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 21, 2019

 

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.  

 

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, 2.65(a); TMEP §§711, 718.03.

 

 

Summary of Issues Applicant Must Address

 

(1)   Refusal under Trademark Act Section 2(e)(1) – Merely Descriptive Mark;

(2)   Requirement to Provide Information About Goods and Services; and

(3)   Requirement to Amend Identification of Goods and Services (Class 9 only)

No Conflicting Marks

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

However, the applicant must respond to the following refusal.

Refusal - Merely Descriptive

Registration is refused because the applied-for mark merely describes a feature and characteristic 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.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and services.  TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

Furthermore, the determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and services, 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). 

“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).

Rather, the question is “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012).

In this case, the proposed mark SCHOOL CLOUD merely describes computers, computer hardware, computer peripherals, computer software and IT consulting services all relating to cloud computing (i.e., the sharing, management, processing, delivery, transmission and storage of data on computer servers accessible through the Internet) for educational institutions and teachers and students associated therewith. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

The terms “School” and “Cloud” mean “an institution for the teaching of children”, “college”, “university”, “an establishment offering specialized instruction”, “the process of teaching or learning especially at a school” and/or “a school building, its teachers and students” and “the computers and connections that support cloud computing” and “a network of remote servers hosted on the Internet and used to store, manage, and process data in place of local servers or personal computers”.

In addition, the wording “Cloud Computing” refers to “the delivery of shared computing resources over a network in a manner that makes accessing and configuring those resources convenient and largely independent of the use of a required location, device, and the like”.  See the attached dictionary definitions.

For purposes of evaluating a trademark, material obtained from the Internet is accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

Furthermore, as noted by Section 1402.01 of the Trademark Manual of Examining Procedure, “[t]he identification [of goods] should set forth common names, using terminology that is generally understood” and “should be understandable to the average person and should not require an in-depth knowledge of the relevant field.” Therefore, inasmuch as the description of goods identifies “computer software for use in the field of accessing, browsing and using worldwide global communications networks, wide area networks and local area networks” and “computer software for use in the field of education, namely, software which enables teachers and students to utilize teaching resources”, there is no doubt that the wording “SCHOOL CLOUD” in the applied-for mark is descriptive in relation to applicant’s goods.

Finally, the attached Internet printout from applicant’s website indicates that the applied-for mark is used with “[the provision of] access to educational materials and apps to students, teachers and adult learners in rural and poor communities around the world” and “a hybrid cloud appliance, meaning it acts as both an advanced wireless router and state-of-the-art file and content server” while also noting that “[s]chools without Internet access can simply install an HP School Cloud, turn it on, and let students dive into millions of e-textbooks and thousands of lessons on reading, science, mathematics, and more.”  [Emphasis added].

Material obtained from applicant’s website is acceptable as competent evidence.  See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1302-03 (TTAB 2006); TBMP §1208.03; TMEP §710.01(b).

Based on the foregoing remarks, registration must be refused under Trademark Act Section 2(e)(1).

Application to Supplemental Register Not Permitted Until Allegation of Use is Filed

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

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 refusal, applicant must also respond to the requirements set forth below.

Information Request

If applicant amends the present application to the Supplemental Register, it may disregard the following requirement.

Due to the descriptive nature of the applied-for mark, applicant must provide the following information regarding the goods and services and wording appearing in the mark:

(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and services. Merely stating that information about the goods and services is available on applicant’s website is insufficient to make the information of record.

If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product and services will differ. If the goods and services feature new technology and information regarding competing goods and services is not available, applicant must provide a detailed factual description of the goods and services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and

(2) Applicant must respond to the following questions:

A. Will the identified goods and services be used by schools?

B.  Can the identified goods and services be used by schools?

C.  Will the identified goods and services relate to cloud computing? If so, how?

D.  Can the identified goods and services relate to cloud computing? If so, how?

See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).

Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.

Identification of Goods and Services

The following requirement only applies to Class 9.

The identification for “software” in International Class 9 is indefinite and too broad and must be clarified to specify whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  In addition, applicant must further clarify the purpose or function of the software, as noted below.  See TMEP §§1402.03(d), 1402.11(a)(xii). 

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 applicant may adopt any or all of the following descriptions, if accurate:  

“Computers; computer hardware; computer peripherals; downloadable cloud computing  software for accessing, web browsing and searching data on worldwide global communications networks, wide area networks and local area networks; downloadable cloud computing  software for use in the field of education, namely, downloadable cloud computing software for enabling teachers and students to access educational teaching resources on worldwide global communications networks, wide area networks and local area networks”, in International Class 9; and/or

“Consulting in the field of information technology; providing temporary use of on-line non-downloadable cloud computing software for accessing, web browsing and searching data on worldwide global communications networks, wide area networks and local area networks; providing temporary use of on-line non-downloadable cloud computing software for enabling teachers and students to access educational teaching resources on worldwide global communications networks, wide area networks and local area networks”, in International Class 42.

TMEP §1402.11.

For assistance with identifying and classifying goods and services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Furthermore, any goods and services deleted by amendment may not be reinserted at a later point in prosecution.  TMEP §1402.01(e).

Disclaimer Advisory

Applicant is advised that, if the application is amended to seek registration on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, applicant will be required to disclaim “CLOUD” because this word is generic in the context of applicant’s goods and services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b). 

The following is the standardized format for a disclaimer: 

No claim is made to the exclusive right to use “CLOUD” apart from the mark as shown. 

TMEP §1213.08(a)(i).

Miscellaneous

If applicant’s attorney has questions about this application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

Advisory Regarding E-mail Communications

If applicant’s attorney has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

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

 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@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 21, 2019 for

U.S. Trademark Application Serial No. 88584394

 

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. 

 

 

/David Yontef/

Trademark Examining Attorney

Law Office 118

(571) 272-8274

david.yontef@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 21, 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.”