To: | Veridium IP Limited (tmdocket@leasonellis.com) |
Subject: | U.S. Trademark Application Serial No. 88460896 - TRUSTED DIGITAL IDENTITY - 10141/ |
Sent: | September 03, 2019 03:11:27 PM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88460896
Mark: TRUSTED DIGITAL IDENTITY
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Correspondence Address:
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Applicant: Veridium IP Limited
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Reference/Docket No. 10141/
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: September 03, 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.
How to respond. Click to file a response to this nonfinal Office action
SEARCH CLAUSE
PRIOR FILED PENDING 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.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS
- Section 2(e)(1) Refusal – Merely Descriptive
o Information Requirement
- Identification of Goods in IC 009
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
The applicant has applied to register the mark TRUSTED DIGITAL IDENTITY for:
IC 009: Downloadable computer software and downloadable mobile applications for storing biometric data, converting biometric data into passwords and login codes, for authentication and identification of persons using biometric information and recognition, for authentication or identification purposes by means of storage of biometric features, for security and access control to websites; downloadable computer software and downloadable mobile applications for storing biometric data, converting biometric data into passwords and login codes, for authentication and identification of persons using biometric information and recognition, for authentication or identification purposes by means of storage of biometric features, for security and access control to websites; downloadable computer software development tools; downloadable mobile application software development kits, namely, computer software development tools
IC 042: Software design and development; computer software consulting services
The attached evidence from ComputerLanguage.Com defines the term TRUST as “a computer system that is secure. http://www.computerlanguage.com/results.php?definition=trust. The term
DIGITAL is defined as “Data in binary form.” The attached evidence from Merriam-Webster.Com defines the term IDENTITY as “the distinguishing character or personality of an individual.” http://www.merriam-webster.com/dictionary/identity. The attached evidence from TECHOPEDIA defines DIGITAL IDENTITY as “A digital identity is an online or networked identity adopted or claimed in cyberspace by an individual, organization or electronic device. These users may also project more than one digital identity through multiple communities. In terms of digital identity management, key areas of concern are security and privacy.” http://www.techopedia.com/definition/23915/digital-identity. In the instant case, the function of the identified software is for storing biometric data, converting biometric data into passwords and login codes, for authentication and identification of persons for security and access control to websites and the software design and consulting services appear to be in relation to secure digital identification.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or 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 goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, the purpose and function of the software and software services is trusted/secure digital authentication of identities and trusted/secure access to websites.
Please note that “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
Accordingly, registration is refused under Section 2(e)(1) of the Trademark Act.
INFORMATION REQUIREMENT
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(3) Applicant must respond to the following questions: Are the applicant’s goods used for secure digital identification? Are the applicant’s software development tools used for secure digital identification? Are the applicant’s software design, development and consultation services in the field of or related to secure digital identification? Do applicant’s competitors use “trusted” and/or “digital identity” to advertise similar goods and/or services? Who is the typical consumer of applicant’s goods and/or services?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
IDENTIFICATION OF GOODS IN IC 009
Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 009 for “Downloadable computer software and downloadable mobile applications for storing biometric data, converting biometric data into passwords and login codes, for authentication and identification of persons using biometric information and recognition, for authentication or identification purposes by means of storage of biometric features, for security and access control to websites.” See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Applicant may adopt the following identification, if accurate:
Downloadable computer software and downloadable mobile applications for storing biometric data, converting biometric data into passwords and login codes, for authentication and identification of persons using biometric information and recognition, for authentication or identification purposes by means of storage of biometric features, for security and access control to websites; Downloadable computer software development tools; Downloadable mobile application software development kits, namely, downloadable computer software development tools
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.
ASSISTANCE
/AKhan/
Asmat Khan
Trademark Examining Attorney
Law Office 114
(571)-272-9453
asmat.khan@uspto.gov
RESPONSE GUIDANCE