To: | FASOO. COM CO., LTD. (usptotm@lexipgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88452732 - FASOO DATA RADAR - STP20190040 |
Sent: | August 21, 2019 01:28:19 PM |
Sent As: | ecom117@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. 88452732
Mark: FASOO DATA RADAR
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Correspondence Address:
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Applicant: FASOO. COM CO., LTD.
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Reference/Docket No. STP20190040
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: August 21, 2019
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).
SUMMARY OF ISSUES
In this case, applicant must disclaim the wording “DATA” 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).
This wording appears in applicant’s identification of services. Further, the attached evidence from the American Heritage Dictionary shows this wording means “Statistics or other information represented in a form suitable for processing by computer.” Thus, the wording merely describes applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DATA” 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.
The USPTO requires such specificity 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).
The wording “computer software for creating searchable database” must also be clarified to specify the subject matter of the databases (e.g., information and data).
The wording “Computer software for database” must also be clarified to specify the database function (e.g., management).
Applicant may adopt the following wording, if accurate:
Class 9: Downloadable computer software for creating searchable databases of information and data; Computer operating programs, recorded; Downloadable software for ensuring the security of business {indicate with more specificity, e.g., network systems}; Computer operating programs, downloadable; Computer software applications, downloadable for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; Downloadable computer software programs for data synchronization; Downloadable computer software to automate data warehousing; Downloadable computer software for data processing; Downloadable computer software to enable searching of data; Downloadable computer software for database {specify function, e.g., management}; Downloadable software for use in database management; Downloadable computer programs for secured data management through unstructured data identification and classification; Recorded computer programs for secured data management through unstructured data identification and classification; Data carriers for computers having software recorded thereon for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; Downloadable computer software for application and database integration; Downloadable augmented reality software for use in mobile devices for integrating electronic data with real world environments for the purpose of {specify purpose of software, e.g., locating vehicles, creating maps, etc., and, if software is content- or field-specific, the content or field of use}; Downloadable computer software for creating searchable databases of information and data; Downloadable computer programs and software for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; Integrated software packages comprising downloadable computer software for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}
Class 42: Providing online non-downloadable computer software for creating searchable databases of information and data; Providing online non-downloadable software for ensuring the security of business {indicate with more specificity, e.g., network systems}; Providing online non-downloadable computer software programs for data synchronization; Providing online non-downloadable computer software to automate data warehousing; Providing online non-downloadable computer software for data processing; Providing online non-downloadable computer software to enable searching of data; Providing online non-downloadable computer software for database {specify function, e.g., management}; Providing online non-downloadable software for use in database management; Providing online non-downloadable computer programs for secured data management through unstructured data identification and classification; Providing online non-downloadable computer software for application and database integration; Providing online non-downloadable augmented reality software for use in mobile devices for integrating electronic data with real world environments for the purpose of {specify purpose of software, e.g., locating vehicles, creating maps, etc., and, if software is content- or field-specific, the content or field of use}; Providing online non-downloadable computer software for creating searchable databases of information and data; Providing online non-downloadable computer programs and software for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; Providing online non-downloadable integrated software packages comprising computer software for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
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
/Alina Morris/
Examining Attorney, Law Office 117
United States Patent and Trademark Office
571-272-2256
alina.morris@uspto.gov
RESPONSE GUIDANCE