To: | Plews, Inc. (patents@batechlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88592968 - EDELMANN ANALYTICS - 221.295 |
Sent: | September 16, 2019 09:03:18 AM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88592968
Mark: EDELMANN ANALYTICS
|
|
Correspondence Address: BAY AREA TECHNOLOGY LAW GROUP PC 2171 E. FRANCISCO BLVD. SUITE L |
|
Applicant: Plews, Inc.
|
|
Reference/Docket No. 221.295
Correspondence Email Address: |
|
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 16, 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.
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).
IDENTIFICATION OF GOODS
Applicant may adopt the following wording, if accurate:
“Downloadable software program for use on mobile phones for inventory and distribution of power steering repair products” in International Class 9
“Providing temporary use of on-line non-downloadable software for use on mobile phones for inventory and distribution of power steering repair products” in International Class 42
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.
DISCLAIMER
In this case, applicant must disclaim the wording “ANALYTICS” 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).
Please see the attached evidence from http://www.merriam-webster.com/dictionary/analytics defining “analytics” as “the method of logical analysis.”
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ANALYTICS” 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.
How to respond. Click to file a response to this nonfinal Office action
/Khouri, Sani/
Trademark Examining Attorney
Law Office 110
United States Patent and Trademark Office
(571) 272-5884
sani.khouri@uspto.gov
RESPONSE GUIDANCE