From: Fairbanks, Ron

Sent: 10/6/2012 8:07:11 AM

To: TTAB EFiling

CC:

Subject: U.S. TRADEMARK APPLICATION NO. 85264957 - 5824-0105US1 - Request for Reconsideration Denied - Return to TTAB - Message 1 of 12

************************************************* Attachment Information: Count: 5 Files: CIBA-1-1.jpg, CIBA-1-2.jpg, CIBA-2-1.jpg, CIBA-2-2.jpg, 85264957.doc UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

APPLICATION SERIAL NO. 85264957

MARK: *85264957* CORRESPONDENT ADDRESS: JAMES M SLATTERY BIRCH STEWART KOLASCH & BIRCH LLP PO BOX 747 GENERAL TRADEMARK INFORMATION: FALLS CHURCH, VA 22040-0747 http://www.uspto.gov/main/trademarks.htm

APPLICANT: Sina.Com Technology (China) Co. Ltd.

CORRESPONDENT’S REFERENCE/DOCKET NO: 5824-0105US1 CORRESPONDENT E-MAIL ADDRESS: [email protected]

REQUEST FOR RECONSIDERATION DENIED

ISSUE/MAILING DATE: 10/6/2012

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below. See 37 C.F.R. §2.64(b); TMEP §§715.03(a), 715.04(a). The requirement(s) and/or refusal(s) made final in the Office action dated January 30, 2012 are maintained and continue to be final. See TMEP §§715.03(a), 715.04(a).

In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues. Accordingly, the request is denied.

In response to the final refusal to register, the applicant argues the refusal to register pursuant to Trademark Act Section 2(e)(1) is not warranted because the Examining Attorney’s translation of the mark is incorrect and not merely descriptive in relation to any of its goods and services.

Specifically, the applicant argues that based upon its research, the meaning/translation of the Chinese characters that transliterate to weibo do not translate to “micro-(ging).”

In support of its argument, the applicant has included:

a.) Signed declarations from twenty-nine (29) individuals residing in the United States that use the applicant’s service, are fluent in both the Chinese and English languages, and state that while each individual Chinese character has its own meaning and is pronounced weibo; neither the combination of Chinese characters or weibo has any meaning. Applicant’s Exhibit 12. b.) Signed declarations from two residents of , , Fang Yinong and Wen CAO, stating that the Chinese characters at issue, when used together, do not have any meaning, and that the sound of weibo can refer to various existing Chinese words including but not limited to “microwave” and “scarf.” Additionally, they state that the term “” is a new and made-up word in English and cannot be found in a Chinese dictionary. Applicant’s Exhibits 2 and 3. c.) A signed declaration from the applicant’s Legal Director stating that the applicant chose the term weibo in 2009, which is the pronunciation for “scarf” in Chinese. Applicant’s Exhibit 4. d.) Its findings using Google Translate that indicate the term weibo does not translate to “microblogging” in Chinese, and further that it suggests the Chinese characters that mean “microwave.” Applicant’s Exhibit 1. e.) Its findings using ’s BING translator showing weibo in Simplified Chinese to English, results in weibo. Applicant’s Exhibit 9. f.) An additional finding from Google Translate that shows “microblog” translated to Chinese comprises four (4) Chinese characters [two sets of repeating characters]. Applicant’s Exhibit 11. g.) A finding from Google Oversatt [the Swedish version of Google Translate] that shows inputting “microblog” from Swedish to traditional Chinese resulted in Chinese characters different than the characters found in the applicant’s applications. Applicant’s Exhibit 10. h.) Results from the applicant’s search of the Kingsoft English-Chinese Online Dictionary found at dict.en.iciba.com that weibo has no meaning. Applicant’s Exhibits 7 and 8.

