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: March 28, 2022
SUMMARY OF ISSUES:
- Disclaimer Required
- Amended Identification of Services
The referenced application 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.
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.
SEARCH OF USPTO DATABASE OF 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.
DISCLAIMER REQUIRED
Applicant must disclaim the wording “LABS” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use
of applicant’s goods and/or 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 American Heritage® Dictionary of the English Language, Fifth
Edition shows this wording means a laboratory which is “[a] room or building equipped for scientific experimentation or
research.” Thus, the wording merely describes applicant’s
goods and/or services because the facility of the applicant’s services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LABS” 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.
If applicant does not provide the required disclaimer, the USPTO may refuse
to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir.
2005); TMEP §1213.01(b).
The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB
2006); In re Kraft, Inc., 218 USPQ 571 (TTAB
1983).
IDENTIFICATION OF SERVICES
The identification of services is indefinite and must be clarified because
it fails to specify the applicant’s services as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01.
Applicant may adopt the following identification, if accurate:
- Class 42- Design and development of computer software for decentralized computing using blockchain technology;
Blockchain technology software as a service (SaaS) SERVICES FEATURING SOFTWARE FOR {SPECIFY THE FUNCTION OF THE PROGRAMS, E.G., FOR USE IN DATABASE MANAGEMENT, FOR SERVICE DESK MANAGEMENT, FOR
ACCOUNTING, ETC., AND, IF SOFTWARE IS CONTENT- OR FIELD-SPECIFIC, THE CONTENT OR FIELD OF USE}; Consulting in the field of designing blockchain and decentralized SOFTWARE applications; Computer
software development in the field of blockchain-based technology and decentralized application computer software; Design and development of wireless computer networks using blockchain technology;
Providing a network ENVIRONMENT featuring technology that provides users with cryptographic hash services and functions for use with blockchain technology; Providing temporary use of ONLINE
non-downloadable software AND SOFTWARE applications for blockchain infrastructure and network development and analytics
The Trademark Act requires that a trademark or service mark application must
include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include
a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications
filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01,
1402.01(b)-(c).
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/or services in trademark applications, please see the online searchable Manual of
Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
How to respond. Click to file a response to this nonfinal Office action.
Scott Bibb
/ScottBibb/
Examining Attorney
Law Office 109
571-272-5669
scott.bibb@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.
