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:  November 15, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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 THE ISSUES:

 

-       Section 2(e)(1) Merely Descriptive – Refusal

-       Supplemental Register – Advisory

-       Identification of the Goods and Services – Clarification Required

 

SECTION 2(e)(1) MERELY DESCRIPTIVE – REFUSAL

 

Registration is refused because the applied-for HOUSECALL PRO mark merely describes a purpose or function of Applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

Terms that describe the function or purpose of a product or service may be merely descriptive.  TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); 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, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).

 

Here, Applicant’s HOUSECALL PRO mark is merely descriptive of a purpose or function of Applicant’s goods and services. As demonstrated by the attached evidence, the wording HOUSECALL PRO is merely descriptive of Applicant’s goods and services because it immediately conveys to consumers that Applicant provides software goods and services and payment services for use in requesting professional home visits. See:

 

-       http://www.merriam-webster.com/dictionary/house%20call (defining “house call” as “a visit (as by a doctor or a repair person) to a home to provide a requested service”)

-       http://www.ahdictionary.com/word/search.html?q=PRO (defining “pro” as a “professional” or “expert in a field of endeavor”)

-       http://www.housecallpro.com/learn/what-is-field-service-management-software/ (Applicant’s own webpage: “The advent of field service management software has revolutionized the way businesses that make house calls operate. But not all FSM software was created equal, and not all platforms will be right for your business. If you’re searching for field service management software to bring your company into the 21st century, Housecall Pro could be exactly what you’re looking for. We offer three tiers of tools and services built specifically with businesses like yours in mind.”)

-       http://www.housecallpro.com/about/ (Applicant’s own website: “Our purpose is to help our Pros go from good to great. That's an ambitious idea driven by extraordinary humans. Together we do the work, we play hard. Housecall Pro is that rare company that gets to do work that truly matters.”)

-       http://www.ecoverdesolutions.com/maid-service-bethesda-md/ (third party describing their home services: “All you need to do is call us and schedule a house call, and we can show you what it truly means to be free of duties.”)

-       http://www.drynclean.com/the-worst-stains-for-any-carpet-and-why-you-need-help/ (third party describing their home services: “Call the professional Virginia Beach carpet cleaners” and “Call us today to schedule a house call.”)

 

Accordingly, the wording HOUSECALL PRO is merely descriptive of Applicant’s goods and services.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

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 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 services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services. As demonstrated by the discussion above, the individual components of Applicant’s mark are merely descriptive because the wording HOUSECALL PRO immediately conveys to consumers that Applicant provides goods and services for use in requesting professional or expert home visits.

 

Conclusion

 

Based on the evidence and analysis above, Applicant’s applied-for mark is merely descriptive and must be refused registration pursuant to Section 2(e)(1) of the Lanham Act.

 

Although Applicant's mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant should also note the advisory below.

 

SUPPLEMENTAL REGISTER – ADVISORY

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If Applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date Applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

IDENTIFICATION OF THE GOODS AND SERVICES – CLARIFICATION REQUIRED

 

Applicant’s current identification of the goods and services is not acceptable and requires clarification.

 

The identification for software in International Classes 009 and 042 must be amended to specify the purpose or function of the software more clearly.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). 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 remainder of the wording is acceptable, but Applicant is strongly encouraged to adopt the minor suggestions.

 

Suggested Identification

 

Applicant may substitute the following wording, if accurate: 

 

International Class 009: Downloadable software for managing businesses of home service professionals, namely, software for customers to connect and order services provided onsite by home service professionals; downloadable computer software for providing reviews of and information about home services professionals, for providing home service scheduling, for employee workflow management, for providing payment processing, for billing and bill payment services, for providing online booking of service calls, and for providing website development and maintenance tools for home service professionals; downloadable computer software, namely, an electronic platform for viewing and customizing home service requests; downloadable software for the purpose of tracking and managing real-time calendar availability of home service technicians and enabling booking of home service contractor appointments; downloadable software for enabling communication with home service professionals and homeowners via electronic means; downloadable computer application software for use by merchants for processing and managing payments, namely, credit card, debit card, bank credit card, smart card, and smart debit card transactions, via portable electronic devices

 

International Class 036: Payment processing of credit card and debit card payments; electronic funds transfer services; bill payment services

 

International Class 042: Software as a service (SAAS) services featuring software for managing businesses of home service professionals, namely, software for customers to connect and order services provided onsite by home service professionals; providing non-downloadable computer software for providing reviews of and information about home services professionals, for providing home service scheduling, for employee workflow management, for providing payment processing, for billing and bill payment services, for providing online booking, and for providing website development and maintenance tools for home service professionals; computer software consulting; website design consultancy; providing online non-downloadable software for management of field service businesses that perform maintenance and repair of the goods and services of others; non-downloadable computer software, namely, providing a web hosting electronic platform for viewing and customizing home service requests; providing online non-downloadable software for the purpose of tracking and managing real-time calendar availability of home service technicians and enabling booking of home service contractor appointments; providing online on-downloadable software for enabling communication with home service professionals and homeowners via electronic means; providing online non-downloadable computer application software for use by merchants for processing and managing payments, namely, credit card, debit card, bank credit card, smart card, and smart debit card transactions, via portable electronic devices

 

Amendment Guidelines

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, Applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted. 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.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about Applicant’s rights, the trademark examining attorney can provide Applicant with additional explanation about the refusal and requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

 

/Xheneta Ademi/

Xheneta Ademi

Examining Attorney

Law Office 122

571-272-7151

xheneta.ademi@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 November 15, 2019 for

U.S. Trademark Application Serial No. 88569098

 

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. 

 

 

/Xheneta Ademi/

Xheneta Ademi

Examining Attorney

Law Office 122

571-272-7151

xheneta.ademi@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 November 15, 2019, 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.”