UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 6/30/2019

 

This Office action is in response to applicant’s communication filed on June 6, 2019.

 

Applicant’s statement that the applied-for mark CAIT is an acronym coined by applicant and not in common use in the industry as a descriptive term is noted.  Applicant’s amendments to the identifications of goods have been entered, but are not entirely sufficient to clarify the nature of the goods.  The requirement for an acceptable identification of goods is continued, as indicated below.

 

Identification of Goods Must be Further Clarified

 

A portion of the amended wording in the identification of goods remains indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The language “autonomous or semi-autonomous devices” and “artificial intelligence agents” as it appears throughout the identification must be clarified:  what is the nature of the autonomous or semi-autonomous devices -- are these autonomous cars?  Vacuum cleaners?  What is meant by “artificial intelligence agents”?  What is the form of the agent?  Are these robots? 

 

Additionally, where the term “system” is used in the identification, applicant must specify the items comprising the system.

 

The following clarifications of the identification language are suggested and may be adopted if accurate:

 

·       Downloadable software for [specify function of the software in relation to the devices, robots, agents; e.g., controlling, etc.] autonomous or semi-autonomous devices, robots, and artificial intelligence agents [clarify] programmed to perform tasks in collaboration with other autonomous or semi-autonomous devices, robots, and artificial intelligence agents [clarify];

·       downloadable software systems comprised of [specify the items comprising the systems, e.g., computer hardware, operating software, etc.] in for use with autonomous or semi-autonomous devices, robots, and artificial intelligence agents [clarify the nature of the devices and agents] programmed to collectively learn and share data, information, and intelligence with other autonomous or semi-autonomous devices, robots, and artificial intelligence agents [clarify the nature of the devices and agents];

·       downloadable software for autonomous or semi-autonomous devices, robots, and artificial intelligence agents [clarify the nature of the devices and agents] used to perform tasks [specify the nature of the tasks] in commercial and residential settings to collectively learn and share data, information, and intelligence with each other;

·       downloadable software system comprised of at least a medium storing instructions and a processor [clarify the nature of the items comprising the system; e.g., memory modules, computer hardware, computer processor, operating software, etc.] to execute the stored instructions relating to artificial intelligence and for executing instructions for collaborative sharing of data, information, and intelligence between multiple autonomous or semi-autonomous mobile or semi-mobile devices, and or robots, and or artificial intelligence agents [clarify the nature of the devices and agents];

·       downloadable software system comprised of at least of memory, a medium containing executable instructions, and at least one processor [clarify the nature of the items comprising the system; e.g., memory modules, computer hardware, computer processor, operating software, etc.], capable of executing the instructions where such instructions relate to artificial intelligence and for executing instructions for collective sharing of data, information, and intelligence between multiple autonomous or semi-autonomous devices, and or robots, and or artificial intelligence agents [clarify the nature of the devices and agents];

·       downloadable operating system software and firmware for operating system programs of mobile or vehicular autonomous or semi-autonomous devices, robots, and artificial intelligence agents [clarify the nature of the devices and agents];

·       downloadable software and firmware for collective sharing of data, information, and intelligence between autonomous or semi-autonomous devices, robots, and artificial intelligence agents [clarify nature of the devices and agents];

·       downloadable software providing autonomous or semi-autonomous devices, robots, and artificial intelligence agents [clarify the nature of the devices and agents] with artificial intelligence technology.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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 $125 per 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.  

 

 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107

USPTO

571/272-9157

jeri.fickes@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/30/2019 FOR U.S. APPLICATION SERIAL NO. 88121903

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 6/30/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

Jeri Fickes

/Jeri Fickes/

Trademark Examining Attorney

Law Office 107

USPTO

571/272-9157

jeri.fickes@uspto.gov

 

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.