To: | Nutanix, Inc. (trademarkdocket@venable.com) |
Subject: | U.S. Trademark Application Serial No. 88474593 - FRAME - 505267 |
Sent: | September 06, 2019 11:09:54 AM |
Sent As: | ecom124@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88474593
Mark: FRAME
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Correspondence Address:
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Applicant: Nutanix, Inc.
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Reference/Docket No. 505267
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 06, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search
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).
Trademark Act Section 2(e)(1) Refusal – Descriptive
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant’s mark is FRAME in standard character form for downloadable software and cloud-based software for deploying, operating, managing desktop-as-a-service platforms. Webopedia defines “Desktop-as-service (DaaS) as “a form of virtual desktop infrastructure (VDI) in which the VDI is outsourced and handled by a third party. Also called hosted desktop services, desktop-as-a-service is frequently delivered as a cloud service along with the apps needed for use on the virtual desktop. A Desktop-as-a-service provider typically handles storing, securing and backing up a user's data, as well as upgrades for the DaaS service and supported applications.”
The attached reference evidence shows that word “FRAME” is a term of art in the field of software engineering for purposes of building custom software. Further, an entry from the American Heritage Dictionary defines “FRAME” as meaning in part “computers: a rectangular area in which text or graphics can be shown, especially one of several rectangular areas on a web page displaying different documents simultaneously.” Attached screenshots from the applicant’s website show rectangular areas displaying text and graphics. Consequently, the wording “FRAME” in the mark may describe a feature, characteristic, or attribute of applicant’s downloadable and non-downloadable online software goods and cloud-computing services. Consequently, registration of applicant’s mark must be refused on the Principal Register.
No Filing Basis Indicated
Applicant has not specified a filing basis in the application. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806. Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.
An applicant may add one or more of the following four bases to an application after filing:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or
(4) A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).
Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services. 37 C.F.R. §2.34(b); TMEP §806.02(b).
For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
Identification of Services Unacceptable – CLASS 42 ONLY
Class 9: “Downloadable computer software for deploying, operating and managing a desktop-as-a-service platform for enterprises and the respective enterprise's end users; downloadable computer software for an enterprise desktop-as-a-service platform that is managed by a cloud software-as-a-service controller”
Class 42: “Providing online, non-downloadable computer software for building, deploying, operating, and managing a desktop-as-a-service platform for cloud-based applications and desktops for enterprises and end users; providing cloud computing services, namely, providing a cloud-based software desktop-as-a-service platform for building, deploying, operating, and managing cloud-based applications and desktops for enterprises and end users; providing online, non-downloadable computer software for a cloud-based desktop-as-a-service platform for others; providing cloud-computing services featuring software for use as desktop-as-a-service platform for others”
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.
Unsigned Application
Please note: the suggested verification below is for both a Section 1(a) and Section 1(b) basis. The applicant may adjust accordingly in its response.
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
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.
Assistance
How to respond. Click to file a response to this nonfinal Office action
/Jordan A. Baker/
Trademark Examining Attorney
Law Office 124
571-272-8844
jordan.baker@uspto.gov
RESPONSE GUIDANCE