To: | Mainstay Salire LLC (tm@lzlegalservices.com) |
Subject: | U.S. Trademark Application Serial No. 88905660 - ADVISOR - L538004578 |
Sent: | August 12, 2020 08:47:29 AM |
Sent As: | ecom127@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88905660
Mark: ADVISOR
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Correspondence Address:
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Applicant: Mainstay Salire LLC
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Reference/Docket No. L538004578
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: August 12, 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.
SEARCH OF THE OFFICE’S DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a purpose or function 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)).
Here, applicant provides “Software as a service (SAAS) services featuring software for use in calculating business solutions value and communicating the value to customers; Software as a service (SAAS) services featuring software for presenting customer facing marketing tools”. The mark merely refers to applicant’s services as consisting of software that provides advice to people.
The attached evidence from Collins Dictionary shows ADVISOR refers to “an expert whose job is to give advice to another person or to a group of people”. Thus, the word ADVISOR conveys immediately to consumers that applicant’s software provides advice to people. Further, the attached evidence from applicant’s website shows that applicant’s software is used to provide advice, such as “generate remarkably accurate estimates of the business value your products and services deliver”.
In total, the above evidence results in the determination that in relation to the services applicant provides, the context therefor, and to someone who knows what the services are, ADVISOR conveys an immediate idea about a purpose or function of applicant’s services, namely, that applicant’s software services consist of software that provides advice to consumers relating to calculating business solutions value and communicating the value to customers. Accordingly, the proposed mark, ADVISOR is merely descriptive and registration is properly refused on the Principal Register under 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.
ADVISORY: Amendment to Supplemental Register Suggested
GUIDELINES FOR RESPONDING TO THIS OFFICE ACTION
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.
/Luke Cash Browning/
Luke Cash Browning
Trademark Examining Attorney
Law Office 127 | (571) 270-5767
Luke.Browning@USPTO.gov
RESPONSE GUIDANCE