Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

---

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90245772 DATA CLOUD ALLIANCE(Standard Characters, see http://uspto.report/TM/90245772/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Examining Attorney?s Refusal Under Section 2(e) Cannot Be Sustained The Examining Attorney has refused registration of Applicant?s DATA CLOUD ALLIANCE mark pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. ?1052(e)(1), stating that the mark ?merely describes a feature of applicant?s services.? Applicant respectfully disagrees with the Examining Attorney?s conclusion that the Applicant?s mark is merely descriptive and not registrable on the Principal Register. To the contrary, Applicant submits that the term DATA CLOUD ALLIANCE, when properly considered in its entirety, is at least suggestive of the services, and therefore, constitutes an inherently distinctive mark registrable on the Principal Register. 1. Applicant?s DATA CLOUD ALLIANCE Mark Does Not Immediately Describe the Nature of Applicant?s Services. There is no evidence that DATA CLOUD ALLIANCE is merely descriptive as used in connection with Applicant?s services. To be deemed descriptive, a term must directly give some reasonably accurate or tolerably distinct knowledge of the characteristics of a product or service. Blisscraft of Hollywood v. United Plastics Co., 131 U.S.P.Q. 55 (2d Cir. 1961). Unless the mark clearly informs potential customers ?only what the . . . [goods and services] are, their function, their characteristics or their use,? the mark is not merely descriptive. In re Colonial Stores, Inc., 394 F.2d 549, 552 (C.C.P.A. 1968) (SUGAR & SPICE found not merely descriptive of bakery products); see also American Home Products, Inc. v. Johnson Chemical Co. Inc., 589 F.2d 103 (2d Cir. 1978) (finding ROACH MOTEL not merely descriptive when used for roach traps). Here, Applicant?s DATA CLOUD ALLIANCE mark does not directly describe the education and training services offered by Applicant for its own platform. On the other hand, a term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the services. Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 160 U.S.P.Q. 777 (S.D.N.Y. 1968). Here, the term DATA CLOUD ALLIANCE as used by Applicant does not directly give consumers an accurate description or distinct knowledge about the Applicant?s services. Likewise, mere observation of Applicant?s mark would not lead consumers to know automatically that Applicant?s services are for providing a wide range of educational services and training in the fields of data management and cloud solutions for Applicant?s own SAS (software as a service) platform. In re Realistic Co., 440 F.2d 1393, 1394 (CCPA 1971) (holding that, while the mark CURV suggests a result of the permanent wave curling solution, the word ?curve? is not merely descriptive because it does not ?in its primary significance indicate the purpose for which the permanent wave curling solutions are to be used.?). Instead, prospective customers must obtain further information to determine the characteristics and functions of Applicant?s DATA CLOUD ALLIANCE services. In apparent recognition of the fact that the whole of Applicant?s mark DATA CLOUD ALLIANCE is not descriptive, the Examining Attorney resorts to dissecting Applicant?s mark to reach the conclusion that the mark is descriptive. It is well-established that, when a evaluating a mark, the Examining Attorney must consider the mark in its entirety, rather than dissecting it and evaluating its component parts. Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920) (?The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.?). Even when analyzing separately the component parts of Applicant?s mark, however, it is clear that Applicant?s mark is not merely descriptive of its services for providing educational and training services. Indeed, the Examining Attorney fails to cite a definition for the term ?data cloud alliance? or find usage by any third parties on the Internet. The Examining Attorney appears to have extrapolated a definition without any basis. But, more importantly, the Examining Attorney has not linked any definition of the entire mark ?data cloud alliance? to Applicant?s educational and training services or demonstrated how the alleged definition would lead a consumer to conclude that the DATA CLOUD ALLIANCE mark directly describes a feature or characteristic of Applicant?s educational and training services. In fact, Applicant?s mark in its entirety DATA CLOUD ALLIANCE has no literal meaning. Even if Applicant?s mark was found to relate to services for data management and cloud management, it would not explain directly the purpose or nature of Applicant?s services. There is no evidence that consumers upon hearing or seeing Applicant?s mark would believe that Applicant?s educational and training services are literally an alliance of data cloud. 