IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant : Prolexic Technologies, Inc.

Appl. No. : 77/756,904

Filed : 06/11/2009

Mark : Cloud Security Provider

Examining Attorney : Lott, Maureen Dall

Law Office : 117

A M E N D M E N T

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

Examining Attorney Dall:

Responsive to the Office action dated September 9, 2009, kindly

amend the above-identified application as follows:

Amend the identification of Goods:

Class 045. Computer network security services,
namely, mitigating distributed denial of service
(DDoS) attacks on computer servers connected to the
Internet computer network security services, namely,
monitoring of public-facing network traffic for
security purposes, for purposes of mitigating
distributed denial of service (DDoS) attacks on
computer servers connected to the Internet.
Applic. No. 77/756,904
Response to Office Action Dated September 09, 2009
Response Mailed November 16, 2009

Remarks:

Search/Prior-filed, Pending Application:

The Examining Attorney provisionally refused registration of the

instant application in light of earlier-filed application

77/656,237 based on Section 2(d) of the Trademark Act.

Application 77/656,237 was filed on January 26, 2009. The mark

in the application is CLOUD SECURITY. The following is the

listing of services:

IC 009. Software and downloadable software for
protecting computers and networks from unauthorized
users and software

IC 038. Telecommunications gateway services;
transmission of information by computer communications
networks; and data transmission and reception services
via telecommunication means

IC 042. Computer programming, updating computer
software for others, providing on-line non-
downloadable software for protecting computers and
networks from unauthorized users and software,
computer virus protection services, software
configuration of computer networks, performance
monitoring and analysis of computer networks, and
computer network security services, namely,
restricting access to computer networks by
unauthorized individuals

The mark of the instant application is CLOUD SECURITY PROVIDER.

The following is the amended listing of services:

Page 2 of 9
Applic. No. 77/756,904
Response to Office Action Dated September 09, 2009
Response Mailed November 16, 2009

Class 045. Computer network security services,
namely, monitoring of public-facing network traffic
for security purposes, for purposes of mitigating
distributed denial of service (DDoS) attacks on
computer servers connected to the Internet.

The mark of the instant junior application is not likely to

create a likelihood of confusion with the senior application’s

mark because the services are different. The services being

sold by the junior applicant are monitoring of public-face

network traffic in order to detect and mitigate DDoS attacks.

In contrast, the services being sold by the senior applicant are

configuring and programming computers within a client’s network

with network security programs and antivirus programs. Junior

applicant’s services are typically sold to enterprise level

customers who have large amounts of public facing, inbound and

outbound, internet traffic that makes them targets for DDoS

attacks. Senior applicant sells security services and goods

that protect local computer systems. Senior applicant’s

services are not able to protect against DDoS attacks.

Junior applicant’s mark and senior applicant’s mark are not

identical. Junior applicant’s mark is CLOUD SECURITY PROVIDER.

The senior applicant’s mark is CLOUD SECURITY. The marks are

not identical. The marks have a different appearance in that

junior applicant’s mark is longer.

Page 3 of 9
Applic. No. 77/756,904
Response to Office Action Dated September 09, 2009
Response Mailed November 16, 2009

The customers of Applicants goods are sophisticated purchasers

of services for enterprise level of computers. The

sophisticated buyers will be able to discern the differences in

the marks and the differences in services and markets so that

any likelihood of confusion is minimized.

If the Examining Attorney is not persuaded that there is no

likelihood of confusion, Applicant requests that she checks the

status of application 77/656,237 before writing another

rejection. Application 77/656,237 was rejected when this

response was being written.

Mark is Merely Descriptive under Section 2(e)(1):

The examining attorney has refused registration on the Principal

Register because the proposed mark is merely descriptive of

computer network security services, namely, mitigating

distributed denial of service (DDoS) attacks on computer servers

connected to the Internet. As discussed below, we believe that

not only did the U.S. Patent and Trademark Office fail to meet

its burden of showing by clear evidence that applicant’s mark is

primarily merely descriptive (See In re Pennzoil Products Co.,

20 U.S.P.Q.2d 1753, 1758 (TTAB 1991)), but that applicant’s mark

is in fact not primarily merely descriptive. “There is a thin

line between a suggestive and merely descriptive designation,

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Applic. No. 77/756,904
Response to Office Action Dated September 09, 2009
Response Mailed November 16, 2009

and where reasonable men may differ, it is the Board’s practice

to resolve the doubt in applicant’s favor and publish the mark

for opposition.” In re Intelligent Medical Systems, Inc., 5

U.S.P.Q.2d 1674, 176 (TTAB 1987); In re Aid Laboratories, Inc.,

221 U.S.P.Q.2d 1215, 1216 (TTAB 1983); In re Gourmet Bakers,

Inc., 173 U.S.P.Q.2d 565, 565 (TTAB 1972).

