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:  October 07, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 4, 2020.

 

In a previous Office action dated July 1, 2020, applicant was required to disclaim descriptive wording.

 

Based on applicant’s response, the trademark examining attorney notes that applicant provided a disclaimer for only one of the two words it was required to disclaim.  See TMEP §§713.02, 714.04. 

 

The trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Disclaimer Required

 

DISCLAIMER REQUIRED

 

THIS REQUIREMENT IS MADE FINAL.  See 37 C.F.R. §2.63(b).

 

Applicant must disclaim the wording “ORCHESTRATOR” because it is merely descriptive of a function of applicant’s goods.  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). 

 

In the previously issued Office action, the examining attorney provided evidence from http://en.wiktionary.org/wiki/orchestrator and http://www.lexico.com/en/definition/orchestrate establishing that “ORCHESTRATOR” means “one [that] orchestrates.”  Please refer to the evidence attached to the Office action dated July 1, 2020.   Dictionaries are generally a competent source for determining how the public perceives the mark in connection with applicant’s goods and/or services.  See In re N.C. Lottery, 866 F.3d 1363, 1367-68, 123 USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir. 1986)); TMEP §1209.01(b).

 

In addition, the examining attorney provided evidence from http://clouddocs.f5.com/cloud/public/v1/shared/smart_nic_guide.html, stating that “The F5 SmartNIC Orchestrator v1.0.7 is a bit file and configuration/orchestration utility that uses SR-IOV to isolate the VMs, and a REST API in a Docker container for orchestration.” Emphasis added.  Please refer to the evidence attached to the Office action dated July 1, 2020.  The examining attorney has included additional screenshots from this webpage showing that applicant’s software is an orchestration utility, otherwise known in applicant’s industry as an “orchestrator.”  An applicant’s own website and marketing material is also probative and can be “the most damaging evidence” in showing how the relevant public perceives a term.  In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1957 (TTAB 2018) (citing Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d at 966, 114 USPQ2d at 1831; In re Gould Paper Corp., 834 F.2d 1017, 1019, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987)).

 

In addition to the previously provided evidence, the examining attorney has attached additional evidence from http://docs.microsoft.com/en-us/system-center/orchestrator/learn-about-orchestrator?view=sc-orch-2019, http://www.sciencedirect.com/topics/computer-science/orchestration-software, http://docs.oracle.com/cd/E84502_01/learnjde/orchestrator.html, http://www.cisco.com/c/en/us/products/cloud-systems-management/network-services-orchestrator/index.html, and http://www.mcafee.com/enterprise/en-us/products/epolicy-orchestrator.html  showing that the wording “ORCHESTRATOR” is a term used in applicant’s industry to describe a particular type of software used in managing, coordinating, and integrating automated software commands.  

 

The examining attorney notes that vocabulary used in the computer and electronics fields is particularly noted for changing rapidly, and descriptiveness is determined based on the facts and evidence in the record at the time registration is sought.  In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1088 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000) (noting “a year or two is an eternity in ‘Internet time,’ given the rapid advancement of the Internet into every facet of daily life”).  A term that was once arbitrary or suggestive may lose its distinguishing and origin-denoting characteristics through use in a descriptive sense over a period of time, and come to be regarded by the purchasing public as nothing more than a descriptive designation.  In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).

 

Thus, third-party registrations of applicant’s mark or portions of applicant’s mark are not probative on the question of descriptiveness.  Each case must be taken on its own facts.  In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1758 (TTAB 1991); TMEP §1209.03(a).

 

Applicant may respond to this issue by replacing the current disclaimer of record with a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SMARTNIC ORCHESTRATOR” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

APPLICANT’S ARGUMENTS

 

Applicant argues that the mark is “a suggestive term in the relevant industry, as it requires a consumer to take the extra mental step or make a leap of imagination to connect the myriad possible meanings of the term to the specific context of Applicant’s goods and services.”   The examining attorney disagrees.  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).  The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  Here, the evidence of record clearly establishes that the wording “ORCHESTRATOR” has a specific descriptive meaning in relation to software, and, based on the information found on applicant’s website and applicant’s recitation of its goods, this term applies directly and unambiguously to applicant’s software. Thus, consumers with knowledge of applicant’s software need not take any extra mental step or make a leap of imagination to understand the meaning of the term “ORCHESTRATOR” as it relates to applicant’s software.

 

Applicant argues “This is a common understanding in the relevant industry, as evidence by other coexisting registered marks featuring the term.”  Although applicant provides registration numbers pertaining to two third party registrations, the registrations were not properly made of record, the mere submission of a list of registrations does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.

 

To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations will not be considered.

 

The examining attorney further notes that third party registrations do not control on the issue of deceptiveness as neither the Trademark Examining Operation nor the Trademark Trial and Appeal Board are bound by past decisions of the Trademark Examining Operation.  See R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 790, 140 USPQ 276, 280 (C.C.P.A. 1964) (quoting In re Helene Curtis Indus., Inc., 305 F.2d 492, 494, 134 USPQ 501, 503-04 (C.C.P.A. 1962)); In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986).  As noted above, because vocabulary in the computer and software industry changes rapidly, third-party registrations containing portions of applicant’s mark are not probative on the question of descriptiveness.  In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1758 (TTAB 1991); TMEP §1209.03(a).

 

As such, applicant’s arguments have been considered and found unpersuasive.

 

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).

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@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 October 07, 2020 for

U.S. Trademark Application Serial No. 88939589

 

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. 

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@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 October 07, 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.”