To: | eSilison Corporation (trademarks@fenwick.com) |
Subject: | U.S. Trademark Application Serial No. 88579897 - HBI - 22272-00070 |
Sent: | November 22, 2019 08:15:20 AM |
Sent As: | ecom108@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88579897
Mark: HBI
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Correspondence Address: |
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Applicant: eSilison Corporation
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Reference/Docket No. 22272-00070
Correspondence Email Address: |
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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.
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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Here, applicant has applied to register the mark HBI for use in connection with “Computer hardware; computer hardware for use in artificial intelligence applications; computer networking hardware; wireless communications equipment being computer hardware and digital signal processors (DSP); computer hardware incorporating integrated circuits; integrated circuits; computer chips; semiconductors; integrated circuit modules; integrated circuit components; integrated circuits and integrated circuit components cores for use in artificial intelligence applications, computer networking hardware, wireless communications and wireless communication equipment, and digital signal processors (DSP)” in International Class 9.
A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if:
(1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording;
(2) the specific wording is merely descriptive of applicant’s goods and/or services; and
(3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods will recognize it as the equivalent of the merely descriptive wording it represents.
TMEP §1209.03(h); see In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)).
In the present case, the attached evidence from applicant’s website shows that applicant’s mark “HBI” is an acronym for the wording “high bandwidth interconnect” Further, the attached evidence from Meritec, InfiniBand, and Nvidia shows that this wording is merely descriptive of a feature or characteristic of applicant’s goods because a “high bandwidth interconnect” is a type of computer hardware.
Lastly, a relevant consumer viewing applicant’s mark in connection with the identified goods would recognize it as the equivalent of the descriptive wording it represents because, as evidenced by applicant’s website, as well as DO Supply Inc., the acronym “HBI” is used within the technology industry to mean “high bandwidth interconnect”.
In view of the above, the applied-for mark is merely descriptive of the characteristics and purpose of the applicant’s goods, and therefore, registration is refused under Trademark Act Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. Applicant must address the following requirement.
REQUEST FOR INFORMATION ABOUT MARK
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods 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 feature new technology and information regarding competing goods is not available, applicant must provide a detailed factual description of the goods. Factual information about the goods must make clear how they operate, 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: Does applicant use “HBI” as an acronym for “high bandwidth interconnect”? Does applicant provide “high bandwidth interconnects”?
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.
Applicant should note the following advisory.
ADVISORY: CHANGE OF ENTITY INFORMATION
The application identifies the owner of the mark as “eSilison Corporation”. Based on applicant’s address and prior registrations, this owner name may contain a typographical error.
Applications filed in the name of the wrong party cannot be cured by amendment or assignment. See 37 C.F.R. §2.71(d); TMEP §803.06. However, if the party applying to register the mark is, in fact, the owner of the mark, but there is a mistake in the manner in which the name of the applicant is set out in the application, the mistake may be corrected by amendment. U.S. Pioneer Elec. Corp. v. Evans Mktg., Inc., 183 USPQ 613 (Comm’r Pats. 1974). However, the application may not be amended to designate another entity as the applicant. 37 C.F.R. §2.71(d); TMEP §803.06.
In the present case, the initially-identified entity does not appear to have been in existence on the application filing date. In such cases, the application may be amended to correct the applicant’s name. See Accu Pers. Inc. v. Accustaff Inc., 38 USPQ2d 1443 (TTAB 1996) (holding application not void ab initio where corporation named as applicant technically did not exist on filing date, since four companies who later merged acted as a single commercial enterprise when filing the application); Argo & Co. v. Springer, 198 USPQ 626, 635 (TTAB 1978) (holding that application may be amended to name three individuals as joint applicants in place of an originally named corporate applicant which was never legally incorporated, because the individuals and non-existent corporation were found to be the same, single commercial enterprise); Pioneer Elec., 183 USPQ 613 (holding that applicant’s name may be corrected where the application was mistakenly filed in the name of a fictitious and non-existent party).
Accordingly, if applicant desires to amend its name, applicant must provide clarification on the record as follows:
eSilison Corporation did not exist as a legal entity on the application filing date.
RESPONSE GUIDELINES
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.
/Nathaniel Pettican/
Nathaniel Pettican
Examining Attorney
Law Office 108
(571) 272-1087
nathaniel.pettican@uspto.gov
RESPONSE GUIDANCE