Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  December 10, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 16, 2019.

 

In a previous Office action dated April 16, 2019, the applicant was required to satisfy the following requirements:  amend the identification of services, multiple-class application requirements, disclaim descriptive wording in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: identification of the services requirement and multiple-class application requirements.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Disclaimer Requirement

 

DISCLAIMER REQUIRED

 

In the initial Office Action, applicant was required to provide a disclaimer of the unregisterable 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). Specifically, applicant was required to disclaim the wording “GENERATION AI” because it is not inherently distinctive and merely describes 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).  Applicant has submitted arguments and evidence in response to the requirement. The examining attorney has carefully considered applicant’s arguments and evidence, and does not find them persuasive, for the reasons explained below. Therefore, the requirement to disclaim the merely descriptive wording “GENERATION AI” apart from the mark as shown is now made FINAL. See 15 U.S.C. §1056(a); 37 C.F.R. §2.63(b); TMEP §§1213, 1213.03(a).

 

The examining attorney previously attached evidence from TechCrunch and IEEE Transmitter shows this wording refers to the generation of people growing up with artificial intelligence technologies. (See Previously Attached Website Evidence). The examining attorney further has attached an article from Gartner title “GENERATION AI MUST BE PROTECTED FROM A DYSTOPIAN FUTURE” that is about how “Children born since 2010 (known as Generation AI or Gen AI) are being shaped by the ubiquitous presence of artificial intelligence (AI) from birth”. Further, the attached article from Forbes titled “What To Expect From Generation AI?” contemplates the how the current generation are the first to group up with Artificial Intelligence. Additionally, an article from MIT Media Lab written by Blakely Hoffman, titled “Generation AI: Teaching a new kind of tech savvy” explores the use of Artificial Intelligent devices with children and preparing them to be conscious consumers through AI. Further, a blog post from The Producer’s Perspective uses the term “Generation AI” to describe the generation of kids after “Generation Z”. Also attached is an article from Maverick Research titled “Gen AI — Artificial Intelligence Empowers a Generation of Radical Thinkers” which identifies the generation born after 2010 as Generation AI: “the generation born after 2010 only knows a world with artificial intelligence technology. IT and business leaders must prepare for Generation AI family members, consumers and workers who are creative, empowered and radical thinkers”. An attached article written by Pete Basiliere titled “” refers to Generation AI as “children born since 2010 (known as Generation AI or Gen AI) are being shaped by the ubiquitous presence of artificial intelligence (AI) from birth. Already some of the 650 million members of Gen AI, ages 5 through 9, are exposed to AI used in schools and by marketers”.  This evidence refers to and shows the common use of the wording “GENERATION AI” to describe a generation of “People born in 2010 or later that interact with AI from the time they are toddlers”. (See elerninginfographics.com attachment). Thus, the wording “GENERATION AI” merely describes a characteristic of applicant’s services, namely, that they pertain to, and/or are targeted to this group of people.

 

Applicant’s Arguments

 

Applicant argues that applicant’s mark should be treated as a unitary phrase, further arguing that the wording “NEXUS” implies a tie, link or connection between all the wording in the mark. However, a term or phrase is unitary if it consists of elements that create a single commercial impression or have a distinct commercial impression independent of the constituent elements.  TMEP §1213.05, (b).  The test for determining whether a mark is unitary focuses on whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable.  TMEP §1213.05; see In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983).  However, if the elements are considered separable, the matter is not unitary and the unregistrable constituent elements may be disclaimed.  See In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007); In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006); TMEP §1213.05(b)(iv), (g), (g)(i). Here, the addition of the term “NEXUS” to the wording “GENERATION AI” does not alter the meaning of the wording “GENERATION AI” nor does it negate the separability of the wording “GENERATION AI” from the mark as a whole. Thus, the mark is not unitary.

 

Applicant further argues that the Trademark Trial and Appeal Board (Board) “uses a multi-pronged test for determining whether a mark is descriptive,” relying on Nonsense Fashions Inc. v. Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985).  Applicant incorrectly states the law on mere descriptiveness in asserting that there are three tests for determining descriptiveness.  When determining mere descriptiveness of a term, the question is whether the term “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.”  In re Bayer Aktiengesellschaft, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)(citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987)).  Furthermore, there is no requirement that the Office prove actual competitor use or need.  See In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009).  Applicant’s arguments regarding the “Competitor’s Use Test” and the “Competitor’s Need Test” will therefore be given no consideration.

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract. “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).  The question is not whether someone presented only with the mark could guess what the goods and/or services are, but “whether someone who knows what the goods and[/or] services are will understand the mark to convey information about them.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Mueller Sports. Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).

 

Further, applicant argues the wording “GENERATION” and “ARTIFICIAL INTELLEGENCE” combined to “GENERATION AI” has no particular meaning, based on this wording not appearing in the dictionary. However, the fact that a word or term is not found in the dictionary is not controlling on the question of registrability when the word or term has a well understood and recognized meaning.  In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977); TMEP §1209.03(b); see In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987); In re Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004); In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002). Applicant should further note the additional attached evidence provided by the examining attorney that shows the wording “GENERATION AI” has an understood meaning.

 

Applicant’s argument that consumers would have to determine whether the letters “AI” refer to “airborne intercept”, “artificial insemination”, “ad interim”, etc. is not persuasive. As stated above, the determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  Here applicant’s services include, “software with Artificial Intelligence (AI)”, “custom design and development of AI, ML, DL, statistical analysis and modeling software for teaching and education purposes”, “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”, “Coordination services, namely, organizing and arranging educational programs focusing on teaching Artificial Intelligence (AI), Machine Learning (ML), and Deep Learning (DL) software development, planning, and programming skills”, among others.

 

Applicant further argues that numerous third party registrations do not contain a disclaimer for the term “GENERATION”. However, applicant has not asserted evidence that these third-party registrations have commonly understood meaning and are merely descriptive in the context of the goods of services of those registrations. Additionally applicant should note, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

 

Lastly, applicant argues that any doubt regarding the mark’s descriptiveness should be resolved on applicant’s behalf.  E.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 4 USPQ2d 1141, 1144 (Fed. Cir. 1987); In re Grand Forest Holdings, Inc., 78 USPQ2d 1152, 1156 (TTAB 2006).  However, in the present case, the evidence of record leaves no doubt that the mark is merely descriptive. Therefore, the term “GENERATION AI” is merely descriptive of applicant’s services and thus, must be disclaimed.

 

Response Options

 

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. 

 

RESPONSE GUIDELINES

 

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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Rio Toplak/

Examining Attorney

Law Office 127

(571) 272-6572

Rio.Toplak@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 10, 2019 for

U.S. Trademark Application Serial No. 88261375

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Rio Toplak/

Examining Attorney

Law Office 127

(571) 272-6572

Rio.Toplak@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 10, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”