Additional arguments include:

That the examining attorney incorrectly input the term “microblogging” in Google Translate to arrive at the conclusion that it translated to weibo, and that the examining attorney failed to provide the resources relied upon by the Office’s STIC-Translation used in arriving at its conclusion that the Chinese characters and its transliteration [weibo] translate to “microblog(ging)”; That the examining attorney inappropriately used Internet evidence from foreign news sources; and that many of the goods/services that were refused based upon the merely descriptive finding, while technology-related, are not related to micro-blogging and that a blanket refusal is not warranted.

The examining attorney has reviewed the applicant’s arguments and evidence in support thereof, and is not persuaded.

By way of review, at the time of the initial examination, the examining attorney contacted the USPTO’s translation branch regarding the term “weibo” and/or the Chinese characters that transliterate to weibo, and was informed that the term “weibo” is an abbreviation formed from the first characters of the two-character combination “weixiao boke” [wei bo微博from weixiao boke 微小博客]. The term weibo is formed from “wei” - which means “minute; tiny” and is used whenever the prefix “micro” is called for; and “bo” - which means “abundant, plentiful, rich.” It is the combination of “wei” and “bo” that translates to “microblog(ging).”

The Office translator’s research from an English-Chinese online dictionary [iCIBA] was attached with the first Office action, and appears on the third page of the attachments to that Office action.

The examining attorney then visited the Google translate page and input the terms “microblogging” and “microblog” [English to Chinese (Simplified) and received the phonetic translation of “Wēi bó” for both. The examining attorney has repeated the Google translation request with the same results, but now including the Chinese characters at issue. Further, the examining attorney has performed a new Google Translate search by inputting the Chinese characters at issue resulting in a finding of the phonetic “Wēi bó” and the English translation of “microblog(ging).”

The examining attorney then provided a dictionary definition of the word “microblogging” as well as an article on microblogging from Wikipedia. Finally, the examining attorney provided an additional Wikipedia article regarding the applicant [SINA Corporation]. The article provided that “” literally means “Sina Microblogging” and that “weibo” is the Chinese word for “microblogging.” Accordingly, the refusal to register was issued.

Applicant’s Response of December 19, 2011

In response to the refusal, the applicant included individual articles from Wikipedia articles regarding “Weibo,” “Sina Weibo,” “,” and “Microblogging.” The article on “Weibo” provides the following:

“Weibo” may refer to:

Microblogging in China, or China-based microblogging services, including: o Fanfou, one of the earliest Chinese weibo services o NetEase Weibo (网易微博), launched by NetEase o People's Weibo (人民微博), launched by People's Daily o Phoenix Weibo (凤凰微博), launched by ] o Sina Weibo (新浪微博, weibo.com), launched by SINA Corporation, the most visited Chinese weibo service o Weibo (搜狐微博), launched by Sohu o Weibo (腾讯微博), launched by Tencent Holdings o Weibo (town), a town in , Hebei, China o Weibo Circuit, a circuit in Chinese Tang Dynasty, northeast to the recent Daming County, Hebei, China.

The applicant argued:

The Trademark Examining Attorney will note that “Sina Weibo” set forth in the definition, was “launched by Sina Corporation, the most visited Chinese Weibo service.” This definition refers to the Applicant, namely Sina.com Technology (China) Co., Ltd. At least, in this definition, there are at least different meanings for the term “weibo” namely, 1) microblogging in China, 2) Weibo Town, a town in Heibi, China, and 3) Weibo Circuit, a circuit in Chinese Tang Dynasty. In other words, the meaning of “weibo” is not quite clear.

The article on “Microblogging in China” provides:

Weibo (微博) is the Chinese word for "microblog". It refers to mini-blogging services inclusive of providing a social chatting and sharing platform in China. They are mostly restricted to the services based in China, because of media censorship controlled by Chinese government.

Terms

"Wei boke" (微博客) and "weixing boke" (微型博客), commonly abbreviated as "weibo" (微博), are the Chinese words for "microblog". A China-based microblogging service often names itself with the term Weibo by putting it after the name of the service (e.g. Sina Weibo). A homonym "围脖" (: Wéibó; literally "scarf around the neck") is used as an Internet slang for "weibo".