2. The Examining Attorney?s Evidence Does Not Support a Finding of Descriptiveness. The Examining Attorney has not shown how the mark is merely descriptive, rather than suggestive, of the services. It is significant that the Examining Attorney cites no evidence that ?data cloud alliance? is itself a defined term in the relevant industry or otherwise. Nor does the Examining Attorney offer any relevant news articles or other third party usage of ?data cloud alliance? that establish that the term merely describes Applicant?s services. The Examining Attorney?s citations in support of her conclusion that the mark is merely descriptive fail to provide a valid basis for refusing to register Applicant?s mark. The Examining Attorney?s evidence as to ?data cloud,? ?data,? and ?cloud? does not lead to the conclusion that those words alone merely describe Applicant?s educational and training services for its own software platform. At best, the Examining Attorney?s proffered evidence establishes only that the terms ?data cloud,? ?data,? and ?cloud? relate to a wide variety of products and services. Significantly, none of these uses of ?data cloud,? ?data,? and ?cloud? is in reference to services similar to those identified by Applicant in its identification of educational and training services for its own software platform. Moreover, the citations to a definition of ?alliance? and the handful of third party registrations disclaiming ALLIANCE do not support that the mark in its entirety is merely descriptive. The definition does not define the term as offering educational or training services. The Examining Attorney?s definition of ?alliance? underscores that the mark is not merely descriptive of any educational or training services?let alone those related to data and/or the cloud. Further, the Examining Attorney?s citation to third party registrations disclaiming ALLIANCE for educational services does not support the refusal. In those instances, the disclaimer related to the identified association services, the name of the association itself, and not, as here, educational services for a software company?s own software service platform. Thus, the definition supports the argument that the term ALLIANCE merely describes services that are provided by an association or formal group and/or the owner?s name includes the term ?alliance,? and not that ALLIANCE is merely descriptive of Applicant?s educational or training services. As a result, the evidence provided by the Examining Attorney falls far short of sustaining the conclusion that DATA CLOUD ALLIANCE, when properly considered in its entirety, is merely descriptive of the identified services. 3. Applicant?s DATA CLOUD ALLIANCE Mark Is At Least Suggestive. Applicant?s mark is not merely descriptive because the nature of the services to be offered under Applicant?s DATA CLOUD ALLIANCE mark is not readily ascertainable from these terms. In re TelechaT Network, Inc., Ser. No. 76/535,248 (T.T.A.B. May 11, 2006) (reversing refusal to register TELECHAT as descriptive because it was unclear from evidence submitted that consumers would understand the mark to have the Examining Attorney?s suggested meaning). One must therefore exercise mature thought and follow a multi-stage reasoning process to determine characteristics of Applicant?s services, rendering DATA CLOUD ALLIANCE suggestive, not descriptive. See McCarthy, J., McCarthy on Trademarks and Unfair Competition ?11.67, pp. 11-110 to 11-111 (4th ed. 1997). Stated another way, because the mark in its entirety does not clearly inform potential customers ?only what the goods or services are, their function, their characteristics or their use,? the mark is not merely descriptive. In re Colonial Stores, Inc., 394 F.2d 549, 552, (CCPA 1968) (SUGAR & SPICE found not merely descriptive of bakery products). In this case, it is clear that a certain amount of imagination and mental analysis remains necessary to connect the term DATA CLOUD ALLIANCE with the Applicant?s services. See In re Tennis in the Round, Inc., 199 U.S.P.Q. 496 (T.T.A.B. 1978) (TENNIS IN THE ROUND held not descriptive of tennis facilities); Ex parte Candle Vase, Inc., 105 U.S.P.Q. 73, 74 (Comm?r of Patents 1955) (CANDLE VASE not merely descriptive of flower holder adapted for fitting around the base of a candle in a candle holder); See Stix, 295 F. Supp. at 488 (explaining that ?[t]he word ?contact,? without more, conveys no information as to the unique adhesive characteristic or function of self-adhesive decorative plastic; more than mere observation is required to reach the conclusion that a product so branded is a self-adhesive decorative covering?); In re Realistic Co., 440 F.2d 1393 (CCPA 1971) (holding that, while the mark CURV suggests a result of the permanent wave curling solution, the word ?curve? is not merely descriptive because it does not ?in its primary significance indicate the purpose for which the permanent wave curling solutions are to be used.?); See Johnston Foods, Inc. v. Carnation Co., 159 U.S.P.Q. 624, 627-628 (TTAB 1968) (finding that FRUIT SUNDAE was not descriptive of yogurt because there was no known use of the word SUNDAE in connection with yogurt). Similarly, here, DATA CLOUD ALLIANCE, has no known use as to educational and training services. Because any doubts regarding whether a mark is descriptive are to be resolved in favor of the Applicant, Applicant?s mark should be found at least suggestive of Applicant?s goods and services, and should be allowed to proceed to registration on the Principal Register. See In re Stroh Brewery Co., 34 U.S.P.Q.2d 1796, 1797 (TTAB 1994); In re Conductive Sys., Inc., 220 U.S.P.Q. 84, 86 (TTAB 1983). 