To: | E2OPEN, LLC (trademark@leydig.com) |
Subject: | U.S. Trademark Application Serial No. 88415179 - CLOUD LOGISTICS - 743528 |
Sent: | July 17, 2019 06:25:29 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88415179
Mark: CLOUD LOGISTICS
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Correspondence Address: |
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Applicant: E2OPEN, LLC
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Reference/Docket No. 743528
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 17, 2019
SEARCH OF OFFICE’S DATABASE OF MARKS
SUMMARY OF ISSUES:
ADVISORY – PRIOR-FILED APPLICATION
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 mark in the referenced application. 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.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose and use of applicant’s 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 information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.” In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing 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)). The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).
Applicant seeks registration of “CLOUD LOGISTICS” for “Order fulfillment services for connecting product suppliers to a retailer's purchase order via ground, sea and air carriers, monitoring and tracking of package shipments to ensure on-time delivery for business purposes; transportation management solutions, namely, business management consultation regarding calculating the cost of shipments by adding the freight terms plus any shipment accessorials for payment to the shipment carrier for each shipment, and business management consultation regarding the receipt of electronic invoices from the shipment carriers and matching the invoices against the carrier contract for payment authorization; order fulfillment services for directing product suppliers to ship partial purchase orders based on a retailer's rules and then providing status updates on the order's manufacturing process; Supply chain management services for tracking shipments from product suppliers into warehouses and from warehouses to customers or company stores; transportation networking services, namely, providing on-line monitoring and tracking of package shipments for product suppliers, carriers, shippers, customers, and stores to ensure on-time delivery for business purposes, and providing commercial package shipment information updates online concerning the monitoring of commercial package shipments for business purposes, in the field of business, commerce and industry for product suppliers, carriers, shippers, customers, and stores” and “Providing online non-downloadable software in the field of transportation systems management.”
Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable. In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, the applicant’s services provide logistics solutions by means of cloud technology.
The attached dictionary definitions indicate the wording comprising the mark is defined as follows:
CLOUD:
LOGISTICS:
Here, the word “CLOUD” is merely descriptive of applicant’s services, because applicant provides online services, which are provided on the cloud. Additionally, the word “LOGISTICS” is merely descriptive of applicant’s services, because its services are in the nature of making arrangements within an organizations. Together, the wording “CLOUD LOGISTICS” merely refers to the organizational arrangement of logistics using network technology.
Further, the excerpt from the website MoreThanShipping.com discusses the advantages of cloud computing in general being used in the field of logistics:
Of course, there are pros and cons of cloud computing for the users. Key concerns that logisticians cite in relation to cloud computing include security, system reliability, privacy, and backup plans. On the other hand, companies that are strongly considering cloud solutions say ability to access from anywhere, bandwidth, capacity, and the fact that current supply chain management software providers are swiftly moving in that direction, are driving their decisions. http://www.morethanshipping.com/cloud-in-logistics/
Because the mark CLOUD LOGISTICS is merely descriptive of a purpose and use of the applicant’s services, registration must be refused on the Principal Register under Section 2(e)(1) of the Trademark Act.
ADVISORY – SUPPLEMENTAL REGISTER
CLARIFICATION OF IDENTIFICATION OF SERVICES REQUIRED
The wording “Providing online non-downloadable software in the field of transportation systems management” in the identification of goods is indefinite and must be clarified to specify the purpose or function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. If the software is content- or field-specific, applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant may substitute the following wording, if accurate:
International Class 035: [No amendment required]
International Class 042: Providing online non-downloadable software for ______ {specify the function of the programs, e.g., for use in database management, for use as spreadsheet, for word processing, etc.} in the field of transportation systems management
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
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06
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
/Peter Dang/
Examining Attorney
Law Office 121
(571) 270-1998
peter.dang@uspto.gov
RESPONSE GUIDANCE