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:  August 18, 2021

 

 

This Office action is in response to applicant’s communication filed on July 26, 2021.  Please note that all issues not discussed in this office action have been resolved.

 

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

In addition, the following requirement is/are now made FINAL:  information.  See 37 C.F.R. §2.63(b).

 

 

SUMMARY OF ISSUES MADE FINAL that applicant must address: 

• Section 2(e)(1) refusal.
• Information.

 

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a feature 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 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)). 

 

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s [services].”  In re Oppedahl & Larson, 71 USPQ2d at 1371 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).  It is enough if a mark describes a single feature or attribute of the applicant’s services.  In re Chamber of Commerce, 102 USPQ2d at 1219.  Moreover, a mark does not need to be merely descriptive of all of the services, or of each feature of the relevant services, specified in an application.  In re Chamber of Commerce, 102 USPQ2d at 1219; In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1089 (TTAB 2012).  “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the … [services] for which registration is sought.’”  In re Chamber of Commerce, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s 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). 

 

“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 applicant’s proposed mark is DATA CLOUD ALLIANCE for educational services, namely, workshops, conferences, labs, courses, webinars and blogs on cloud management, cloud applications, cloud infrastructure, data warehousing, database analytics, data management, data mining, data sharing, data exchange, data migration, data integration and database administration; educational services, namely, online on demand courses on cloud management, cloud applications, cloud infrastructure, data warehousing, database analytics, data management, data mining, data sharing, data exchange, data migration, data integration and database administration; training in the use and operation of data platform, cloud management, cloud applications and cloud infrastructure.  The previously attached dictionary definitions define DATA CLOUD as “…some type of storage system or storage network without getting into details. It may also refer to a network attached storage (NAS) device” and ALLIANCE as “[a] close association of nations or other groups, formed to advance common interests or causes.”[1]  The applicant’s identification uses the terms DATA and CLOUD in at least a merely descriptive manner, e.g., “data warehousing” and “cloud management.”

 

The applicant’s response supports the refusal because the response states “…the terms DATA, CLOUD, and DATA CLOUD are terms that have significance in Applicant?s [sic] industry.”  Therefore, the applicant admits that the wording DATA CLOUD does not point to the applicant as to the sole source of the identified services.

 

The previously attached, and attached, internet evidence, including evidence from the applicant’s website,[2] 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 previously attached, and attached, third party registration(s) also shows that the proposed mark, and/or the wording therein, is merely descriptive of the applicant’s services.  Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or 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).

 

Moreover, the applicant’s failure to completely respond to the information requirement allows the Office to presume that the information would be detrimental to the applicant, e.g., the individual terms that comprise the proposed mark are merely descriptive of the applicant’s services.  TMEP §814 (An applicant’s failure to respond to an information requirement can result in an adverse evidentiary inference being drawn regarding the issue to which the information requirement was directed).

 

Therefore, the proposed mark DATA CLOUD ALLIANCE, as applied to the identified services, merely describes a feature of the applicant’s services.  Consequently, purchasers who encounter the proposed mark in relation to the identified services would immediately understand that the applied for mark is merely descriptive of the applicant’s services; the proposed mark would not indicate that the applicant is the sole source of the identified goods.  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 proposed merely descriptive mark 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.  Accordingly, the applied-for mark is merely descriptive.

 

The applicant argues that the proposed mark is not merely descriptive because in the applicant’s opinion the proposed mark does not immediately describe the services.  The applicant is respectfully reminded that the applicant’s response admits that DATA CLOUD has significance in the relevant trade or industry.  Therefore, the applicant’s argument and statement are in direct contradiction in part.  The applicant’s argument regarding the refusal is not well taken.  The applicant’s argument appears to consider the proposed mark in the abstract rather than in relation to the services as is required.  “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 question is not whether someone presented only with the mark could guess what the services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).  In this case, the evidence and applicant’s statement plainly show the merely descriptive nature of the proposed mark when properly considered in relation to the services.

