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: January 08, 2020
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 issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711,
718.03.
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 a feature and characteristic 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.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature,
purpose, or use of an applicant’s goods and/or services. 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 present case, applicant is using the mark SAFESTOR ENDPOINT PROTECTION in connection with “Computer programming services, namely, data backup and recovery services.” The
word SAFE, however, is defined as “secure from liability to harm, injury, danger, or risk.” See the enclosed definition from dictionary.com. The word STOR, a misspelling of the word “store,” is
defined as “to take in or hold supplies, goods, or articles, as for future use.” Id. The wording
ENDPOINT PROTECTION refers to the protection of computer networks that are remotely bridged to client devices. See the enclosed entry from Wikipedia.
The wording SAFESTOR ENDPOINT PROTECTION, then, when considered in connection with the services at issue, would be perceived by consumers as nothing more than a description of
computer services which involve the securing of data from harm or risk for future use in connection with computer networks that are remotely bridged to client devices. Accordingly, as this describes
a feature and characteristic of applicant’s services, the mark must be deemed to be merely descriptive. In this regard, applicant’s specimen indicates that its services provide “Data Protection with Full-Environment Recovery or Granular Recovery” and “cloud-connected data protection and security for endpoint computing environment.”
A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive
word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See
In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of
printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery
knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive
of real estate services); TMEP §1209.03(j). Accordingly, the fact that applicant’s mark misspells the word “store” as STOR in the composite SAFESTOR ENDPOINT PROTECTION is insufficient to negate the
mark’s merely descriptive significance.
In the alternative, if and to the extent applicant’s services are not in the nature of
computer services which involve the securing of data from harm or risk for future use in connection with computer networks that are remotely bridged to client devices, registration is refused because
the applied-for mark is deceptively misdescriptive of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d
1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001); TMEP
§1209.04.
The test for determining whether a mark is deceptively misdescriptive has two
parts: (1) whether the mark misdescribes the goods and/or services; and if so, (2) whether consumers are likely to believe the misrepresentation. See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB
1984)); TMEP §1209.04.
If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
IDENTIFICATION OF SERVICES
The identification of services is indefinite and must be clarified
because it does not sufficiently identify applicant’s computer programming, data backup and data recovery services. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may adopt the following identification, if accurate: Computer programming services, namely, electronic data backup and computer data recovery services.
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.
RESPONSE TO OFFICE ACTION
Please call or email the assigned trademark examining attorney with
questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark
examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP
§§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in
the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Barney L. Charlon/
Trademark Examining Attorney
Law Office 104
(571) 272-9141
(571) 272-9104 (fax)
barney.charlon@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.
