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.

 

TEAS RF applicants must submit responses and other documents electronically or pay an additional fee per international class.  Please see the TEAS RF application response requirements, which are set forth at the end of this Office action.

 

ISSUE/MAILING DATE: 1/17/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

Results of Trademark Act Section 2(d) Search

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

Summary of Issues that Applicant Must Address

 

1.     Requirement to Clarify the Identification of Services

2.     Multiple Class Requirements - Section 1(b) Basis (if applicable)

3.     Disclaimer Requirement

 

 

Requirement to Clarify the Identification of Services

 

Applicant should delete the comma after “consulting services” in the clause “Consulting services, related to designing, creating, implementing and maintaining computer software for academic professionals to conduct research within an academic institution”.  See TMEP §1402.01(a).

 

In the clause “Development of computer platform recorded on data media (software) designed for use in education”, applicant must delete the parentheses and incorporate the parenthetical information into the remainder of the description.  See TMEP §1402.12.

 

The wording “Coordination services for events focusing on teaching AI, ML, and DL software development, planning, and programming skills” in the identification of services is indefinite and must be clarified because this wording could identify services in another international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, applicant must clarify the nature of the coordination services and the type of “events focusing on teaching” and classify the services in the proper international class.

 

The wording “Consulting services related to curricula, teaching methods, and resources for teaching the principles and application of AI, ML, DL, data science, statistical analysis and modeling, and related fields” in the identification of services is indefinite and must be amended to make clear the subject matter of the consulting services with respect to “resources for teaching”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Consulting services are classified based upon the subject matter of the services.  TMEP §1402.11(e).  Applicant must also reclassify the services in the appropriate international class.

 

Applicant has classified “Research and development of software programming teaching methods; Research and development of teaching methods and course development in the fields of AI, ML, DL, data science, statistical analysis and modeling and related fields” in International Class 42; however, the proper classification is International Class 41 because research and development pertaining to teaching methods and course development is classified in International Class 41.  Therefore, applicant may respond by (1) adding International Class 41 to the application and reclassifying these services in the proper international class, (2) deleting “Research and development of software programming teaching methods; Research and development of teaching methods and course development in the fields of AI, ML, DL, data science, statistical analysis and modeling and related fields” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “Storing, hosting, sharing, and communicating information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields” in the identification of services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could include telecommunications services in the nature of “electronic transmission of information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields” and it could include “electronic storage of information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields” in International Class 42.  Therefore, applicant must clarify the nature of the service activities regarding “Storing, hosting, sharing, and communicating information” and classify the services in the appropriate international class(es).

 

The wording “Hosting and sharing of software, code, and algorithms, and technical information for AI, ML, and DL applications, data science, statistical analysis and modeling and related fields” in the identification of services is indefinite and must be clarified to make clear the nature of the “hosting” and “sharing” activities applicant provides.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Scope Advisory

 

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).

 

Suggested Amendments

 

Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as this: strikethrough.  Applicant should enter its amendments in standard font.  If applicant wishes to accept the suggested deletions, applicant must manually delete the struck through wording in any USPTO response form.  Copying and pasting the language below will not result in deletion of the struck through wording, which will remain within the identification.

 

Applicant may adopt the following identification of services, if accurate:

 

International Class 41:  Coordination services, namely, organizing and arranging for events educational programs focusing on teaching Artificial Intelligence (AI), Machine Learning (ML), and Deep Learning (DL) software development, planning, and programming skills; Consulting services related to curricula, teaching methods, and resources educational materials for teaching the principles and application of AI, ML, DL, data science, statistical analysis and modeling, and related fields; Research and development of software programming teaching methods; Research and development of teaching methods and course development in the fields of AI, ML, DL, data science, statistical analysis and modeling and related fields

 

International Class 42:  Consulting services in the field of the design of computer software for use in the education industry, specifically software with Artificial Intelligence (AI) Machine Learning (ML) and Deep Learning (DL), data science, and statistical analysis and modeling capabilities; Consulting services in the field of design, planning, and implementation project management of computer software testing for use in the education industry; Consulting services in the field of design, selection, implementation and use of computer software systems for others; Consulting services related to designing, creating, implementing and maintaining computer software for academic professionals to conduct research within an academic institution; Custom design and development of computer software for use in the education industry; Development of computer software platform recorded on data media (software) designed for use in education; Custom design and development of AI, ML, DL, statistical analysis and modeling software for teaching and education purposes; Coordination services for events focusing on teaching AI, ML, and DL software development, planning, and programming skills; Consulting services related to curricula, teaching methods, and resources for teaching the principles and application of AI, ML, DL, data science, statistical analysis and modeling, and related fields; Research and development of software programming teaching methods; Research and development of teaching methods and course development in the fields of AI, ML, DL, data science, statistical analysis and modeling and related fields; Design, maintenance, development and updating of computer software; Storing Electronic storage of information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields; hosting online web facilities for others for sharing and communicating information related to educational programs focused on AI, ML, DL, data science, statistical analysis and modeling, and related fields; Hosting online web facilities for others for and sharing of software, code, and algorithms, and technical information for AI, ML, and DL applications, data science, statistical analysis and modeling and related fields

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

Multiple Class Requirements – Section 1(b) Basis

 

Applicant must clarify the number of classes for which registration is sought.

 

If applicant adopts the suggested amendment of the services, then applicant must amend the classification to International Classes 41 and 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

Disclaimer Requirement

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “GENERATION AI” because it is not inherently distinctive.  This unregistrable term is, at best, merely descriptive of a characteristic of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

Attachment 1 consists of articles from Tech Crunch, Gartner, and the World Economic Forum, which show that “GENERATION AI” refers to the generation of people growing up with artificial intelligence technologies.  Thus, the wording “GENERATION AI” immediately describes a feature of the services, namely, that they pertain to, and/or are targeted towards, this group of people.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “GENERATION AI” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

 

If applicant has any questions about this Office action, please contact the undersigned examining attorney.

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

f. 571.272.9106

linda.lavache@uspto.gov (informal inquiries only)

 

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.

 

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.  

 

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 1/17/2019 FOR U.S. APPLICATION SERIAL NO. 88136461

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 1/17/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

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.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.