To: | SAFEAI (bibhrajit@safeai.ai) |
Subject: | U.S. Trademark Application Serial No. 88130872 - SAFEDRIVE - T2018-004 |
Sent: | July 31, 2019 08:15:57 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88130872
Mark: SAFEDRIVE
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Correspondence Address:
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Applicant: SAFEAI
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Reference/Docket No. T2018-004
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 31, 2019
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.
How to respond. Click to file a response to this nonfinal Office action
This Office action is in response to the applicant’s communication filed on 7/04/19. The amended identification of goods submitted is accepted. However, the potential Section 2(d) refusal regarding Application Serial Number 87947083 is maintained and CONTINUED. In this regard, the applicant argues that the channels of trade for the respective goods differ. The examiner finds this argument unpersuasive. The registrant’s broadly stated goods, i.e. vehicular safety sensor and detector units, are presumed to be for use in the safe autonomous navigation of motor vehicles, i.e. for use in the same channels of trade as the applicant’s software, rendering confusion highly likely in this instance. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and, therefore, they are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, the respective goods are highly related.
Furthermore, please see the new issue addressed below.
CHANGE IN OWNERSHIP
Applicant has requested that the applicant’s name be amended [i.e. from SAFE AI (corporation of Delaware) to SAFEAI (corporation of California)]; however, applicant has not provided or recorded in the USPTO database ownership transfer documentation or any other documentation showing transfer of title nor has applicant indicated whether the assignee is a successor to applicant’s business. An intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of the applicant’s business to which the mark pertains, if that business is ongoing and existing. 15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; TMEP §501.01(a); see Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1146 (TTAB 2013); Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996). Accordingly, the request to amend the applicant name is denied until (1) clear chain of title to the new party has been established and (2) a statement that the assignee is a successor to applicant’s business is provided. 37 C.F.R. §2.61(b); TMEP §814.
To establish chain of title to the application, one of the following must be satisfied:
(1) The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.; OR
(2) The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner. However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.
TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).
Assignments and other documents affecting title may be filed electronically. There is a fee for recording ownership changes. 37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d). Recording an assignment or other ownership transfer document does not constitute a response to an Office action. TMEP §503.01(d). Applicant must still file a separate response to this Office action. See id.
/Zhaleh Delaney/
Trademark Attorney
Trademark Law Office 116
(571) 272-9153
Zhaleh.Delaney@uspto.gov
RESPONSE GUIDANCE