software, files, hypertext markup language source, web pages, information, documents, music and other audio works, and video and other audiovisual works via video content from servers and infrastructure installed near the end users" is unacceptable as indefinite because applicant must specify that the services involve the provision of user access to servers, networks, and databases as the wording "installed infrastructure installed near the end users" is ambiguous. Additionally, applicant must amend the identification to clarify that applicant is providing access to servers and/or networks featuring various types of content as opposed to providing access to content that may emanate from servers and infrastructure installed near end users. See id. See suggested amendment below.
Class 042
The wording "Hosting of third party web content, software applications and web sites" is unacceptable as indefinite because applicant must specify the purpose and function of the hosted software applications, and, if field- or content-specific, applicant must also specify the field-specific or content-specific field of use. See id. See suggested amendment below.
The wording "delivery, transmission, caching, streaming, hosting and storing of data, text, images and other visual works, software, files, hypertext markup language source, web pages, information, documents, music and other audio works, and video and other audiovisual works" is unacceptable as indefinite because applicant must specify that the services are provided in the context of online non-downloadable software services. See id. See suggested amendment below.
SUGGESTED AMENDMENTS
Applicant may adopt the following identification, if accurate (note suggested amendments in bold):
Class 038
Providing user access to servers, networks, and databases featuring cached data, text, images, visual works, software, files, hypertext markup language source, web pages, information, documents, music, audio works, video, and audiovisual works
Class 042
Hosting of third party web content, websites and software applications for ______________{specify purpose or function(s) of hosted software applications e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the field of use} ; providing online non-downloadable software for the delivery, transmission, caching, streaming, hosting and storing of data, text, images and other visual works, software, files, hypertext markup language source, web pages, information, documents, music and other audio works, and video and other audiovisual works
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.
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