Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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:  March 27, 2020

 

 

This Office action is supplemental to and supersedes the previous Office action issued on September 12, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal:  partial Trademark Act Section 2(e)1 refusal with regard to Class 9, and Specimen refusal .  See TMEP §§706, 711.02. 

 

 

PREVIOUS ACTIONS:  In a previous Office action dated September 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)1 finding the mark merely descriptive.  In addition, applicant was required to satisfy the following requirements:  provide information about wording in the mark, amend the identification of goods and services and specify entity designation.

 

 

Based on applicant’s February 12, 2020 response, the trademark examining attorney notes that the following requirement has been satisfied:  requirements to provide information about significance of wording in the mark.  See TMEP §713.02. 

 

 

Additionally, the office is in receipt of applicant’s Amendment to Allege Use also dated February 12, 2020.  The amendment meets the minimum filing requirements and is duly accepted.

 

 

Further, although, requests amendment to the Supplemental register, amendment is not appropriate at this time for the reasons set forth below.  Additionally, although applicant amended the identification of goods and services, the identification requires further clarification.  Moreover, applicant has not specified its entity designation.  Thus, the Trademark Act Section 2(e)1 Refusal and  requirements to amend the identification of goods and services and specify entity designation are continued and maintained, and the trademark examining attorney issues a New Non-final Office action as set forth below.

 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

•        Partial Trademark Act Section 2(e)1 Refusal – Generic Refusal with Regard to International Class 9

•        Specimen Refusal – Specimen Does Not Show Mark in Use in Commerce with Goods and Services in Application

•        Requirement to Amend Identification of Goods and Services Continued and Maintained

•        Requirement to Specify Entity Designation Continued and Maintained

 

 

Applicant must respond to all issues raised in this Office action and the previous September 12, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

PARTIAL TRADEMARK ACT SECTION 2(e)1 REFUSAL – GENERIC REFUSAL WITH REGARD TO INTERNATIONAL CLASS 9

 

The stated refusal refers to International Class 9 only and does not bar registration in the other class.

 

 

Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s goods and services.  15 U.S.C. §1052(e)(1).  In response, applicant requested amendment to the Supplemental Register. 

 

 

Registration now is refused on the Supplemental Register because the applied-for mark is generic and thus incapable of distinguishing applicant’s goods in Class 9.  Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq.

 

 

A term is generic if the relevant public understands the term as referring to the category or genus of the goods and/or services in question.  In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); see TMEP §1209.01(c).  “[A] term [also] is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole.”  Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358, 1367-68, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018) (quoting In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“the term ‘pizzeria’ would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants”)). 

 

 

Generic terms do not meet the statutory definition of a trademark because they are incapable of indicating a particular source of goods and/or services and thus cannot be registered.  In re Cordua Rests., Inc., 823 F.3d at 599, 118 USPQ2d at 1634 (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.”)); TMEP §1209.01(c). 

 

 

The test for determining whether an applied-for mark is generic is its primary significance to the relevant public.  Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553-54 (Fed. Cir. 1991) (citing In re Montrachet S.A., 878 F.2d 375, 376, 11 USPQ2d 1393-94 (Fed. Cir. 1989)).  Making this determination involves a two-step inquiry:

 

(1)       What is the genus of goods and/or services at issue?

 

(2)       Does the relevant public understand the designation primarily to refer to that genus of goods and/or services?

 

In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)); TMEP §1209.01(c)(i). 

 

 

Regarding the first part of the inquiry, the genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services.  See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1552); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).

 

 

In this case, the application identifies the goods as “sensor units” that include “sensor processing and electronic memory”, which adequately defines the genus at issue. 

 

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified goods and/or services.  The Loglan Inst. Inc. v. The Logical Language Grp., 962 F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises ordinary consumers who purchase applicant’s goods because there are no restrictions or limitations to the channels of trade or classes of consumers.  The previously attached evidence from Acronym Attic, Dspace, IEEE and C4i Systems shows that applicant’s mark “SPU” commonly is used as an acronym for the wording “Sensor Processing Unit.”  Moreover, in the specimen of record, applicant uses the term SPU in a non-proprietary manner when referencing the goods. Furthermore, in applicant’s response to the Request for Information, applicant indicates that “the origin of the idea for the name was from “sensor processing unit”.   Thus the relevant public would understand the designation SPU to refer primarily to that genus of goods because SPU is an a acronym for the wording Sensor Processing Unit.

 

 

Any term that the relevant public understands to refer to a particular genus of goods and/or services is generic; thus there can be more than one generic term for a particular genus.  In re 1800Mattress.com IP, LLC, 586 F. 3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1464 (TTAB 2015).

 

 

In this case, The trademark examining attorney has established by clear and convincing evidence that the applied-for mark is generic for applicant’s goods in International Class 9; thus the USPTO’s evidentiary burden has been met.  In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016); see also In re Hotels.com LP, 573 F.3d 1300, 1302, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009) (USPTO “must demonstrate generic status by clear evidence”) (citing Am–Pro Protective Agency, Inc. v. United States, 281 F.3d 1234, 1239-40 (Fed. Cir. 2002) (explaining that “clear evidence” is equivalent to “clear and convincing evidence”)); TMEP §1209.01(c)(i). 