 

The applicant argues that the Office has improperly dissected the proposed mark in order to support the refusal.  The applicant’s argument is factually inaccurate as the proposed mark was considered in its entirety.  Furthermore, the applicant is respectfully reminded that a trademark examining attorney may consider the significance of each element separately in the course of evaluating the mark as a whole.  See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012) (reversing Board’s denial of cancellation for SNAP! with design for medical syringes as not merely descriptive when noting that the Board “to be sure, [could] ascertain the meaning and weight of each of the components that ma[de] up the mark”); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 1306, 91 USPQ2d 1532, 1533, 1535, 1537 (Fed. Cir. 2009) (holding HOTELS.COM generic for information and reservation services featuring temporary lodging when noting that the Board did not commit error in considering “the word ‘hotels’ for genericness separate from the ‘.com’ suffix”).  When considered as a whole, the proposed mark is merely descriptive of the applicant’s services as is shown by the evidence of record.

 

The applicant argues that because the evidence did not include a dictionary definition of the proposed mark as a whole, the refusal should be withdrawn.  The applicant’s argument is not persuasive.  The applicant is respectfully reminded that no dictionary definition of the proposed mark as a whole is required to find that the proposed mark merely describes the identified services.  The fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive; as in this case, the evidence shows that DATA CLOUD ALLIANCE is merely descriptive.  See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).

 

The applicant believes that the Office is required to show third party use of the proposed mark as a whole in order find that the proposed mark is merely descriptive.  The applicant’s argument is not credible.  Again, as discussed above, the fact that an applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive; as in this case, the evidence shows that DATA CLOUD ALLIANCE is merely descriptive.  See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).

 

The applicant argues that some of the evidence does not support the refusal.  The applicant is once again reminded of its response statement regarding the significance of DATA CLOUD in the relevant trade or industry which, on its own, is sufficient evidence to show that DATA CLOUD is merely descriptive of the applicant’s services.  Nor does the applicant’s argument consider that the disclaimer of ALLIANCE in the third party registrations of record disclaiming the term ALLIANCE in relation to the same or similar services is the provider of a service.  The evidence in this case conclusively proves the merely descriptive nature of the applicant’s proposed mark, as a  whole, when properly considered in relation to the services as required.

 

The applicant argues that various cases citing the marks, e.g., SUGAR & SPICE, show that the applicant’s proposed mark is not merely descriptive.  The applicant’s argument seems to forget that the cases cited are not relevant to the applicant’s argument.  Marks like SUGAR & SPICE were held not merely descriptive because they evoke a different connotation other than the wording that comprises the mark.  In the case of SUGAR & SPICE the mark evokes a nursery rhyme.  As to DAT CLOUD ALLIANCE, there is no different connotation that evokes a meaning other than the merely descriptive terms that comprised the proposed mark as the evidence plainly shows.

 

The applicant next argues that because other registrations exist that contain the term ALLIANCE, that this fact requires that the Office withdraw the refusal.  The applicant is respectfully reminded that the fact that third-party registrations may exist for marks allegedly similar to applicant’s mark is not conclusive on the issue of descriptiveness.  See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP §1209.03(a).  An applied-for mark that is merely descriptive does not become registrable simply because other seemingly similar marks appear on the register.  In re Scholastic Testing Serv., Inc., 196 USPQ at 519; TMEP §1209.03(a).  It is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records.  See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a).  The question of whether a mark is merely descriptive is determined based on the evidence of record at the time each registration is sought.  In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §1209.03(a).

 

Based on the foregoing, the Section 2(e)(1) refusal is maintained and made FINAL.

