Offc Action Outgoing

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:  December 17, 2019

 

 

 The statement of use 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.

 

 

SUMMARY OF ISSUES:

 

• SECTIONS 1, 2, 3 AND 45 - FAILURE TO FUNCTION AS A MARK - INFORMATIONAL MATTER
• SECTION 2(E)(1) - MARK IS MERELY DESCRIPTIVE

 

 

SECTIONS 1, 2, 3 AND 45 – FAILURE TO FUNCTION AS A MARK – INFORMATIONAL MATTER

 

Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a slogan or term that is commonly used by those in applicant’s particular trade or industry to merely convey information about applicant’s or similar goods and/or services.  See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA for beer and ale a common claim of superiority and incapable of registration); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (holding BRAND NAMES FOR LESS for retail clothing store services a common promotional phrase and incapable of registration); TMEP §1202.04(a). 

 

Slogans and terms that are merely informational in nature, such as statements or laudatory phrases about goods and/or services ordinarily used in business or in a particular trade or industry, are not registrable.  See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the slogan or term functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04.  “The more commonly a [slogan or term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).

 

The proposed mark is POINT OF NEED, TIME OF NEED SUPPLY CHAIN for Design and implementation of software and technology solutions, and providing temporary use of non-downloadable cloud-based software, all the foregoing services for the purpose of product and document authentication and tracking to protect against counterfeiting and tampering to ensure the integrity of genuine products and documents.

 

The attached evidence shows that this slogan or term is commonly used by those in applicant’s particular trade or industry as a common promotional phrase.  Because consumers are accustomed to seeing this slogan or term used in this manner, when it is applied to applicant’s goods and/or services, they would perceive it merely as informational matter indicating that software services or products provided by the applicant are available to users at the site where they are most needed, and at the time when they are most needed. 

 

In particular, the phrase “POINT OF USE” is used to indicate that a system or service is located or provided at the site of production or where the worker/consumer needs them and has ready access to them.  See examples of this common usage in excerpts from websites of companies in the software industry:

 

http://www.southwestsolutions.com/point-of-use-storage-system-software-directed-horizontal-carousels-for-parts - "A point of use storage system positions require resources at the site of production. The idea behind a point of use storage system is to eliminate waste and increase productivity by having everything immediately available to the operator performing the work."

 

http://www.supplypoint.com/ - "Built on powerful software, each point-of-use machine can operate on a LAN or synchronise over the internet to our cloud platform."

 

http://www.supplypro.com/home/aboutus - "The SupplyPro Inventory Management solution is built upon a system of flexible, point-of-use equipment that puts mission critical tools and materials right where they're needed - on the floor, next to the worker."

 

http://www.supplychain247.com/company/apex_supply_chain_technologies - "Apex Supply Chain Technologies provides lean, automated, cost-saving point-of-use dispensing solutions worldwide. Apex systems backed by our Trajectory cloud-based software manage, track and control essential supplies, tools, materials, assets. These include mission-critical, high-cost, and high-use items in all industries and applications including manufacturing, distribution, healthcare/medical/laboratory, office supplies/assets, school supplies, computer and diagnostic equipment, and fleet maintenance supplies."

 

In addition, the phrase “TIME OF NEED” is similarly used to indicate that a system or service is available for immediate use when needed by a worker or consumer.  See examples of this common usage in excerpts from websites of companies in the software industry:

 

http://www.digitalistmag.com/cio-knowledge/2018/12/06/deploying-new-enterprise-software-dont-neglect-user-training-06194742 - "Other highly effective options include intra-company social learning forums and customized "time-of-need" micro-learning tutorials embedded inside applications."

 

http://training.sap.com/content/edu-software - "Formats include instructor-led training, online courseware delivered directly or via a learning management system (LMS), instructional videos, process tutorials with simulations, and time-of-need assistance embedded within applications."

 

http://www.deque.com/blog/user-documentation-important/ - "Some software vendors think "help" is page in the application that displays contact information for the Help Desk.  You have to either call a number (during their business hours), send an email, or fill out an online form…and either way, have to wait for whatever the typical response time is.   This is not helpful "at the time of need," and offers no ability to self-educate."

 

As further support, there is also evidence of use of the entire phrase when describing the applicant’s goods by others:

 

http://www.blocklandsolutions.com/agenda/session/169446 - "Point of use, time of need smart digital supply chains are the future. The enablers of this shift are 3D printing, Blockchain technology, Artificial Intelligence, and Platform based business models. Through ideation and collaboration with market leading partners Blockchain Resources Group has constructed a path to the supply chain of the future."

 

http://www.ncms.org/additive-manufacturing-much-more-than-a-game/ - “As the military begins to use AM for time-of-need, point-of-use parts fabrication, the delivery and security of those digital files becomes paramount.”

