Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 10, 2020

 

This Office Action is in response to applicant’s communication filed on June 10, 2020.

 

INTRODUCTION

 

The trademark examining attorney notes that the following requirement has been satisfied:

 

1. Request for Information – Response Required

 

See TMEP §§713.02, 714.04.

 

However, the refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).  In addition, the following requirement is also now made FINAL:

 

1. Amended Identification of Goods Required – FINAL Requirement

 

See 37 C.F.R. §2.63(b).

 

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

 

Registration was refused because the applied-for mark merely describes the nature, feature, characteristic, purpose, and/or function of applicant’s goods.  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.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (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)).

 

In the initial Office Action issued on December 22, 2019, examining attorney found applicant’s mark EDRONE, to be merely descriptive of the nature, feature, characteristic, purpose, and/or function of applicant’s goods, where the identified goods comprise electronic drones and parts or accessories thereof, or, an edrone.  To this point, examining attorney attached dictionary evidence to show the overall descriptive nature of the applied-for mark, when considered in connection with the identified goods.  See attached evidence in Office Action filed on December 22, 2019.

 

In applicant’s response to Office Action filed on June 10, 2020, applicant argues that the applied-for mark is not merely descriptive.  Specifically, applicant argues that the mark is not descriptive because (1) the identified goods in class 009 are not drones, and (2) the identified goods in class 012 are not typical drones.

 

Examining attorney respectfully disagrees with applicant’s arguments.

 

First, applicant’s argument that the mark is not descriptive because the identified goods in class 009 are not drones, is not persuasive.

 

A mark does not need to be merely descriptive of all the goods specified in an application.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012).  “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’”  In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).

 

In the present case, the applied-for mark is in fact merely descriptive of some of the identified goods, namely, applicant’s “autonomous delivery system…” in class 012, as well as other goods that are used with the delivery system, such as “portable landing pad” in class 009.  Further, in applicant’s response to the Request for Information in the Office issued on December 12, 2019, applicant advises that the delivery system is essentially advertised as a drone.  See statement in Response to Office Action filed on June 10, 2020 (“The eDRONE delivery system is advertised as including residential and commercial drone deliveries… [t]he pad system is used with Applicant's delivery system that includes a specific type of delivery drone…[a]pplicant's system includes a specialized drone device”).

 

Secondly, applicant’s argument that the identified goods in class 012 are not typical drones, is not convincing.

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

 

Here, the fact remains that the goods in class 012 comprise a drone delivery system.  Therefore, whether applicant’s drone delivery system is typical or not, is irrelevant, as the average purchaser of these goods will likely understand the significance of the goods to be a drone delivery system and accessories therefore, namely, a landing pad for the drone delivery system.  See, e.g., attached from Fehr & Peers, Flirtey, Flytrex, IEEE, and UPS (all showing drones used as delivery systems), and Cgear, DJI, and Fstop Labs (all showing landing pads for use with drones).

 

Also, the attached Internet evidence from The American Heritage Dictionary, Good Work Guide, and Insider, all show that “E” within the relevant marketplace is used to refer to “electric” or “electronic”.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, 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., In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).

 

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/or 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, namely, “E” and “DRONE”, and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.

 

Finally, the attached Internet evidence from Skycorp shows use of the wording EDRONE being used in the relevant marketplace in connection with goods similar to that of applicant’s goods, namely, drones and/or landing pads for drones.  See attached.

 

As such, the applied for mark, namely, EDRONE, is merely descriptive of the nature, feature, characteristic, purpose, and/or function of applicant’s goods, namely, an electric or electronic drone and parts or accessories thereof, or, an edrone.  Therefore, for the reasons discussed above, the refusal to register under Trademark Act Section 2(e)(1) is maintained and now made FINAL.

 

AMENDED IDENTIFICATION OF GOODS REQUIRED – FINAL REQUIREMENT

 

In the initial Office Action issued on December 22, 2019, applicant was advised that the identification of goods in International Class 009 is indefinite and must be clarified because the overall nature of the goods is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Further, applicant was advised that the identification for “[a]utonomous delivery systems” in International Class 012 is also indefinite and broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).  To these points, examining attorney provided an acceptable amended identification of goods to be adopted, if accurate.

 

In applicant’s Response to Office Action filed on June 10, 2020, applicant amended the identification of goods, however, it is still broad and/or indefinite and therefore, does not clearly and specifically indicate the nature of goods for which registration is sought.

 

Specifically, in International Class 009, applicant has not clarified the overall nature of the “portable landing pad” but rather, re-states that the goods are a “portable landing pad, namely, a portable folding landing pad…”.  This is not sufficient to clarify the overall nature of the goods and to ensure that the goods are properly classified.

 

Similarly in International Class 012, applicant has not clarified the overall nature of the autonomous delivery system, as “electronic receivers” for example, (which is what applicant has listed as the first/primary component of the system and therefore, which is what will determine the proper classification) is not in class 012, but rather, is in class 009.

 

Therefore, because the identification of goods remains indefinite and/or broad and requires further clarification, the requirement is maintained and now made FINAL.

 

However, applicant may still satisfy this FINAL requirement by adopting the suggested identification of goods below, if accurate.  See TMEP §1402.01.

 

• “Portable folding landing pad system comprising solar-powered battery chargers, [RE-WORDED “namely a portable folding landing pad that is solar charged, charges a battery,] and [DELETED “includes” as this wording is indefinite] warning lights and laser guides designed to guide an autonomous vehicle to deliver packages thereon” in International Class 009.

 

• “Autonomous delivery system comprising a flying package delivery [RE-WORDED “system”] drone [RE-WORDED “that includes” as this wording is indefinite] with electronic receivers on it to track laser guides from a landing system for residential and commercial deliveries, and [RE-WORDED “includes” as this wording is indefinite] with settings to position for replacement battery exchange from the landing system” in International Class 012.

 

Applicant’s goods 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 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 will further limit scope, and once goods 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.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

 

/Adetayo J. Adeyiga/

Trademark Examining Attorney

Law Office 114

(571) 272-7089

adetayo.adeyiga@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 July 10, 2020 for

U.S. Trademark Application Serial No. 88623429

 

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. 

 

 

/Adetayo J. Adeyiga/

Trademark Examining Attorney

Law Office 114

(571) 272-7089

adetayo.adeyiga@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 July 10, 2020, 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.”