| To: | UNION INTERNATIONALE DES CHEMINS DE FER (rdicerbo@mcandrews-ip.com) |
| Subject: | tmng.notices@uspto.gov |
| Sent: | 2023-11-17 |
| Sent As: | tmng.notices@uspto.gov |
| Attachments: |
U.S. Application Serial No. 79372797
Mark: OSDM OPEN SALES AND DISTRIBUTION MODEL
| Correspondence Address: Ronald A DiCerbo McAndrews, Held & Malloy 500 W Madison 34th Floor Chicago IL 60661 UNITED STATES |
Applicant: UNION INTERNATIONALE DES CHEMINS DE FER
Reference/Docket No. N/A
Correspondence Email Address: rdicerbo@mcandrews-ip.com
International Registration No. 1736883
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see https://www.uspto.gov/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at https://tsdr.uspto.gov/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
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.
SUMMARY OF ISSUES:
MARK DESCRIPTION AND COLOR CLAIM REQUIREMENT
Applicant must submit an amended description of the mark because the current one is incomplete and does not 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. In this case, the description is incomplete because it does not identify the colors and locations of the features of the mark.
The following description is suggested, if accurate:
The mark consists of the letters “OSDM” in grey letters above the wording “OPEN SALES AND DISTRIBUTION MODEL” in smaller grey letters. Above the letters and wording is a {describe design} which is blue on the left side fading at the top to green on the right side with the bottom diamond shaped part in grey.
If applicant adopts the above Mark Description, the following Color Claim is suggested:
The colors blue, green and grey are claimed as a feature of the mark.
TMEP §807.07(a)(i).
DISCLAIMER REQUIREMENT
Applicant must disclaim the wording “OPEN SALES AND DISTRIBUTION MODEL” 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), 1056(a); 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 applicant's website shows this wording means refers to applicant's open source ticket distribution system, or model, which operates online and offline. Thus, the wording merely describes applicant’s goods and/or 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 “OPEN SALES AND DISTRIBUTION MODEL” 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 GOODS AND SERVICES REQUIREMENT
Particular wording in the identification of goods and services, as indicated in bold below, is indefinite and must be clarified to make clear the nature of the goods and services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).
In a Trademark Act Section 66(a) application, classification of goods and services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
Thus, any modification to this wording must identify goods and services in International Classes 009, 035, 038, 039 and 042 only, the classes specified in the application for these goods and services. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following wording in International Classes 009, 035, 038, 039 and 042, if accurate:
International Class 009:
Computer system comprised of {indicate components of computer systems. If comprised of software, must indicate if downloadable or recorded} for booking and distributing travel seats especially in the rail sector [using an application programming interface [API]]; network access server hardware for control and management software [applications]; Downloadable databases in the field of {indicate subject matter, e.g., sports statistics, annual rainfall statistics; downloadable operating system programs; computer systems comprised of {indicate components of computer systems. If comprised of software, must indicate type/use/function of software, and if downloadable or recorded}; data processing apparatus; data processing equipment; information processing systems comprised of {indicate components of computer systems. If comprised of software, must indicate if downloadable or recorded} for booking, processing, checking, validating, modifying, cancelling, issuing, renewing and printing tickets, travel cards, transport bookings and vouchers; interface software {clarify type of interface software and indicate if downloadable or recorded}; software intended to be used as an application programming interface {clarify type of interface software and indicate if downloadable or recorded} (API); telecommunication standards {clarify type of telecommunication goods}; data exchange devices for {clarify type/use of devices}; database engines {clarify type of database goods, and indicate if downloadable or recorded if software/program goods}; interactive database software {clarify the database function of the software and indicate if downloadable or recorded}; database synchronization software {indicate if downloadable or recorded}; database server software {indicate if downloadable or recorded}; data and file management software and database software {clarify the database function of the software and indicate if downloadable or recorded}; software for redirecting messages {indicate type of messages and indicate if downloadable or recorded}; reservation system software {clarify type of reservation software and indicate if downloadable or recorded}; apparatus for real-time data processing, namely, {indicate specific apparatus items by common commercial name}
International Class 035:
Compilation of business data in computer databases; updating and maintenance of data in computer databases; subscriptions to database services by telecommunications , namely, arranging subscriptions to telecommunication services for others; market studies by means of a computer database; compilation and systematization of business information within computer databases; collection, systematization and classification of commercial and business data, information and inquiries in databases; collection and systematization of business information in computer databases; computer file management; database management; provision of commercial information via computer databases; business information services provided to companies online from a global computer network or the Internet; data processing services in the field of transport; business information services; commercial information services via global computer networks; commercial information services via global computer networks {delete duplicate identification}; collecting and processing commercial, legal and technical data between members of the transport industry, particularly rail, in the field of transport; analyzing and providing commercial data between members of the transport industry, particularly rail, in the field of transport; commercial concierge services {clarify type of concierge services} in the field of mobility and transportation, namely, connecting travelers and professional or private transportation providers; commercial administration services of the licensing of {indicate services}; the bringing together for the benefit of others of transport offers enabling travelers to choose their preferred route; market research, particularly in the transportation (mobility) sector for the purpose of optimizing and enhancing the relevance of a transport services offer for users; cost analysis; providing online price comparison services via a global computer network; cost price analysis; cost price research; providing business information with respect to transport pricing comparison; business administrative services with respect to business valuations
