To: | Abnormal Security Corporation (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88657464 - ABNORMAL SECURITY - 135237-4001 |
Sent: | January 22, 2020 07:01:01 PM |
Sent As: | ecom111@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88657464
Mark: ABNORMAL SECURITY
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Correspondence Address:
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Applicant: Abnormal Security Corporation
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Reference/Docket No. 135237-4001
Correspondence Email Address: |
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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 22, 2020
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.
SPECIMEN REFUSAL – NO USE WITH GOODS/SERVICES IDENTIFIED
Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and services specified in International Class(es) 9 and 38 in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).
Specifically, as to Class 9, the screenshot does not show any of the acceptable forms of specimen for computer or downloadable software. It is a shot of a website, and does not show use with downloaded or recorded software. Applicant should note that their website, attached hereto, does not identify Class 9 downloadable or recorded software as a product anywhere on its product pages.
Applicant’s specimen does not meet these criteria, and is further blurred due to cropping out additional matter, making the image expand to fill the removed space and rendering it partly illegible, an additional issue.
As to Class 38, applicant’s specimens show use only with analyzing emails, not with a Class 38 service providing an email service themselves. The applicant is offering Class 42 security services, but they do not appear to be the email client, which is what is required for Class 38 email services.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
IDENTIFICATION OF GOODS & SERVICES
The wording in the identification of goods and services is indefinite, overbroad, or does not sufficiently distinguish the form or function of the goods to be proper beneath the present guidelines of the Trademark Act. Thus, the language must be better-clarified where indicated below, in bold. Explanations for the reasoning behind the indefiniteness, and proper re-classification where applicable, is provided below within the identifications.
Applicant may therefore adopt the following identification(s), if accurate. See TMEP §1402.01.
Class 9: {specify downloadable or recorded} software for ensuring the security of electronic mail by {specify function of software; “ensuring” does not identify how the software functions or is used by the end consumer}; {specify downloadable or recorded} electronic mail and messaging software; {specify downloadable or recorded} computer software for collection, storage, analysis and presentation of data for forensic analysis of security events and for security compliance; {specify downloadable or recorded} computer software for the administration, monitoring, management, assessment and quantification of security and data breach vulnerability risks
Class 38: Providing electronic transmission of secure e-mail
Class 42: Computer services, namely, electronic mail protection and security services, namely, {specify actual service proper in Class 42}; Software as a service (SaaS) featuring software for use in the analysis and protection of the security of email and network communications and data; Platform as a service (PAAS) featuring computer software
platforms for use in the analysis and protection of the security of email and network communications and data; Email and
messaging management services for others, namely, threat protection in the nature of computer virus protection services, monitoring of computer systems for detecting unauthorized access or data
breach, and electronic storage of data and emails recorded on electronic media; Software as a service (SAAS) featuring software for use in the analysis and protection of the security of email and network communications and data, cybersecurity, email management virus protection, email
archiving, and email continuity, and email security; design and development of antivirus software;
computer security consultancy
The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant, but are instead provided only as suggestions. Given the extremely indefinite nature of some of the goods in part and given that the application is based on intent to use, the examiner is unable to suggest a more comprehensive amended identification for the applicant’s consideration and possible adoption in responding to this Office Action. It is the applicant's duty and prerogative to identify the goods and services. TMEP section 1402.01(d).
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 REQUIRED
In this case, applicant must disclaim the wording “SECURITY” 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).
Specifically, applicant’s goods and services are all related to providing digital, email, or network security (at least in part). Therefore it is descriptive of a central purpose/feature of the goods and services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SECURITY” 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.
RESPONSE GUIDELINES
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.
How to respond. Click to file a response to this nonfinal Office action.
/Caitlin Watts-Fitzgerald/
Caitlin Watts-FitzGerald
Examining Attorney
Law Office 111
571-272-9015
Caitlin.Watts-Fitzgerald@USPTO.GOV
RESPONSE GUIDANCE