From: Eulin, Ingrid
`
`Sent: 11/27/2012 1:22:36 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: U.S. TRADEMARK APPLICATION NO. 77967395 - CLOUDTV - 1436/222 -
`EXAMINER BRIEF
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 77967395.doc
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`
` APPLICATION SERIAL NO.
`
` MARK: CLOUDTV
`
`
`
`
`
`
`*77967395*
`
`
`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
`
`TTAB INFORMATION:
`http://www.uspto.gov/web/offices/dcom/ttab/index.html
`
`
`
`
`
`77967395
`
`
`
`
` CORRESPONDENT ADDRESS:
` LISA M TITTEMORE
`
` SUNSTEIN KANN MURPHY & TIMBERS LLP
` 125 SUMMER STREET
` BOSTON, MA 02110-1618
`
`
` APPLICANT:
`
` CORRESPONDENT’S REFERENCE/DOCKET NO:
` 1436/222
` CORRESPONDENT E-MAIL ADDRESS:
` trademarks@sunsteinlaw.com
`
` ActiveVideo Networks, Inc.
`
`
`
`
`
`
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
`
`INTRODUCTION
`
`
`The Applicant appeals the Trademark Examining Attorney’s Final Refusal of the
`proposed mark, “CLOUDTV” for used with several goods and services identified in
`Classes 9, 38, 41, and 42. Registration has been finally refused because the proposed
`mark appears to be generic as applied to the proposed goods and services, because the
`applicant’s claim of acquired distinctiveness under Trademark Act Section (2) is
`insufficient to overcome the refusal, and because the mark is so highly descriptive of the
`applicant’s goods and services, that it is incapable of registration under Trademark Act
`Section 2(e)(1), 15 U.S.C. §1052(e)(1).
`
`It is respectfully requested that the Board affirm the refusal of the proposed mark.
`
`
`FACTS
`
`
`Filed on March 24, 2010, registration is sought for the standard character mark
`“CLOUDTV” in connection with the following goods and services: Software for
`developing and publishing applications for viewing, displaying, selecting, browsing,
`customizing, organizing, searching and navigating audiovisual and multimedia content on
`a television, gaming console, mobile device or other network-connected display;
`Computer e-commerce software to allow users to perform electronic business
`transactions via a video-on-demand service; Broadcasting of television programs and
`providing telecommunication connectivity services for transfer of images, messages,
`audio, visual, audiovisual, and multimedia works for viewing on a television, gaming
`
`

`
`console, mobile device or other network-connected display via a video-on-demand
`service via network-based media processing software; Provision of non-downloadable
`television and other audiovisual and multimedia content via a video-on-demand service
`via network-based media processing software; Providing temporary use of online non-
`downloadable network-based media processing software for viewing, displaying,
`selecting, browsing, customizing, organizing, searching and navigating audiovisual and
`multimedia content on a television, gaming console, mobile device or other network-
`connected display; providing technical support consulting services regarding
`troubleshooting of network-based media processing software; product development
`consultation related to the design, development and implementation of network-based
`media processing services and software; and providing temporary use of online non-
`downloadable network based media processing software for facilitation of purchases for
`viewing, displaying, selecting, browsing, customizing, organizing, searching and
`navigating audiovisual and multimedia content displayed on a television, gaming console,
`mobile device, or other network-connected display. Registration is sought under
`Trademark Act Section 1(a), based upon use in commerce.
`
`With respect to the Class 38, 41, and 42 services, Applicant has indicated that the mark
`has been in use since April 28, 2009. However the applicant did not make use of the
`mark with respect to the Class 9 goods until December 20, 2011.1
`
`On June 24, 2010, in the initial Office Action, registration was refused under Trademark
`Act Section 2(e)(1), as being merely descriptive. 15 U.S.C. §1052(e)(1); see TMEP
`§§1209.01(b), 1209.03 et seq. At that time, the applicant was also advised of several
`informalities requiring correction. Thereafter on October 12, 2010, the Applicant
`responded to the registration refusal and informalities. The response resolved the
`informalities but on November 15, 2010, the descriptive refusal was made FINAL.
`
`In response to the Final refusal, the Applicant filed a notice of appeal and Request for
`Reconsideration on May 12, 2011. At that time, the applicant again refuted the
`descriptive refusal and in the alternative, claimed that the mark had become a distinctive
`indicator of source for the Applicant’s goods and services. The Applicant claimed
`distinctiveness based upon use in commerce for over two years and based upon the
`Applicant’s efforts to promote its goods and/or services. In support of registration, the
`Applicant submitted three definitions of the term “cloud,” two copies of a declaration
`from Applicant’s Senior Vice President of Marketing, and a photograph of a tradeshow
`display.
`
`On June 6, 2011, the applicant’s distinctiveness claim was rejected and the descriptive
`refusal continued because of the highly descriptive nature of the wording. Then on
`December 7, 2011, the applicant responded and again claimed that the mark was
`distinctive of the goods and services based upon its two years of use in commerce,
`advertising of the mark through various exposures, trade shows, and over the Internet. In
`addition, applicant also claimed it had media coverage sufficient to establish
`
`1 During the course of prosecution, on July 12, 2012, Applicant filed an Amendment to Allege Use for the
`Class 9 goods which was accepted on August 6, 2012.
`
`

`
`distinctiveness. At that time, the applicant submitted a second declaration from its Senior
`Vice President of Marketing, nine public relations articles/press releases, the previously
`provided trade show photograph, and additional documentation. However, upon further
`review of the evidence, on January 11, 2012, the descriptive refusal was again continued,
`the distinctiveness claim rejected and registration was also refused because the proposed
`mark appeared to be generic as related to the goods and services. On July 11, 2012, the
`applicant responded to the generic refusal. With the response, the applicant provided
`more documentation and a third declaration from its Senior Vice President of Marketing.
`In addition, the applicant also submitted an Amendment to Allege Use for the Class 9
`goods.
`
`Upon consideration of all the documentation and arguments and claims asserted by the
`Applicant, on August 6, 2012, registration was again Finally refused under Trademark
`Act Section (2)(e)(1) because the mark is merely descriptive of the Applicant’s goods and
`services and because the mark appears to be generic as well. Accordingly, because of the
`highly descriptive and likely generic nature of the mark, the acquired distinctiveness
`claim was deemed insufficient to overcome the refusal.
`
`The case was returned to the Board and the appeal now resumes.
`
`ISSUES
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/IngridCEulin/
`Ingrid C. Eulin
`Examining Attorney
`Law Office 111
`(571) 272-9380
`Ingrid.Eulin@uspto.gov
`
`
`
`
`
`Robert Lorenzo
`Managing Attorney
`Law Office 111