The OPENCL trademark applications that were filed under numbers 77844736 (colour logo) and 77844718 (black and white logo) have now received office action letters from the United States Trademark Office.
The application of 77844736 (colour logo) received a second office action letter that stated the applicant (Apple Inc.) must insert a disclaimer of OPENCL in the application because it identifies the generic name of an open computing language. Apple attached web pages to its previous office action response to show that OPENCL is the name for an open standard computing language used in Applicant’s operating system to communicate with other programs/devices.
The attached evidence to the previous response, also provides the basis for the fact that an applicant may be the first user of a merely descriptive designation is not dispositive on the issue of descriptiveness where, as here, the evidence shows that the word or term is merely descriptive.
Hence Apple Inc, must set forth in its response to this outgoing office action a disclaimer stating
“No claim is made to the exclusive right to use “OPENCL” apart from the mark as shown.”
Also cited in this office action is the fact that for consideration of an allegation of use, the goods for the mark claimed for have not been identified specifically.
The Office Action states that registration may be refused on the ground that the identified goods consisting of “application programming interface” are not “goods in trade.”
The basis for the USPTO citing such reasons is, as per examining attorney Michael Webster : “The fact that Applicant identifies the programming interface as “computer software” does not create goods in trade. The attached evidence for “OPENCL” and “Application Programming Interface” identifies a language or means of communicating. It does not identify computer software.”
The OPENCL trademark application filed under number 77844718 (black and white logo) also received its second Office Action Letter from the United States Patent and Trademark Office that states in addition to the above reasons cited;
“applicant must submit the following:
(1) A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The specimen was in use in commerce at least as early as the filing date of the application.” ”
This is because the examining attorney at the USPTO, Michael Webster has refused registration on grounds of the specimen not being acceptable because it does not show the applied-for mark used in connection with any of the goods and/or services specified in the application.
How will Apple Inc.’s attorney of record Lisa G Widup respond?