To: | Securus Technologies, Inc. (docketing@fogartyip.com) |
Subject: | U.S. Trademark Application Serial No. 88601028 - ALLIANCE AGAINST TRAFFICKING - SEC-K169US |
Sent: | December 12, 2019 05:49:09 PM |
Sent As: | ecom103@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88601028
Mark: ALLIANCE AGAINST TRAFFICKING
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Correspondence Address:
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Applicant: Securus Technologies, Inc.
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Reference/Docket No. SEC-K169US
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
Issue date: December 12, 2019
The USPTO must receive applicant’s response to this letter within six months of the issue date above 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.
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).
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes the purpose of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
“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).
Here, applicant seeks registration of ALLIANCE AGAINST TRAFFICKING (a standard character mark) for “Providing intelligence and information in the fields of law enforcement and correctional services to local, state, and federal law enforcement agencies based on communications into and out of controlled-environment facilities; Providing intelligence and information to local, state, and federal law enforcement agencies relating to human and sex trafficking,” in International Class 45. The attached evidence from the Merriam-Webster dictionary website shows that “alliance” means “an association to further the common interests of the members.” Further, the attached evidence from the Truckers Against Trafficking, Coalition Against Trafficking In Women, and BSR websites shows that the wording “against trafficking” is commonly used to mean an opposition to human and sex trafficking.” This attached evidence shows that the wording in the applied-for mark means an association that furthers its members common interest in opposing human and sex trafficking. Applicant’s services are broadly identified and include the provision of intelligence and information to an association of local, state, and federal law enforcement agencies for the purpose of furthering the common interest of its members in opposing human and sex trafficking. Therefore, the wording in the applied-for mark merely describes the purpose of applicant’s services.
Based on the foregoing, registration of the applied-for mark is refused registration under Trademark Act Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
ADVISORY – SUPPLEMENTAL REGISTER
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.
INFORMATION REQUEST
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the services 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 services of the same type, explaining how its own services will differ. If the services feature new technology and information regarding competing services is not available, applicant must provide a detailed factual description of the services. Factual information about the services must make clear how they are rendered, 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:
a) What is the nature of the local, state, and federal law enforcement agencies to which applicant will be providing intelligence and information?
b) Will the local, state, and federal law enforcement agencies to which applicant will be providing intelligence and information be part of an association, group, or collective? If so, provide a detailed description of such association, group, or collective.
c) Will applicant be providing intelligence and information to an association, group, or collective of which it will be a member? If so, provide a detailed description of such association, group, or collective.
d) Do applicant’s competitors use “Alliance Against Trafficking” to advertise similar services?
e) Who is the intended typical consumer of applicant’s services?
f) Where are applicant’s goods and/or services typically purchased (provide examples of online and brick-and-mortar store venues)?
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.
INDEFINITE IDENTIFICATION OF SERVICES
Specifically, the services identified as “providing intelligence and information in the fields of law enforcement and correctional services to local, state, and federal law enforcement agencies based on communications into and out of controlled-environment facilities” are indefinite because the nature of the “correctional services” intelligence and information being provided is unclear. The wording “correctional services” may refer to medical services in the nature of laser vision correction. If the referenced “correctional services” are in the nature of correctional penal services, such services are properly classified in International Class 45 and applicant may so specify.
Applicant may adopt the following wording, if accurate:
International Class 45 – Providing intelligence and information in the fields of law enforcement and correctional penal services to local, state, and federal law enforcement agencies based on communications into and out of controlled-environment facilities; Providing intelligence and information to local, state, and federal law enforcement agencies relating to human and sex trafficking
Applicant’s goods and/or 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/or services or add goods and/or 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/or 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/or services will further limit scope, and once goods and/or 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.
ADVISORY – RESPONSE ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action.
/Christopher M. Law/
Trademark Examining Attorney
Law Office 103
(571) 272-2913
christopher.law@uspto.gov
RESPONSE GUIDANCE