To: | OA Labs LLC (docketing@finnegan.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86969408 - DEEPCONSUMER - 13237.0006 |
Sent: | 1/5/2017 2:22:00 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86969408
MARK: DEEPCONSUMER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: OA Labs LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/5/2017
On December 13, 2016, applicant (1) amended the identification of goods and services, (2) submitted a properly signed declaration, and (3) argued against the Section 2(d) refusal.
Number (1) is partially unacceptable for the reasons set forth below. The requirement to amend the identification of goods and services is modified and maintained.
Number (2) is acceptable and has been entered into the record. The requirement to submit a properly signed declaration has been satisfied.
Number (3) arguments have been considered. The Section 2(d) refusal has been withdrawn.
IDENTIFICATION OF GOODS AND SERVICES – MODIFIED AND MAINTAINED
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN.
The following wording in the identification of goods is indefinite and must be clarified because the function of the software is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 9: Software for artificial intelligence; software for video, image, voice, audio, text, social networking, and other data feeds; software for personalized offerings; software for retail services; software for consumer services; software for entertainment
Class 42: Software as a service, namely, software for artificial intelligence; software as a service, namely, software for video, image, voice, audio, text, social networking, and other data feeds; software as a service, namely, software for personalized offerings; software as a service, namely, software for retail services; software as a service, namely, software for consumer services; software as a service, namely, software for entertainment.
Applicant must clarify these indefinite terms by indicating the specific function of the software offered. For example: “Class 9: Computer software for artificial intelligence to allow customer value based handling” and “Class 42: Software as a service, namely, software for retail inventory management.”
Applicant may adopt the following identification, if accurate:
“Class 9: Software for machine learning; software for artificial intelligence in the nature of {indicate specific function of the software, e.g., software for artificial intelligence to allow customer value based handling, etc.}; software for data management; software for video, image, voice, audio, text, social networking, and other data feeds in the nature of {indicate specific function of the software}; software for personalized offerings in the nature of {indicate specific function of the software}; software for event management; software for retail services in the nature of {indicate specific function of the software}; software for consumer services in the nature of {indicate specific function of the software}; software for entertainment in the nature of {indicate specific function of the software}; software for banking; software for financial services; software for payment processing; software for fraud management; software for risk management; software for cyber security; software for industrial plant management; software for commercial plant management
Class 42: Software as a service, namely, software for machine learning; software as a service, namely, software for artificial intelligence in the nature of {indicate specific function of the software}; software as a service, namely, software for data management; software as a service, namely, software for video, image, voice, audio, text, social networking, and other data feeds in the nature of {indicate specific function of the software}; software as a service, namely, software for personalized offerings in the nature of {indicate specific function of the software}; software as a service, namely, software for event management; software as a service, namely, software for retail services in the nature of {indicate specific function of the software, e.g., software for retail inventory management, etc.}; software as a service, namely, software for consumer services in the nature of {indicate specific function of the software}; software as a service, namely, software for entertainment in the nature of {indicate specific function of the software}; software as a service, namely, software for banking; software as a service, namely, software for financial services; software as a service, namely, software for payment processing; software as a service, namely, software for fraud management; software as a service, namely, software for risk management; software as a service, namely, software for cyber security; software as a service, namely, software for industrial plant management; software as a service, namely, software for commercial plant management.”
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).
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.
PARTIAL ABANDONMENT ADVISORY
Class 9: Software for artificial intelligence; software for video, image, voice, audio, text, social networking, and other data feeds; software for personalized offerings; software for retail services; software for consumer services; software for entertainment
Class 42: Software as a service, namely, software for artificial intelligence; software as a service, namely, software for video, image, voice, audio, text, social networking, and other data feeds; software as a service, namely, software for personalized offerings; software as a service, namely, software for retail services; software as a service, namely, software for consumer services; software as a service, namely, software for entertainment.
The application will then proceed with the following goods and services in International Classes 9 and 42 only:
Class 9: Software for machine learning; software for data management; software for event management; software for banking; software for financial services; software for payment processing; software for fraud management; software for risk management; software for cyber security; software for industrial plant management; software for commercial plant management
Class 42: Software as a service, namely, software for machine learning; software as a service, namely, software for data management; software as a service, namely, software for event management; software as a service, namely, software for banking; software as a service, namely, software for financial services; software as a service, namely, software for payment processing; software as a service, namely, software for fraud management; software as a service, namely, software for risk management; software as a service, namely, software for cyber security; software as a service, namely, software for industrial plant management; software as a service, namely, software for commercial plant management.
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
ASSISTANCE
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Anna H. Rosenblatt/
Examining Attorney
Law Office 120
(571) 272-4599
anna.rosenblatt@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.