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:  January 12, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search results: No conflicting 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.

 

Summary of issues:

 

• Requirement: Accurate and complete mark description
• Requirement: Identification and classification of services clarification
• Advisory: Multiple-class application requirements
• Requirement: Disclaimer

 

Requirement: Accurate and complete mark description

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not accurately describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of three curved lines to the right and two curved lines to the left in an "A" formation above the words "ANALYSIS &” above the words “RESILIENCE CENTER” above the words “FOR SYSTEMIC RISK" below.  The gray rectangular background is not claimed as a feature of the mark.

 

Requirement: Identification and classification of services clarification

 

The identification of services is indefinite and must be clarified because the wording is too broad making the nature of the services identified unclear and could include services in multiple international classes.  Applicant must clarify the identification by specifying the type of services and classifying the services in the appropriate international classes as is shown in the suggested identification below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Suggested identification.

 

Instructions and suggested changes are shown in bold text.  Applicant may adopt the following identification, if accurate: 

 

Class 35: Promoting the interests of {indicate specific group, e.g., people involved in, companies involved in} protecting the nations' critical infrastructure;, namely, mitigating risk to the nation's systemically important critical infrastructure through public-private operational collaboration, conducting analysis of critical systems and functions, developing resilience measures to protect them, and monitoring and warning against threats to them

 

Class 42: Conducting analysis of critical systems and functions, namely, {specify the nature of the services for conducting analysis of critical systems and functions, e.g., computer security threat analysis for protecting data}; developing resilience measures to protect the nations' critical infrastructure; {specify the nature of the services for monitoring and warning against threats to them, e.g., monitoring of computer systems for detecting unauthorized access or data breach, computer security consultancy}

 

Class 45: {Specify the nature of the services for mitigating risk to the nation's systemically important critical infrastructure through public-private operational collaboration, e.g., security threat analysis for protecting public safety by} mitigating risk to the nation's systemically important critical infrastructure through public-private operational collaboration; {specify the nature of the services for conducting analysis of critical systems and functions, e.g., security threat analysis for protecting public safety by} conducting analysis of critical systems and functions; {specify the nature of the services for monitoring and warning against threats to them, e.g., monitoring of security alarm systems, security guarding for facilities, physical security consultancy}

 

Identification advisories.

 

If applicant adopts the suggested amendment of the identification of services, then applicant must amend the classification to International Classes 35, 42, and 45.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

Advisory: Multiple-class application requirements

 

The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The fee for adding classes to a TEAS Standard application is $350 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Requirement: Disclaimer

 

Applicant must disclaim the wording “ANALYSIS & RESILIENCE CENTER FOR SYSTEMIC RISK” because it is merely descriptive of the source or provider of applicant’s 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). 

 

The attached evidence from the Oxford Dictionaries shows the component terms of the wording “ANALYSIS & RESILIENCE CENTER FOR SYSTEMIC RISK” are defined as follows.

 

            ANALYSIS: Detailed examination of the elements or structure of something.

 

            &: The sign & (standing for and, as in Smith & Co., or the Latin et, as in &c).

 

            RESILIENCE: The capacity to recover quickly from difficulties; toughness.

 

            CENTER: A place or group of buildings where a specified activity is concentrated.

 

            FOR: Having (the thing mentioned) as a purpose or function.

 

            SYSTEMATIC: Done or acting according to a fixed plan or system; methodical.

 

            RISK: A situation involving exposure to danger.

 

See the dictionary definitions at Exhibit A.  Based on these dictionary definitions, the wording “ANALYSIS & RESILIENCE CENTER FOR SYSTEMIC RISK” means a place where activities are conducted relating to the analyzing systematic risk and resilience relating to systematic risk.

 

Applicant’s services are “Promoting the interests of protecting the nations' critical infrastructure;, namely, mitigating risk to the nation's systemically important critical infrastructure through public-private operational collaboration, conducting analysis of critical systems and functions, developing resilience measures to protect them, and monitoring and warning against threats to them.”  The identification of services shows the applicant services are related to risk and resilience, and feature analysis.

 

In addition, applicant’s Linkedin® page shows the following.

 

The Analysis and Resilience Center (ARC) for Systemic Risk is a non-profit, cross-sector organization designed to mitigate systemic risk to the nation’s most critical infrastructure from existing and emerging threats. We facilitate collaboration between our critical infrastructure member companies, the U.S. Government, and other key sector partners in a controlled environment where participants can securely collaborate. Together, we conduct analysis of critical systems, assets, and functions; monitor and warn against threats to those systems, assets, and functions; and develop measures to make them more resilient.

 

See the Internet evidence at Exhibit B.

 

Terms that describe the provider of a product or service may also be merely descriptive of the product and/or service.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q).

 

Thus, the wording “ANALYSIS & RESILIENCE CENTER FOR SYSTEMIC RISK” merely describes applicant’s services because it indicates that the applicant’s services are provided by  a center where activities are conducted relating to the analyzing systematic risk and resilience relating to systematic risk.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “ANALYSIS & RESILIENCE CENTER FOR SYSTEMIC RISK” 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. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

Office action questions. Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

 

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

E: tina.brown@uspto.gov

T: 571-272-8864

 

 

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 January 12, 2021 for

U.S. Trademark Application Serial No. 90154721

 

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. 

 

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

E: tina.brown@uspto.gov

T: 571-272-8864

 

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 January 12, 2021, 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.”