To: | PHASE CHANGE SOFTWARE LLC (cbryce@sheridanross.com) |
Subject: | U.S. Trademark Application Serial No. 88262726 - COGNITIVE DIVIDEND - 5565TM-5 |
Sent: | October 30, 2019 01:57:44 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88262726
Mark: COGNITIVE DIVIDEND
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Correspondence Address:
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Applicant: PHASE CHANGE SOFTWARE LLC
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Reference/Docket No. 5565TM-5
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) 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: October 30, 2019
THIS IS A FINAL ACTION.
This Office action is in response to the applicant’s communication dated October 7, 2019. In a previous Office action dated April 8, 2019, the trademark examining attorney refused registration for the following: Disclaimer Required.
The trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
· DISCLAIMER REQUIRED
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “COGNITIVE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and 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 previously attached evidence from websites of third parties shows this wording, in the context of artificial intelligence, refers to computing systems which utilizing “self-learning” technologies using data mining.
Applicant argues in its response that the term “COGNITIVE” is not descriptive of software, and that the term is not commonly disclaimed in this field. To evidence this, applicant lists a number of third party registrations incorporating the term “COGNITIVE” for software. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
However, assuming arguendo that these registrations were part of the record, the registrations show the term “COGNITIVE” used for software in many different fields rather than those specifically in the field artificial intelligence.
The examining attorney has attached third party registrations showing that the term “COGNITIVE” is commonly disclaimed on the Principal Register for software and software services related to artificial intelligence, as well as other services involving artificial intelligence.
The examining attorney has also attached additional internet evidence showing the term “COGNITIVE” is commonly known in the field to refer to a subfield of artificial intelligence.
As a result, the wording merely describes applicant’s goods and services because applicant’s identification specifically includes software and software services in the field of artificial intelligence, thus the wording “COGNITIVE” is descriptive of a feature of said goods and services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “COGNITIVE” 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.
Based on the foregoing, the disclaimer requirement is hereby continued and made FINAL.
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 response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Katie Foss/
Examining Attorney
Law Office 125
571-272-4067
katherine.foss@uspto.gov
RESPONSE GUIDANCE