Weibo , micro blog, is a communication and information exchange platform for users. Internet users can set up real time information sharing communities individually, and upload and update information in about 140 characters through different types of clients, such as WEB and WAP. The earliest and most famous micro blog in the world is in the USA. Sina and Tencent are two top players in China's Weibo market. Sina Weibo, launched by Sina in August, 2009, is considered as the first and most popular micro blog in China.

Sina Weibo is the most visited site, followed by . Sina has used the domain name weibo.com for the service since April 2011. Because of the site's popularity and domain name, Weibo is often specifically used to refer to Sina Weibo. Finally, the applicant provided as evidence a translation and definition for “blog” from the website Chinese.Yabla.com that shows one translation as “bo ke” meaning “web log, blog, blogger.” The examining attorney has visited that same website. A search of “weibo” yields a result showing the two Chinese characters at issue, above the transliteration “wēi bó” and a translation/meaning of “micro-blogging, microblog.” See attached printouts.

The bulk of the applicant’s attachments supported the examining attorney’s merely descriptive finding [or disclaimer requirement] as well as the competitive need argument. Accordingly, on February 17, 2012, the examining attorney made final the refusal/requirements.

Request for Reconsideration Arguments

The arguments found in the Request for Reconsideration regarding the examining attorney’s evidence are not persuasive.

The examining attorney attached various Internet news articles to its final refusal, including some from foreign websites, that evidenced the descriptive nature and common usage of the term weibo, and that this term is understood to be the foreign equivalent of “microblog(ging).”

As long as it is written in the English language, information originating on foreign websites or in foreign news publications that are accessible to the United States public may be relevant to discern United States consumer impression of a proposed mark. The probative value of such evidence will vary depending upon the context and manner in which the term is used. In Bayer, NEXIS® evidence that originated in foreign publications was deemed to be of “some probative value with respect to prospective consumer perception in the United States,” the Court noting “the growing availability and use of the internet as a resource for news, medical research results, and general medical information.” 488 F.3d at 969, 82 USPQ2d at 1835. TMEP §710.01(b).

The examining attorney attaches additional news articles from sources including:

CNN.com [found at: http://www.cnn.com/2012/08/02/world/asia/china-weibo- olympics/index.html]: Micro-blogging sites -- called "Weibo" in Chinese -- have exploded in China since one of the country's biggest web portals, Sina, launched its Twitter-like service in 2009, a year after the Beijing Olympics.

Now several leading Weibo sites give an estimated 250 million users a platform for unprecedented diversity of opinion on the world's biggest sporting event and beyond.

Time.com [found at http://newsfeed.time.com/2011/02/24/u-s-ambassador-to- china-huntsmans-name-censored-on-chinese-twitter-clones/]: Be that as it may, his name became taboo on two of the most popular Chinese Twitter knock offs, Sina Weibo and QQ Weibo. Reportedly, looking for Mr Huntsman name in Chinese, “[]”, on both weibos (which means “microblog”) returns no results, according to Shanghaiist. Doing so on , China’s leading search engine, seems to show normal results.

Reuters.com [found at http://www.reuters.com/article/2012/06/07/us-china- internet-idUSBRE8560AM20120607]: In a draft update of the government's "Methods for Governance of Internet Information Services", China is proposing to widen the definition of Internet information service providers to include online forums, and microblogs.

It will also require microblog operators, like and Tencent Holdings, to obtain an administrative license to run the popular service.

In recent months, China's authoritarian government has tightened censorship over the free-wheeling Internet industry, especially its microblogs or Weibos, as the country prepares for a once-a-decade leadership transition later this year.

China Internet Watch [found at: http://www.chinainternetwatch.com/1015/baidu-launched-microblogging- tool/#ixzz28BbQR2Ks]: Baidu launched a microblogging application for microbloggers to post to multiple Weibo platforms including Sohu Weibo, Tencent weibo, and Netease weibo.