4. Third Party Registrations Support Registration of the DATA CLOUD ALLIANCE Mark The conclusion that the mark DATA CLOUD ALLIANCE is not merely descriptive, however, is supported by the fact that numerous registered marks do not require disclaimers of ALLIANCE for educational services, informational services, and/or other services in Class 41. In particular, we bring to the Examining Attorney?s attention several such registered marks including the term ALLIANCE:  LASH ALLIANCE (Reg. No. 6374256) for ?Eyelash extensions; Adhesives for affixing false eyelashes; Artificial eyelashes,? in Class 3; ?Education services, namely, providing mentoring, tutoring, classes, seminars and workshops in the field of artificial eyelashes and eyelash extensions,? Class 41. Alliance not disclaimed.  LEGENDARY ALLIANCE GAMING (Reg. No. 6048988) for ?Entertainment in the nature of competitions in the field of video games; Gaming services in the nature of conducting online computer game tournaments, gaming coaching,? in Class 41. Alliance not disclaimed.  ALLIANCE LAUNDRY SYSTEMS and Design (Reg. No. 5562020) for, among other services, ?Online training classes for technicians in the laundry industry in the use and operation of laundry machines and equipment,? in Class 41. Alliance not disclaimed.  DEAD ALLIANCE (Reg. No. 5628473) for, ?Providing a web site featuring information in the field of computer games, science fiction games and entertainment; Providing information on-line relating to computer games and computer enhancements for games; Entertainment services, namely, providing an on-line computer game and providing online news and information in the field of computer games; Entertainment services, namely, conducting contests online, and organizing, planning, and executing social entertainment events and games between computer game players and interest groups via a website,? in Class 41. Alliance not disclaimed.  ALLIANCE (Reg. No. 5209459) for ?Providing a customized educational consulting service, namely, consultation in the field of K-12 educational systems dedicated to helping schools and school districts effect sustained academic improvement, improved student achievement results and improved quality of learning; Arranging and conducting professional workshops and training courses and providing educational mentoring services and programs in the field of helping schools and school districts improve achievement,? in Class 41. Alliance not disclaimed.  ULTIMATE ALLIANCE (Reg. No. 5944439) for ?Entertainment services, namely, providing online video games; providing information relating to online video games via global computer networks and electronic communication networks for use in connection with computers, mobile computers, media players, wireless devices, and portable and handheld digital electronic devices; providing an online entertainment information in the field of computer games, enhancements for computer games, online video games, and game applications via global computer networks and electronic communication networks for use in connection with computer games, enhancements for computer games, online video games, and game applications via global computer networks and electronic communication networks for use in connection with computers, mobile computers, media players, wireless devices and portable and handheld digital electronic devices; providing temporary use of non-downloadable software for playing computer games; providing interactive websites and applications featuring online video games and non-downloadable video games,? in Class 41. Alliance not disclaimed.  GAME ALLIANCE (Reg. No. 5341524) for, among other goods, ?Entertainment services, namely, providing online computer and electronic games and enhancements within online computer and electronic games; Entertainment services, namely, providing information relating to computer games provided online; Entertainment services, namely, providing virtual environments in which users can interact through games for social, recreational, leisure or entertainment purposes; Publishing computer application software for mobile phones and mobile devices for others in the fields of social networking and gaming; Publishing computer software for others in the fields of social networking and gaming; Multimedia publishing of computer, electronic and online games; Distribution of audio, visual and multimedia content via global and local computer networks, or other communication networks with third parties; Distribution of online games via global and local computer networks or other communication networks with third parties,? in Class 41. Alliance not disclaimed.  MT ALLIANCE (Reg. No. 4563998) for, among other goods, ?Training in the use and operating of sensors, measuring equipment, computer equipment, software and computer systems for the control and management of energy, environment, and climate conditions in supermarkets and commercial buildings,? in Class 41. Alliance not disclaimed.  