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: 4/16/2019

 

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).

 

SUMMARY OF ISSUES:

• Identification of Services
• Classification of Services
• Multiple-Class Application Requirements
• Disclaimer Requirement

 

IDENTIFICATION OF SERVICES

 

Applicant has classified the following services in International Class 42:  “Coordination services for events focusing on teaching AI, ML, and DL software development, planning, and programming skill”,  “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”, and  “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”  However, the proper classification for each item is as follows:  International Class 41.

 

Additionally, applicant has provided the application fee for only 1 international class. Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one international class to the application, and reclassifying the above services accordingly; or (2) deleting from the application the services for all but the number of international classes for which the application fee was submitted.  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 application requirements specified in this Office action.

 

Further, 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 it is unclear the type of coordination services being offered and the type of “events focusing on teaching”. For example, coordination services can include organizing and arranging. Additionally, “events focusing on teaching” can be education programs focusing on teaching.

 

The wording “resources for teaching” is indefinite and must be clarified to identify the type of resources, e.g. educational materials.

 

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 “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 classes.

 

Further, 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.

 

Applicant may substitute the following wording, if accurate:

 

International Class 41: Coordination services , namely, organizing and arranging for 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 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 designed for use in education; Custom design and development of AI, ML, DL, statistical analysis and modeling software for teaching and education purposes; Design, maintenance, development and updating of computer software; 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 sharing of software, code, and algorithms, and technical information for AI, ML, and DL applications, data science, statistical analysis and modeling and related fields

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

CLASSIFICATION OF SERVICES

 

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

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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.  These unregistrable terms at best are 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). 

 

The attached evidence from TechCrunch and IEEE Transmitter shows this wording refers to the generation of people growing up with artificial intelligence technologies. (See Attached Website Evidence). Thus, the wording merely describes a feature of applicant’s services, namely, that they pertain to, and/or are targeted to this group of people.

 

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. 

 

RESPONSE GUIDELINES

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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.  

 

 

 

/Rio Toplak/

Trademark Examining Attorney

Law Office 127

(571) 272-6572

Rio.Toplak@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 4/16/2019 FOR U.S. APPLICATION SERIAL NO. 88261375

 

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 4/16/2019 (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.