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: 5/8/2019

 

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

 

SUMMARY OF ISSUES:

 

• Classification and Identification of Goods and Services
• Significance of Wording

 

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).

 

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

 

Several of the goods and services in the identification of goods and services must be clarified because they are indefinite and too broad and could include goods and services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03

 

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 goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendment, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

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

 

International Class 009:  DOWNLOADABLE SOFTWARE FOR PROVIDING Electronic computing platform for operating self-driving and autonomous land vehicles; self-driving and autonomous land vehicle electronic driving system and equipment in the nature of CONSISTING OF artificial intelligence, machine learning, deep learning, high performance computing, and simulation CAPABILITIES AND COMPRISED OF DOWNLOADABLE software FOR THE SELF-DRIVING SYSTEM and COMPUTER hardware; computers; artificial intelligence computers; supercomputers; artificial intelligence supercomputers; graphics processing units (GPUs) IN THE NATURE OF GRAPHICS CARDS; graphics processing units (GPUs) in the nature of computer hardware for enhancing graphical and video display; integrated circuits; integrated circuits for enhancing graphical and video display; semiconductors and semiconductor chip sets; system-on- chip (SOC) processors; electronic computer vision GRAPHICS accelerators, namely, FOR artificial intelligence, machine learning, deep learning, high performance computing, and simulation hardware and software; DOWNLOADABLE computer software for performing computer graphics operations and improving graphical and video display capabilities; computer graphics software for improving display quality; DOWNLOADABLE computer graphics software for enhancement of graphical and video display; DOWNLOADABLE computer graphics firmware for enhancement of graphical and video display; DOWNLOADABLE computer software for the display of digital media; computer hardware and DOWNLOADABLE software, and communications hardware and DOWNLOADABLE software for the operation, control, maintenance, and management of land vehicles, self-driving and autonomous land vehicles and land vehicle components, for land vehicle navigation, for travel and trip planning, for communications and for collecting, tracking, analyzing, and reporting data and information in the field of self-driving and autonomous land vehicles; electronic control systems for land motor vehicles; liquid crystal display (LCD) monitors; computer monitors; ELECTRONIC APPARATUS, NAMELY, electronic display screens; electronic display interfaces; liquid crystal displays; flat panel display screens; DOWNLOADABLE computer software development tools; DOWNLOADABLE computer software and COMPUTER hardware for machine learning, deep learning, natural language generation, statistical learning, supervised learning, unsupervised learning, data mining, predictive analytics and business intelligence; DOWNLOADABLE computer software for data management, analytics and pattern and activity recognition; DOWNLOADABLE neural network software FOR ______________ {indicate function of software, e.g., word processing}; DOWNLOADABLE machine learning software FOR ______________ {indicate function of software, e.g., word processing}; application programming interface (API) for use in building software applications; DOWNLOADABLE software development kits (SDKs) consisting of computer software development tools for the development of self-driving and autonomous land vehicle electronic computing platforms and systems; DOWNLOADABLE software development kits (SDKs) comprising of software development tools and software for use as an application programming interface (API) for creating software and applications related to the development of self-driving and autonomous land vehicle electronic computing platforms and systems; DOWNLOADABLE computer software, namely, an interpretive interface for facilitating interaction between humans and machines; DOWNLOADABLE software for object tracking, motion control and content visualization; DOWNLOADABLE computer software, firmware and COMPUTER hardware for use in visual, voice, audio, motion, eye and gesture tracking and recognition; computer hardware and DOWNLOADABLE software for operating sensor devices; electronic sensor devices, cameras, and microphones for gesture, facial, and voice detection, capture and recognition; computer hardware and DOWNLOADABLE software for detecting objects, user gestures and commands; DOWNLOADABLE computer software and firmware for enabling computer hardware and electronic devices to share data and communicate with each other

 

International Class 042:  Software as a Service (SaaS) featuring software for operating vehicles in the field of self-driving and autonomous land vehicle and self-driving and autonomous land vehicle component operation, control, maintenance, management and communication; software as a Service (SaaS) featuring software for operating vehicles in the field of electronic control systems for land motor vehicles; providing on-line non-downloadable software for the operation, control, maintenance, and management of land vehicles, self-driving and autonomous land vehicles and land vehicle components, for land vehicle navigation, for travel and trip planning, for communications and for collecting, tracking, analyzing, and reporting data and information in the field of self-driving and autonomous land vehicles; providing on-line non-downloadable software for machine learning, deep learning, natural language generation, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics and business intelligence; providing on-line non-downloadable software for data management, analytics and pattern and activity recognition; software as a Service (SaaS) services featuring software for machine learning, deep learning, and deep neural networks; design and development of computer hardware and software in the fields of machine learning, deep learning, and deep neural networks; design and development of computer hardware and software in the fields of self-driving and autonomous land vehicle electronic computing platforms and systems; software as a service (SaaS) featuring computer software for others to use for the development of software for self-driving and autonomous land vehicle electronic computing platforms and systems; providing on-line non-downloadable software for facilitating interaction between humans and machines; providing on-line non-downloadable software for object tracking, motion control and content visualization; providing on-line non-downloadable software for use in visual, voice, audio, motion, eye and gesture tracking and recognition; providing on-line non-downloadable software for operating sensor devices; providing on-line non-downloadable software for detecting objects, user gestures and commands; providing temporary use of on-line non-downloadable software enabling hardware and electronic devices to share data and communicate with each other; APPLICATION PROGRAMMING INTERFACE (API) FOR USE IN BUILDING SOFTWARE APPLICATIONS

 

See TMEP §1402.01

 

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).

 

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.

 

SIGNIFICANCE OF WORDING

 

To permit proper examination of the application, applicant must explain whether the wording in the mark “SFF” has any significance in the trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or 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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.  

 

/Samir Ramesh-Patel/

Samir Ramesh-Patel

Examining Attorney

Law Office 106

(571) 272-6699

Samir.Ramesh-Patel@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 5/8/2019 FOR U.S. APPLICATION SERIAL NO. 88350877

 

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 5/8/2019 (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.