AGILE ALLIANCE and Design (Reg. No. 4532470) for ?Education services, namely, developing, arranging, and conducting educational conferences, seminars, workshops, and classes in the fields of software design, software development, and project management, and distribution of course materials in connection therewith; education services, namely, developing, arranging, and conducting educational conferences and workshops featuring use and promotion of agile methods and processes in the fields of software design, software development, and project management; providing a website featuring blogs and non-downloadable publications in the nature of articles and newsletters featuring the use of agile methodologies in the fields of software design, software development, and project management,? in Class 41. Alliance not disclaimed.  FANTASY SPORTS ALLIANCE (Reg. No. 4469694) for ?Entertainment services in the nature of fantasy sports leagues,? in Class 41. Alliance not disclaimed.  THE ALLIANCE and Design (Reg. No. 4418546) for ?Providing recognition and incentives by the way of awards to demonstrate excellence in the fields of supply chain management and logistics management,? in Class 41. Alliance not disclaimed.  ALLIANCE and Design (Reg. No. 2386777) for, among other services, ?development and dissemination of educational materials for others in the field of economic, urban and community development; educational services, namely conducting tours, seminars, programs and workshops in the field of economic, urban and community development; and providing student internships,? in Class 41. Alliance not disclaimed. Exhibit 1 attached hereto, contains printouts from the U.S. Trademark Electronic Search System for these registrations. Third-party registrations with the same term are entitled to some weight in determining whether a term should be disclaimed as merely descriptive. See In re Fairfield Labs., Inc., 144 U.S.P.Q. 452, 453 (T.T.A.B. 1964). Here, the Examining Attorney cites third party registrations in an attempt to demonstrate that the term ALLIANCE is descriptive. Applicant asserts that there are numerous third party registrations in Class 41 alone demonstrating that the term ALLIANCE is not necessarily descriptive of educational and training services. This result is not surprising, however, because whether a mark is ?merely descriptive,? is a fact-based inquiry and each case must be decided on its own merits. See In re Ampco Foods, Inc., 227 U.S.P.Q. 331 (T.T.A.B. 1985). Here, Applicant?s DATA CLOUD ALLIANCE mark has no relationship to any association services or a formal group?rather the mark is intended to offer educational and training services related to its own data and/or cloud SAS (software as a service). Moreover, any doubts regarding whether a mark is ?merely descriptive? should be resolved in favor of the applicant. See In re Stroh Brewery Co., 34 U.S.P.Q.2d 1796, 1797 (T.T.A.B. 1994); In re Conductive Sys., Inc., 220 U.S.P.Q. 84, 86 (T.T.A.B. 1983). 5. Request for Information. The Examining Attorney has requested information in the Office Action in the following questions: 1. 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? 2. Does DATA, CLOUD, ALLIANCE, DATA CLOUD, CLOUD ALLIANCE, or DATA CLOUD ALLIANCE have any significance in the relevant trade or industry other than service mark significance? As to Question No. 1, the terms DATA, CLOUD, and DATA CLOUD are related to Applicant?s own SAS (software as a service platform). The terms ALLIANCE, CLOUD ALLIANCE and DATA CLOUD ALLIANCE do not have any significance in Applicant?s trade or industry or than as a trademark as applied to the services. Notably, there is no industry significance to the mark in its entirety DATA CLOUD ALLIANCE. Applicant does not intend to use the applied-for mark as an association or formal group but rather to provide education and training for its own SAS platform. As to Question No. 2, the terms DATA, CLOUD, and DATA CLOUD are terms that have significance in Applicant?s industry. The terms ALLIANCE, CLOUD ALLIANCE and DATA CLOUD ALLIANCE do not have any significance in the industry except as a trademark. Notably, there is no industry significance to the mark in its entirety DATA CLOUD ALLIANCE. Applicant does not intend to use the applied-for-mark as an association or formal group but rather to provide education and training for its own SAS platform. 6. Conclusion It is well settled that under the circumstances present here, where the Examining Attorney has, at best, raised only doubts as to whether the proposed mark is merely descriptive, those doubts must be resolved in favor of the applicant. See In re Remacle, 66 U.S.P.Q. 2d 1222, 1224 (T.T.A.B. 2002) (finding that the Examining Attorney had failed to meet his burden of establishing a prima facie case of mere descriptiveness). Applicant therefore respectfully requests that the Examining Attorney withdraw the refusal under Section 2(e)(1) and approve the application for publication without further delay.