 

 

 

Because the applied-for mark is generic for applicant’s goods in International Class 9, applicant’s mark must be refused under Trademark Act Section 2(e)(1) with regard to the specified goods.

 

 

REFUSAL IN THE ALTERNATIVE – APPLIED-FOR MARK IS MERELY DESCRIPTIVE

 

In the alternative, if the applied-for mark is ultimately determined not to be generic by an appellate tribunal, then the refusal of registration based on the applied-for mark being merely descriptive of applicant’s goods in International Class 9 is maintained and continued for the reasons specified in the previous Office action.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

 

 

ADVISORY – PARTIAL REFUSAL RESPONSE OPTIONS

 

Applicant may respond to the stated refusals by submitting evidence and arguments against the refusals.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the class to which the refusal pertains, that is, Class 9; or

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

 

 

Applicant should note the following additional ground for refusal.

 

 

SPECIMEN REFUSAL – SPECIMEN DOES NOT SHOW MARK IN USE IN COMMERCE WITH GOODS AND SERVICES IN APPLICATION

 

 

Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods and services specified in International Classes 9 and 35.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). 

 

 

Specifically, a screenshot of applicant’s website has been submitted as the specimen of record.  However, the specimen appears to be mere advertising for applicant’s goods in Class 9.  Advertising is not acceptable as a specimen for goods.  See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).  Advertising includes online advertising banners appearing on search-engine results pages or in social media, advertising circulars and brochures, price lists, and business cards.  See TMEP §904.04(b). 

 

Furthermore, the specimen for Class 35 does not provide enough context for a purchaser to determine whether applicant actually provides business services related to marketing of sensor units for commercial use or any of the other services listed as provided under the applied-for mark.  The specimen must show the mark used in a manner that creates in the minds of potential consumers a direct association between the mark and the services. In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973) (“The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor.”).  Because the specimen fails to associate the mark with the applied-for services such that the mark serves as a source identifier for those particular services, the specimen must be refused.  TMEP §§1301.04(f)(ii).

 

 

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

 

 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

If applicant responds to the refusals, applicant must also respond to the requirements set forth below that are continued and maintained.

 

 

REQUIREMENT TO AMEND IDENTIFICATION OF GOODS AND SERVICES CONTINUED AND MAINTAINED

 

Applicant previously was required to amend the identification of goods and services because it was indefinite.  Although applicant amended the identification, specific wording requires additional clarification.  The USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).  Therefore, applicant must amend the identification using specific, definite, clear, accurate, and concise language.  See TMEP §1402.01.

 

As advised in the previous action, applicant may amend the identification 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.  Therefore, applicant’s amendment must be consistent with, and be within the scope of, the wording in the initial identification.

 

Applicant may adopt the following wording, if accurate (proposed amendments in bold):

 

International Class 9: sensor units comprised of sensors for commercial use, and also including a signal processor and electronic memory storage unit, sold as a unit to be installed in vehicles, security cameras, robots, drones and other machines for navigation, collision avoidance, anomaly detection, perception and classification of images

 

International Class 35: business services related to the marketing of, advertising of, promotion of, and consultation regarding the use of sensor units for commercial use comprised of a sensor, processor and memory storage unit sold as a unit

 

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

Applicant should note the following additional requirement that is continued and maintained.

 

REQUIREMENT TO SPECIFY ENTITY DESIGNATION CONTINUED AND MAINTAINED

Applicant previously was required to specify its entity designation because the entity was omitted in the application.  However, applicant did not provide such specification in the response dated February 12, 2020.  As set forth in the previous action, applicant must specify applicant’s legal entity type; e.g., an individual, partnership, corporation, or joint venture.  See 37 C.F.R. §2.32(a)(3)(i); TMEP §§803.03 et seq.

 

 

 

If applicant is an individual, applicant must so indicate and specify his or her national citizenship.  37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.

 

 If applicant is a corporation, applicant must specify the U.S. state or foreign country under which it is incorporated.  37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).

 

If applicant is an association, applicant must specify the U.S. state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated.  37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).

 

 

If applicant is a partnership, applicant must specify the U.S. state or foreign country under whose laws the partnership is organized.  37 C.F.R. §2.32(a)(ii); TMEP §803.03(b).  In addition, for a U.S. partnership, applicant must list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners.  37 C.F.R. §2.32(a)(iii).  For foreign partnerships, the names and citizenships of the general partners are not required.  See TMEP §803.03(b).

 

 

If applicant is a joint venture, applicant must specify the U.S. state or foreign country under whose laws the joint venture is organized.  37 C.F.R. §2.32(a)(ii); TMEP §803.03(b).  In addition, for a U.S. joint venture, applicant must list the names, legal entities, and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture.  37 C.F.R. §2.32(a)(iv); TMEP §803.03(b).  For foreign joint ventures, the names and citizenships of the active members are not required.  TMEP §803.03(b).

 

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

 

RESPONSE GUIDELINES 

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 27, 2020 for

U.S. Trademark Application Serial No. 88472399

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Oreoluwa Alao/

Oreoluwa Alao

Examining Attorney

Law Office 108

(571) 270-7210

oreoluwa.alao@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 27, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”