International Class 038:
Telecommunications {indicate specific type of telecommunications services}; providing telecommunication connections to a global communication network or databases; rental of access time to global computer networks; rental of access time to a computer database in the field of transport information and bookings; transmitting data and information via computers and electronic means of communication enabling the booking of means of transport and transport services offered by third parties, particularly transport services by train, bus, taxi or carpooling or car-sharing; electronic data exchange services, namely, electronic exchange of data stored in databases accessible via telecommunication networks; providing access to databases; transmission and reception [transmission] of database information via a telecommunication network; sending, receiving and forwarding of electronic messages; electronic transmission of messages, data and documents; transmission of data, messages and information
International Class 039:
Transport services {indicate type of transport, e.g., car transport}; transporting passengers, particularly by train and bus; transport of merchandise of others in the nature of {specify type of goods, e.g., alcoholic beverages, bakery goods; mass transit services for the general public; organizing transport, particularly by rail and road; organization of passenger transport services for third parties via an online application; services for organizing the mobility of people {clarify the type of mobility services}; transport {indicate type of transport} booking services; booking seats [transport] particularly in trains, buses, taxis, boats, and carpooling vehicles; computerized booking services for passenger transport; providing information related to transport and travel via mobile telecommunications devices and apparatus; providing an automated global information and booking system concerning rail transport and services of all kinds in connection with travel {“ services of all kinds in connection with travel” is indefinite and must be replaced with definite language or deleted}; providing information relating to the inventory of seats available on means of transport; information on services for the reservation, issuance, withdrawal, exchange and reimbursement of tickets for travel; provision of transportation tariff information; providing information relating to transport timetables; traffic information; information, advisory and booking services relating to transportation; services for organizing the booking of airplane, train, bus and ship tickets; information services relating to travel route planning; travel route planning [navigation services]; travel route management; travel route planning services; providing customized combined transport routes, especially train-car, train-subway, train-bus, train-carpooling; calculating and optimizing transport and travel routes [navigation service]; reservation services for vehicle rental; lending and rental of vehicles, trucks, light trucks, cars, motorcycles, bicycles, scooters; rental of means of transport; organization of the rental of vehicles for transportation; organization of vehicle rental; bike sharing services; transport brokerage; services for centralized booking of seats in transport; booking of seats for travel; transport reservation services; agency services for organization of traveler transport; providing information with respect to tariffs [transport]; providing information with respect to transport
International Class 042:
Computer engineering services for the installation, monitoring and operation of computerised booking system software; provision of IT infrastructure, namely, the operation of computer booking systems in the transportation industry on behalf of third parties; development of databases; off-site data backup services; electronic data storage; hosting of databases; maintenance of online databases for others; installation of database software; rental of computer database software; development of computer database software; rental of software for reading databases containing price offers; evaluation of the performance of computer systems in the nature of computer system analysis in comparison with standards; evaluation of data processing performances in the nature of computer system analysis in comparison with standards; services for certification of messages transmitted by telecommunication, namely, providing temporary use of non-downloadable software for sending messages with certification of the recipient's opening and reading of the message; encryption, decryption and authentication of information, messages and data, namely, data encryption services; platform as a service (PaaS) services featuring software platforms for transmission of images, audiovisual content, video content and messages; testing, analysis and evaluation of the goods and services of others for certification purposes in the field of {indicate field}; quality assessment in the field of {indicate field}; testing services for the certification of quality or standards of {indicate field}; design and development of route planning software; software design; software maintenance; developing application programming interface (API) software; 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}; cloud computing featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; designing an automated global information and booking system {clarify type of “system”} concerning rail transport and services of all kinds in connection with travel; electronic data storage and retrieval services in the field of transportation for third parties
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.
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).
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
RESPONSE REQUIREMENTS AND INFORMATION
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §2.11(a); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as outside of the United States or its territories. For more information, see the U.S. Counsel webpage at https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at https://www.uspto.gov/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at https://teas.uspto.gov/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at https://teas.uspto.gov/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.
How to respond. Click to file a response to this nonfinal Office action.