EVIDENCE
Evidence has been attached: Exhibit 1 to Arguments, TESS Records for Third Party Registrations
Original PDF file:
evi_20519620714-202107261 82838432292_._ROA_DATA_CL OUD_ALLIANCE_Exhibit_1.pdf
Converted PDF file(s) ( 22 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21Evidence-22
Correspondence Information (current):
      Rochelle D. Alpert
      PRIMARY EMAIL FOR CORRESPONDENCE: rochelle.alpert@morganlewis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sftrademarks@morganlewis.com; sharon.smith@morganlewis.com; thomas.loran@morganlewis.com

The docket/reference number is 120890.2250.
Correspondence Information (proposed):
      Rochelle D. Alpert
      PRIMARY EMAIL FOR CORRESPONDENCE: rochelle.alpert@morganlewis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sftrademarks@morganlewis.com; sharon.smith@morganlewis.com; thomas.loran@morganlewis.com

The docket/reference number is 120890.2250.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Sharon Smith/     Date: 07/26/2021
Signatory's Name: Sharon Smith
Signatory's Position: Attorney for Applicant, California bar member

Signatory's Phone Number: 415.442.1754 Signature method: Signed directly within the form

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Rochelle D. Alpert
   MORGAN, LEWIS & BOCKIUS LLP
   
   ONE MARKET, SPEAR ST. TOWER, 25TH FL.
   SAN FRANCISCO, California 94105
Mailing Address:    Rochelle D. Alpert
   MORGAN, LEWIS & BOCKIUS LLP
   ONE MARKET, SPEAR ST. TOWER, 25TH FL.
   SAN FRANCISCO, California 94105
        
Serial Number: 90245772
Internet Transmission Date: Mon Jul 26 18:43:58 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202107261843582
84307-90245772-78049a8a953ba47dce2fef076
3e7e08ea2ec828dbb590495de034ea450f22656-
N/A-N/A-20210726182838432292