To: | Uptake Technologies, Inc. (smith@ls3ip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88233635 - THE INDUSTRIAL AI PROVIDER - Uptake-00343 |
Sent: | 3/22/2019 11:13:06 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88233635
MARK: THE INDUSTRIAL AI PROVIDER
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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: Uptake Technologies, Inc.
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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: 3/22/2019
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant has applied to register the mark THE INDUSTRIAL AI PROVIDER (in standard characters) for “Collection, systematization, and synchronization of data and information into computer databases; data analysis services; data processing services” in International Class 35 and “Predictive analytics and data science services in the field of operational technology; electronic monitoring and reporting of physical properties of an industrial asset using computers and sensors; data mining; electric sensor reading and data analysis; electronic sensor reading and data analysis; design and development of integrated data collection and wireless transmission hardware systems for equipment and for software applications associated with that equipment at industrial assets; data automation and collection services using proprietary software to evaluate, analyze and collect service data; providing on-line non-downloadable software for use in connection with predictive analytics and data science services in the field of operational technology, monitoring and reporting of physical properties of an industrial asset using computers and sensors, data mining, electric sensor reading and data analysis, electronic sensor reading and data analysis, integrated data collection and wireless transmission hardware systems for equipment and for software applications associated with that equipment at industrial assets, and data automation and collection services using proprietary software to evaluate, analyze and collect service data; providing on-line non-downloadable software for use in predictive analytics and data science services; configuration and customization of computer databases featuring information for use in predictive analytics and data science services; providing on-line non-downloadable software for use in repair or maintenance of industrial assets; configuration and customization of computer databases featuring technical information for use in repair or maintenance of industrial assets; providing on-line non-downloadable software for use in industrial analytics, namely, for use in predictive analytics, data science, data mining, data collection, data analysis, data visualization, computer modeling, predictive modeling, and machine learning related to industrial assets or operations; providing on-line non-downloadable software for use in industrial analytics, namely, for use in predictive analytics, data science, data mining, data collection, data analysis, data visualization, computer modeling, predictive modeling, and machine learning in the field of operational technology; configuration and customization of computer databases featuring information for use in industrial analytics, namely, for use in predictive analytics, data science, data mining, data collection, data analysis, data visualization, computer modeling, predictive modeling, and machine learning related to industrial assets or operations; configuration and customization of computer databases featuring information for use in industrial analytics, namely, for use in predictive analytics, data science, data mining, data collection, data analysis, data visualization, computer modeling, predictive modeling, and machine learning in the field of operational technology; providing on-line non-downloadable software for use in industrial modeling, namely, for use in computer modeling of industrial assets or operations; configuration and customization of computer databases featuring information for use in industrial modeling, namely, for use in computer modeling of industrial assets or operations” in International Class 42.
The attached Internet dictionary evidence from Merriam-Webster shows that “industrial” means “used in or developed for use in industry.” The same source shows that “AI” is short for “artificial intelligence”, while a “provider” is “one that provides.” Thus, the wording is merely descriptive for the function of the services, in that applicant is one who provides artificial intelligence software that has been developed for use in industry.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, the combination merely describes that the AI service provider in this case serves the industrial sector; please see the attached Internet evidence that shows that an “AI provider” is generally known wording for applicant’s services.
In sum, applicant’s mark is merely descriptive because it describes a function of applicant’s services and consumers are likely to perceive the proposed mark as describing a function of the services rather than the source of the services.
Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(1) Use of the registration symbol ® with the registered mark in connection with the designated services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) SERVICES: The services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEES: A filing fee for each international class of services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
ADVISORY – DISCLAIMER REQUIRED
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “AI” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
For example, “data analysis” needs to have the type of data specified.
And finally, the software services must be further specified that the software is for temporary use only in International Class 42.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers
guidance and/or shows the changes being proposed for the identification of services. If there is wording in the applicant’s version of the identification of services
which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in
standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following identification, if accurate:
International Class 35: Collection, systematization, and synchronization of data and information into computer databases; BUSINESS data analysis services; Data processing services
International Class 42: Predictive analytics and data science services in the field of operational
technology, NAMELY, ______________ {specify common commercial name for the services}; Electronic monitoring and reporting of physical properties of an industrial asset using
computers and sensors; Data mining; Electric sensor reading and data analysis; Electronic sensor reading and data analysis; PRODUCT design and development of integrated data
collection and wireless transmission hardware systems for equipment and for software applications associated with that equipment at industrial assets; Data automation and collection services using
proprietary software to evaluate, analyze and collect service data; Providing TEMPORARY USE OF on-line non-downloadable software for use in connection
with predictive analytics and data science services in the field of operational technology, monitoring and reporting of physical properties of an industrial asset using computers and sensors,
data mining, electric sensor reading and data analysis, electronic sensor reading and data analysis, integrated data collection and wireless transmission hardware systems for equipment and for
software applications associated with that equipment at industrial assets, and data automation and collection services using proprietary software to evaluate, analyze and collect service data;
Providing TEMPORARY USE OF on-line non-downloadable software for use in predictive analytics and data science services; Configuration and customization of computer databases
featuring information for use in predictive analytics and data science services; Providing TEMPORARY USE OF on-line non-downloadable software for use in repair or maintenance of
industrial assets; Configuration and customization of computer databases featuring technical information for use in repair or maintenance of industrial assets; Providing TEMPORARY
USE OF on-line non-downloadable software for use in industrial analytics, namely, for use in predictive analytics, data science, data mining, data collection, data analysis, data visualization,
computer modeling, predictive modeling, and machine learning related to industrial assets or operations; Providing TEMPORARY USE OF on-line non-downloadable software for use in
industrial analytics, namely, for use in predictive analytics, data science, data mining, data collection, data analysis, data visualization, computer modeling, predictive modeling, and machine
learning in the field of operational technology; Configuration and customization of computer databases featuring information for use in industrial analytics, namely, for use in predictive analytics,
data science, data mining, data collection, data analysis, data visualization, computer modeling, predictive modeling, and machine learning related to industrial assets or operations; Configuration
and customization of computer databases featuring information for use in industrial analytics, namely, for use in predictive analytics, data science, data mining, data collection, data analysis, data
visualization, computer modeling, predictive modeling, and machine learning in the field of operational technology; Providing TEMPORARY USE OF on-line non-downloadable software
for use in industrial modeling, namely, for use in computer modeling of industrial assets or operations; Configuration and customization of computer databases featuring information for use in
industrial modeling, namely, for use in computer modeling of industrial assets or operations
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.
For this application to proceed, applicant must explicitly address each refusal and 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 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.
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@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.