To: | Snowflake Inc. (rochelle.alpert@morganlewis.com) |
Subject: | U.S. Trademark Application Serial No. 90192328 - SNOWFLAKE UNIVERSITY - 120890.2240 |
Sent: | January 26, 2021 06:17:37 AM |
Sent As: | ecom114@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. 90192328
Mark: SNOWFLAKE UNIVERSITY
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Correspondence Address: |
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Applicant: Snowflake Inc.
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Reference/Docket No. 120890.2240
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: January 26, 2021
The referenced application has been reviewed by the assigned trademark examining attorney as explained in the message left for the applicant’s attorney on January 20, 2021; no return communication was received. 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.
The requirement(s) apply to all of the goods and/or services listed in the application, unless otherwise stated.
SEARCH OF USPTO DATABASE OF MARKS
Applicant must disclaim the wording “UNIVERSITY” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use 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 applicant’s services are identified as educational services, namely, non-downloadable courses on cloud management, data warehousing, data analytics, data management, data mining, data sharing, data exchange, data migration, data integration and database administration, and distribution of training materials in connection therewith; training in the use and operation of data warehouse platforms, data analytics and cloud management. The attached dictionary definition defines UNIVERSITY as “[a]n institution for higher learning with teaching and research facilities typically including a graduate school and professional schools that award master's degrees and doctorates and an undergraduate division that awards bachelor's degrees.” The attached internet evidence from the applicant’s website shows that the wording at issue has a merely descriptive meaning in relation to the applicant’s services and/or in the relevant trade or industry. For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).
The attached third party registration(s) also shows that the wording at issue is merely descriptive of the applicant’s services. Third-party registrations featuring goods and/or services the same as or similar to applicant’s services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Consequently, purchasers who encounter the wording UNIVERSITY in relation to the identified services would immediately understand that the wording UNIVERSITY is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services; the wording would not indicate that the applicant is the sole source of the identified services. Moreover, businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials without the possibility of costly infringement suits brought by the trademark or service mark owner. See In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001); TMEP §1209. Allowing the registration of the applicant’s merely descriptive wording would inhibit competition in the marketplace. See In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Therefore, UNIVERSITY, as applied to the identified services, is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “UNIVERSITY” 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.
IDENTIFICATION OF SERVICES
The identification of services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The applicant must identify the services specifically to provide public notice to the average person who does not have an in-depth knowledge of the relevant field(s) and to enable the USPTO to classify the services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).
In an identification, an applicant must use the common commercial or generic name for the services, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP§§1402.01, 1402.03(a). If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id. If applicable, open-ended terms (e.g., “including,” “such as”) must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).
The applicant should describe the services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Id., 102 USPQ at 322.
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
In this case, the applicant must clarify the nature of the services because the wording “non-downloadable courses” could potentially include goods recorded on various media in International Class 9. The bolded wording and/or punctuation in the suggested identification below indicates a suggested addition(s) and/or amendment(s) to the applicant's current identification. The applicant should refer to the suggested identification below for specific wording that requires clarification and/or reclassification.
Applicant may adopt the following identification if accurate [changes in bold text]:
Educational services, namely, on-line non-downloadable courses on cloud management, data warehousing, data analytics, data management, data mining, data sharing, data exchange, data migration, data integration and database administration, and distribution of training materials in connection therewith; training in the use and operation of data warehouse platforms, data analytics and cloud management in International Class 41.
PRIOR REGISTRATION
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). Because the webpage specimen lacks the associated URL and/or access or print date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce. TMEP §§904.03(i), 1301.04(a).
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
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).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.
(2) Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed directly on the specimen itself or in a separate statement, 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 goods and/or services identified in the application or amendment to allege use. Applicant must also submit 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.”
(3) 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.
INFORMATION ABOUT SERVICES REQUIRED
The applicant must respond to this requirement only if the applicant does not enter the disclaimer.
Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Merely stating that information about the services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
The applicant must directly and completely answer the following question(s) and/or provide the information requested:
1. Does UNIVERSITY have any significance as applied to the services other than service mark significance?
2. Does UNIVERSITY have any significance in the relevant trade or industry other than service mark significance?
3. If available, the applicant will provide a website address at which the services are offered and/or the mark is used. If no website is available, then the applicant will state this fact for the record.
QUESTIONS ABOUT THIS ACTION
If the applicant has technical questions about the TEAS response to Office action form, the applicant may send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail. Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving. You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours.
For status inquiries or copies of documents, an applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system twenty-four (24) hours a day, seven (7) days a week. Enter the application serial number or registration number and click on “Status” or “Documents.” Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated. For help in resolving technical glitches, please email TSDR@uspto.gov.
For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC). TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199. For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays. A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.
If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/Brian Pino/
Examining Attorney
Law Office 114
571.272.9209 Telephone
Brian.Pino2@uspto.gov
RESPONSE GUIDANCE