In Support of the refusal, the examining attorney has submitted

the following definitions of the words in the mark. “‘Cloud’

refers to a type of network like the internet, and ‘security’

refers protection. Meanwhile, ‘provider’ refers to a supplier,

e.g. supplier of services.” The examining attorney then

indicated, “In This case, applicant is supplying internet-

related network protection services. Therefore, it is clear

that the wording in the mark merely describes a feature of the

services.”

However, the mere combination of “Cloud” “Security” and

“Provider” does not convey the exact nature of the goods.

Although the words are each commonly used in computer and

internet industry in separate contexts, the combination formed

by the union of these three terms renders the mark either

suggestive or distinctive of the goods. In re Shutts, 217

U.S.P.Q. 363 (TTAB 1983) (SNO-RAKE) held not merely descriptive

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Applic. No. 77/756,904
Response to Office Action Dated September 09, 2009
Response Mailed November 16, 2009

of snow removal hand tool); In re Colonial Stores, Inc., 147

U.S.P.Q. 382 (CCPA 1968) (SUGAR & SPICE held not merely

descriptive of bakery products).

The mark of the instant application suggests two potential

meanings: 1) Cloud Security-Provider and 2) Cloud-Security

Provider.

First, an average customer could interpret the mark of the

instant application as meaning a cloud security-provider. That

is, the meaning could be that the applicant is a security

provider that provides those services from the Internet (i.e.

the Cloud).

Second, an average customer could interpret the mark of the

instant application as meaning a cloud-security provider. That

is, the meaning could be that the applicant provides internet-

security (i.e. “cloud-security) for services and traffic over

the Internet.

When there is a certain ambiguity about the mark, and no

information about any quality or characteristic of the goods is

conveyed with a degree of particularity, the TTAB has held (in a

non-precedent opinion) that mark is suggestive and should not be

rejected under Section 2(e)(1).

Page 6 of 9
Applic. No. 77/756,904
Response to Office Action Dated September 09, 2009
Response Mailed November 16, 2009

In In re Odin Systems International, Inc. (2002), the TTAB

reversed an Examining Attorney’s rejection under Section

2(e)(1). The applicant appealed the rejection and argued that,

“The mark was ambiguous and did not convey, with any degree of

particularity, an immediate idea or characteristic about the

goods. Therefore, according to applicant, the mark is only

suggestive.” In that case, the Examining Attorney argued that

there was a merely descriptive meaning. The Board held that the

Examining Attorney bears the burden of showing a merely

descriptive meaning and, in light, of the multiple meanings, the

Examining Attorney had not met that burden. Accordingly, the

Board held the mark suggestive and, therefore, registerable.

In this case, in light of the ambiguity in the meaning, it is

not clear whether an average customer would consider the mark

merely descriptive. Accordingly, the mark is suggestive. Even

if the Examining Attorney is not fully persuaded, the Examining

Attorney should heed the Board’s warning and allow the mark to

be published. Problems with the mark could be less arbitrarily

resolved during the opposition period.

Accordingly, the Examining Attorney should reconsider her

holding that the mark is merely descriptive and allow the mark

to publish because it is suggestive and requires some

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Applic. No. 77/756,904
Response to Office Action Dated September 09, 2009
Response Mailed November 16, 2009

interpretation or understanding before its qualities can be

understood.

Identification and Classification of Services:

The Examining Attorney asked that the term “mitigating” be

clarified. The Applicant’s service reduces the severity of a

DDoS attack so that a customer’s computer can continue

performing legitimate business despite a DDoS attack. A DDoS

attack involves a large number of infected computers on the

internet performing so many information requests (e.g. page

refreshes) to a customer’s web server that the web server can no

longer answer legitimate requests. The Applicant’s service

differentiates and filters illegitimate traffic and allows the

legitimate traffic to continue to reach the server.

Accordingly, Applicant’s service lessens the effect (i.e.

“mitigates”) a DDoS attack.

The listing of services has been amended to clarify the listing.

As listed previously in the response, the listing of services

now is the following:

Class 045. Computer network security services,
namely, monitoring of public-facing network traffic
for security purposes, for purposes of mitigating
distributed denial of service (DDoS) attacks on
computer servers connected to the Internet.

Page 8 of 9
Applic. No. 77/756,904
Response to Office Action Dated September 09, 2009
Response Mailed November 16, 2009

Multiple-Classification Requirement:

In light of the amended listing of services, Applicant believes

that there is no need for multiple class listings.

Conclusion:

Reconsideration of the application and a Notice of Allowance is

requested.

Respectfully submitted,

/Loren D. Pearson/

LOREN DONALD PEARSON
Registered Patent Attorney
Board Certified Intellectual Property Attorney
Reg. No. 42,987
Florida Bar 0095151
FLEIT GIBBONS GUTMAN BONGINI & BIANCO, PL
21355 E. Dixie Highway
Suite 115
Miami, FL 33180
Tel.: (305)830-2600
Fax: (305)830-2605

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