 

 

 

SUPPLEMENTAL REGISTER

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

An allegation of use has various legal requirements, including providing verified dates of first use of the mark, a verified statement that the mark is in use in commerce, a specimen showing the mark as actually used in commerce for each international class, and a fee.  37 C.F.R. §§2.76, 2.88; TMEP §806.01(b).  In addition, certain time restrictions apply to filing an amendment to allege use or statement of use.  See 37 C.F.R. §§2.76(a), 2.88(a); TMEP §§1104.03, 1109.04.  See the ITU basis webpage for more information about an amendment to allege use or statement of use.  To submit one, use the Trademark Electronic Application System (TEAS) Allegation of Use form. 

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

 

 

INFORMATION ABOUT SERVICES REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s services.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  The information requested below is reasonably necessary to the examination of the application because it will provide a more in-depth understanding of the mark, services, and/or issue(s) at hand.  TMEP §814. 

 

The applicant was required to answer the following:

 

Does DATA, CLOUD, ALLIANCE, DATA CLOUD, CLOUD ALLIANCE, or DATA CLOUD ALLIANCE have any significance as applied to the services other than service mark significance?

 

The applicant responded:

 

Question No. 1, the terms DATA, CLOUD, and DATA CLOUD are related to Applicant?s [sic] own SAS (software as a service platform).

 

The applicant’s response is non-responsive in its entirety.  To start, the applicant did not respond to portions of the question at all, e.g., CLOUD ALLIANCE.  Moreover, the applicant’s response was non-responsive because it did not answer the question posed.  The applicant was not asked if any of the wording was related to the applicant’s software as a service platform.  Consequently, the applicant did not provide relevant information pertinent to the refusal analysis.

 

The Court of Appeals for the Federal Circuit has determined that the wording “reasonably necessary” should be interpreted broadly, and applies to information that is “relevant to” registrability or “reasonably calculated” to lead to such relevant information. Cf. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing Patent Rule 1.105(a)(1), which is the equivalent of Trademark Rule 2.61(b)). at 1282-85, 73 USPQ2d at 1413-15. A question is considered “relevant” if an examining attorney has a legitimate reason for asking for the information and if the information is pertinent to the examining attorney’s legal inquiry. Id. at 1284-85, 73 USPQ2d at 1415; TMEP §814.

 

This rule, that is 37 C.F.R. §2.61(b), is designed to encourage high-quality, efficient examination and recognizes that an applicant is often in the best position to provide the facts and information that the Office needs to properly examine an application and assess registrability of the applicant’s mark.  Cf. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing Patent Rule 1.105(a)(1), which is the equivalent of Trademark Rule 2.61(b)); TMEP §814.

 

The Office may ask questions designed to obtain specific information that is factual in nature and/or request literature, exhibits, affidavits or declarations, and general information concerning circumstances surrounding the mark, as well as, if applicable, its use or intended use.  See 37 C.F.R. §2.61(b) ; TMEP §814.

 

The applicant has a duty to participate in the examination process by responding directly and completely to each request for information.  See Star Fruits, 393 F.3d at 1284-1285; 73 USPQ2d at 1415 ("So long as there is some legitimate reason for seeking the information . . . the applicant has a duty to respond."); TMEP §814.

 

If the applicant does not comply with the examining attorney’s request for information, or submits an evasive or otherwise insufficient response, the requirement should be repeated and, if appropriate, made final.  See In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013); In re DTI P'ship LLP, 67 USPQ2d 1699 (TTAB 2003); In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002); In re Page, 51 USPQ2d 1660 (TTAB 1999); In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990); In re Air Prods. & Chems., Inc., 192 USPQ 157, 158 (TTAB 1976) (“[Trademark Rule 2.61(b)] has the effect of law.”); TMEP §814.

 

Based on the foregoing, the requirement is maintained and made FINAL.

 

The applicant must directly and completely answer the following question(s) and/or provide the information requested:

 

 

Does DATA, CLOUD, ALLIANCE, DATA CLOUD, CLOUD ALLIANCE, or DATA CLOUD ALLIANCE have any significance as applied to the services other than service mark significance? 

 

 

 

APPROPRIATE RESPONSES

 

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).

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

Brian.Pino2@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.