 

And the applicant uses it in their descriptions of their goods and services in multiple places on their own website as well:

 

http://www.moog.com/news/corporate-press-releases/2018/STAerospaceCollaborate3DPrinting.html - “Moog and ST Aerospace will collaborate on the 3D printing of aircraft parts to leverage Moog's VeriPart® solution - a blockchain-enabled point-of-use, time-of-need digital supply chain solution - and ST Aerospace's capabilities in 3D printing design, fabrication and certification. The collaboration aims to develop additive manufacturing technology with digital transaction capability to bring about greater efficiency and security in aftermarket services. The result will optimize supply chain improvements within military and commercial aerospace markets, while meeting trade compliance regulations.”

 

http://www.moog.com/news/blog-new/IntroducingVeripart_Issue3.html - “Spare parts that can be printed by end users on-demand at the point of use and time of need to reduce inventory and improve availability.”

 

http://www.moog.com/Innovation.html - “In a world first experiment, Moog's blockchain enabled VeriPart process was utilised to create a point of use, time of need digital supply chain.”

 

http://aviationbenefits.org/newswire/2019/04/air-new-zealand-microsoft-moog-and-st-engineering-announce-ground-breaking-digital-collaboration/ - "Air New Zealand has teamed up with components and systems provider Moog, Microsoft and ST Engineering on a world-first experiment which has the potential to transform aerospace supply chains by leveraging 3D printing and Moog's blockchain enabled VeriPart™ process to create a point of use, time of need digital supply chain."

 

The additional wording “SUPPLY CHAIN” is merely descriptive (as already conceded by the applicant), and more likely generic, for the type of software services provided by the applicant to their customers, as indicated by the above quotations from their website.  This wording does not change the overall commercial impression of the wording in the mark being anything more than informative about the applicant’s goods, and not source-indicating, as required by the Trademark Act.

 

Thus, this slogan or term would not be perceived as a mark that identifies the source of applicant’s goods and/or services, particularly because even the applicant themselves are using this wording in an informative manner and not as a service or trademark.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229.  Nor will submitting a substitute specimen overcome this refusal.  See TMEP §1202.04(d). 

 

 

Applicant should note the following additional ground for refusal.

 

 

SECTION 2(E)(1) – MARK IS MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature or characteristic of applicant’s goods and/or 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)). 

 

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); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“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 proposed mark is POINT OF NEED, TIME OF NEED SUPPLY CHAIN for Design and implementation of software and technology solutions, and providing temporary use of non-downloadable cloud-based software, all the foregoing services for the purpose of product and document authentication and tracking to protect against counterfeiting and tampering to ensure the integrity of genuine products and documents.

 

As discussed above, the phrase “POINT OF USE” indicates that a system or service is located somewhere convenient for the worker/consumer so they have ready access to them.  See http://www.southwestsolutions.com/point-of-use-storage-system-software-directed-horizontal-carousels-for-parts; http://www.supplypoint.com/; http://www.supplypro.com/home/aboutus; http://www.supplychain247.com/company/apex_supply_chain_technologies.  The phrase “TIME OF NEED” is similarly used to indicate that a system or service is available for immediate use by a user.  See http://www.digitalistmag.com/cio-knowledge/2018/12/06/deploying-new-enterprise-software-dont-neglect-user-training-06194742; http://training.sap.com/content/edu-software; http://www.deque.com/blog/user-documentation-important/. 

 

The applicant also uses these phrases in a descriptive manner in multiple places on their website and also in articles about collaborations with other companies in the industry.  See http://www.moog.com/news/corporate-press-releases/2018/STAerospaceCollaborate3DPrinting.html; http://www.moog.com/news/blog-new/IntroducingVeripart_Issue3.html; http://www.moog.com/Innovation.html; http://aviationbenefits.org/newswire/2019/04/air-new-zealand-microsoft-moog-and-st-engineering-announce-ground-breaking-digital-collaboration/. 

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.  Specifically, as already discussed, the combination of the wording “POINT OF NEED” and “TIME OF NEED” clearly conveys to users that the software services they are receiving from the applicant will be available in a convenient location and at the time they are needed.  The additional wording “SUPPLY CHAIN” immediately tells consumers that the software services are used in relation to supply chain processes and technology.  The applicant has already conceded that this wording is merely descriptive, as evidenced by their prior disclaimer of this wording, and thus, does not change the overall commercial impression of the applicant’s mark to create a distinctive meaning.

 

For these reasons, the proposed mark, POINT OF NEED, TIME OF NEED SUPPLY CHAIN, is refused as merely descriptive under Section 2(e)(1) of the Trademark Act.  Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services.  In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

 

 

INFORMATION ABOUT INQUIRIES

 

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. 

 

 

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.    

 

 

/Jennifer H. Dixon/

Trademark Examining Attorney

Law Office 110

571-272-9359

jennifer.dixon@uspto.gov (informal inquiries only)

 

 

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 December 17, 2019 for

U.S. Trademark Application Serial No. 88976342

 

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. 

 

 

/Jennifer H. Dixon/

Trademark Examining Attorney

Law Office 110

571-272-9359

jennifer.dixon@uspto.gov (informal inquiries only)

 

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 December 17, 2019, 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.”