To: | THE APACHE SOFTWARE FOUNDATION (tmfilings@us.dlapiper.com) |
Subject: | U.S. Trademark Application Serial No. 88680872 - DRUID - 393457-149 |
Sent: | February 02, 2021 09:29:03 PM |
Sent As: | ecom111@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 Attachment - 17 Attachment - 18 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88680872
Mark: DRUID
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Correspondence Address: 555 Mission Street, Suite 2400
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Applicant: THE APACHE SOFTWARE FOUNDATION
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Reference/Docket No. 393457-149
Correspondence Email Address: |
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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: February 02, 2021
This Office action is in response to applicant’s communication filed on October 5, 2020.
In addition, the suspension notice informed applicant that the specimen refusal raised in the original Office action dated February 10, 2020 was maintained and continued.
Therefore, the trademark examining attorney maintains and now makes FINAL the specimen refusal as set forth below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SPECIMEN REFUSAL – USE IN COMMERCE
Applicant was previously refused registration in International Class 42 because the specimen did not show a direct association between the applied-for mark and the identified services. In the response dated February 12, 2020, applicant provided a substitute specimen; however, it consisted of blank pages.
Thus, the refusal to register the applied-for mark in International Class 42 is now made final because applicant failed to provide evidence of use of the mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07(a), 1301.04(g)(i).
Specifically, registration is refused because the specimen does not show the applied-for mark as actually used in commerce in International Class 42. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of 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).
In the present case, the specimen consists of screenshots from applicant’s website. To begin with, the specimen does not show use in connection with “technical consulting services in the field of computer data management and computer data analytics.” Although the specimen includes a section on “Getting help”, this appears to be help in using the software, not the provision of technical advice in the field of computer data management and computer data analytics.
Further, the specimen does not show use with SAAS services or the provision of non-downloadable software as set forth in the application. Here, the specimen shows use with downloadable software, which are goods in International Class 9. For example, the top right corner of the first page of the specimen includes a “Download” link. The attached evidence from applicant’s website shows this link does indeed lead to a page where the Druid software can be downloaded. In addition, a quickstart guide on applicant’s website states “Following these steps, you will install Druid and load sample data using its native batch ingestion feature” and “Step 1. Install Druid” states “After confirming the requirements, follow these steps: 1. Download the 0.20.1 release.” See attached evidence (emphasis added). Overall, the specimen and evidence of record do not show the mark in use in commerce in connection with the Class 42 services identified in the application.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
Response options. 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 services identified in the application. 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) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
RESPONDING TO THIS FINAL OFFICE ACTION
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
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).
/Luz M. Adorno Santos/
Trademark Examining Attorney, Law Office 111
571-272-4902
Luz.AdornoSantos@uspto.gov
RESPONSE GUIDANCE