To: | Anderson Zurmuehlen & Co., P.C. (rgriffin@crowleyfleck.com) |
Subject: | U.S. Trademark Application Serial No. 88472490 - CLOUD - 011314-012 |
Sent: | August 15, 2019 01:52:21 PM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88472490
Mark: CLOUD
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Correspondence Address:
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Applicant: Anderson Zurmuehlen & Co., P.C.
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Reference/Docket No. 011314-012
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 15, 2019
INTRODUCTION
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).
THIS PARTIAL REFUSAL APPLIES TO CLASS 35 ONLY
Specifically, much of the specimen advertises cloud-based desktops and related technical or IT support. There is no connection of the mark to business services in class 35, or otherwise providing virtual office support staff services for others. Office support staff services in class 35 generally entail clerical or administrative functions that support a business; this type of activity does not seem apparent in applicant’s specimen.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use 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).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
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), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Please see the following requirement.
In this case, applicant must disclaim all the wording in the mark (i.e., CLOUD) 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).
The attached evidence from the American Heritage Dictionary shows this wording means a collection of data and services available through the internet. Further, this wording is commonly used in connection with similar services to mean services that are provided remotely via the internet. See attached pages from Amazon, Paperspace, and Windows. Thus, the wording merely describes applicant’s services because applicant provides cloud services and related supporting services.
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.
This requirement applies to class 42 Only
The wording “administering” databases and virtual computing environments is indefinite because the nature of the activity or services is unclear (e.g., maintenance, technical support services, technical support services in the nature of installation, administration, and troubleshooting of web and database applications, etc.)
For its “ASP” hosting services with respect to databases, applicant must specify the type or nature of the services being provided (e.g., database design and development, electronic storage services for archiving databases, maintenance of on-line databases, rental of a database server to third parties, etc.)
Applicant must specify the type or nature of its services for “cloud-based network services providing network connectivity and management, security, continuity and productivity enhancements” (e.g., technical support services, computer network design for others, computer security services, namely, restricting unauthorized access to {indicate, e.g., hard drives, computer networks, websites, etc.}, computer network configuration services)
Applicant must further specify the type and nature of its desktop-as-a-service and provision of virtual servers because the type or nature of the services are unclear.
With respect to its consulting and information services, it is suggested to clarify it is technology or technological in nature as it may otherwise be overly broad (e.g., consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments is in class 37, software licensing consultation is in class 45, etc.)
Applicant may adopt the following, if accurate:
Class 35: [no changes required]
Class 42: administering and maintaining databases and virtual computing environments for others, namely, development, updating and maintenance of software and database systems and providing virtual computer systems and virtual computer environments through cloud computing; application service provider (ASP), namely, hosting computer software applications and maintenance of on-line databases of others; cloud computing featuring software for use in providing virtual computer environments for software-as-a-service (SaaS), infrastructure-as-a-service (IaaS), platform-as-a-service (PaaS) and desktop-as-a-service (DaaS) functions; cloud hosting of electronic databases and virtual computing environments, namely, namely, cloud hosting provider services; cloud-based network services providing network connectivity and management, security, continuity and productivity enhancements, namely, network analysis, computer network design, wireless engineering, virtualization and computer project management; Cloud computing featuring software for providing desktop-as-a-service (DaaS) and virtual servers to others; Technology consulting and providing technological information in the fields of information technology, cloud computing, web services, software, software-as-a-service (SaaS), data processing and analytics, data storage, data warehousing, data archiving, data and information security, networking, mobile computing, and the Internet of Things (IoT); hosting the software, websites and other computer applications of others on a virtual private server; providing virtual computer systems and virtual computer environments through cloud computing; software-as-a-service (SaaS), infrastructure-as-a-service (IaaS), platform-as-a-service (PaaS) and desktop-as-a-service (DaaS) featuring computer software for managing virtual desktop environments, data storage and backup, database management, cloud computing, accounting and bookkeeping, data protection and security, monitoring cloud and application performance, cloud infrastructure management and automation, virtualization, networking, user authentication, Software Defined Networking (SDN), remote access, remote support, data sharing, and data, desktop and application streaming
Multiple-Class Application Advisory. Please note, if applicant includes additional classes in response to this requirement, applicant must also comply with the multiple-class application requirements provided herein.
ID Manual. 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
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 42 only; applicant must provide a specimen for class 35 and any other added class(es). See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The following description is suggested, if accurate:
The mark consists of a partial circle with an opening at the top, in which a vertical line is positioned so that it is partially inside and partially outside the circle, to the right of which appears the stylized term “CLOUD”.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/Jeane Yoo/
Examining Attorney
Law Office 120
(571) 272-5021
Jeane.Yoo@uspto.gov
RESPONSE GUIDANCE