Users can search on Baidu “write weibo post” and this application will show up embedded in search results. Users can select the Weibo platform, write the post and publish to all selected platforms.

It does not include Sina Weibo because Sina does not provide API to Baidu.

The signed declarations found in the Request for Reconsideration contradict the arguments and evidence in support thereof found in the applicant’s first response. Based upon the applicant’s evidence, the translation/meaning of “weibo” and the Chinese characters that transliterate to “weibo” have gone from “no meaning” to “microblog(ging)” to “multiple meanings,” to the current “microwave,” “scarf” and “no meaning in English.”

Descriptiveness is considered in relation to the relevant goods and/or services. The fact that a term may have different meanings in other contexts is not controlling on the question of descriptiveness. In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); TMEP §1209.03(e).

The fact that a descriptive word or term is not found in the dictionary is not controlling on the question of registrability. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977); TMEP §1209.03(b).

Vocabulary used in the computer and electronics fields is particularly noted for changing rapidly, and descriptiveness is determined based on the facts and evidence in the record at the time registration is sought. In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1088 (TTAB 2001); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000) (noting “a year or two is an eternity in ‘Internet time,’ given the rapid advancement of the Internet into every facet of daily life”). A term that was once arbitrary or suggestive may lose its distinguishing and origin-denoting characteristics through use in a descriptive sense over a period of time, and come to be regarded by the purchasing public as nothing more than a descriptive designation. In re Digital Research, Inc., 4 USPQ2d 1242, 1243 (TTAB 1987); In re Int’l Spike, Inc., 190 USPQ 505, 507 (TTAB 1976).

Thus, third-party registrations of applicant’s mark or portions of applicant’s mark are not probative on the question of descriptiveness. Each case must be taken on its own facts. In re Pennzoil Prods. Co., 20 USPQ2d 1753, 1758 (TTAB 1991); TMEP §1209.03(a).

Moreover, the fact that an applicant may be the first and only 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. See In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985); TMEP §1209.03(c).

The applicant’s arguments against the examining attorney’s Wikipedia evidence are also unpersuasive. Nearly half of the sixty (60) pages of evidence attached to its response of December 19, 2011 comprise Wikipedia articles.

Articles from the online Wikipedia® encyclopedia may be used to support a refusal or requirement, provided the applicant has an opportunity to rebut such evidence. See In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1032 (TTAB 2007); TBMP §1208.03; TMEP §710.01(b).

The examining attorney has corroborated the evidence via the evidence provided by the Office’s translation branch as well as additional research performed by the examining attorney – the results of which have been attached to the two previous Office actions as well as the current action.

The applicant’s negative evidence from Google and the iCIBA websites [where applicant was unable to find translations or transliteration that form the basis of the refusal] are unpersuasive where the examining attorney (a) provided such evidence from these websites in the first Office action, and (b) has duplicated and added to such evidence in response to the Request for Reconsideration.

Just as the term(s) “microblog(ging)” was born within the past ten years, the term “weibo” is a relatively new term. The evidence of record indicates that it is the foreign equivalent of “microblog(ging)” and is therefore merely descriptive of the applicant’s goods and services that are used in connection with or that support the microblog(ging) industry. Accordingly, the refusal and translation/transliteration requirements are maintained.

The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date the final Office action was issued/mailed. See 37 C.F.R. §2.64(b); TMEP §§715.03, 715.03(a), (c).

If time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to comply with and/or overcome any outstanding final requirement(s) and/or refusal(s) and/or to file an appeal with the Board. TMEP §715.03(a), (c). However, if applicant has already filed a timely notice of appeal with the Board, the Board will be notified to resume the appeal when the time for responding to the final Office action has expired. See TMEP §715.04(a).

/Ronald L. Fairbanks/ Trademark Examining Attorney Law Office 117 (571) 272-9405 [email protected]