Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  April 22, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on July 23, 2019 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal:  Mark is Generic.  See TMEP §§706, 711.02. 

 

In a previous Office action dated July 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for mere descriptiveness of the mark, along with an advisory that the mark appears generic.  Applicant was also advised of a prior-filed application that may conflict with the applicant’s mark. 

 

On February 6, 2020, a Notice of abandonment was issued for a failure to respond to the previous Office action.  On March 20, 2020, applicant submitted a Petition to revive the abandoned application containing a request to amend the application to the Supplemental Register.  Applicant also submitted arguments against the likelihood of confusion with the prior-filed application.  The prior-filed application has matured into registration.  However, upon further consideration, the examining attorney does not find that this prior-filed application (now U.S. Registration No. 5952443) poses a likelihood of confusion with the applicant’s mark. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE:  Sections 23(c) and 45 Refusal – Mark is Generic

 

Applicant must respond to all issues raised in this Office action and the previous July 23, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

Sections 23(c) and 45 Refusal – Mark is Generic

 

Registration is refused on the Supplemental Register because the applied-for mark is generic and thus incapable of distinguishing applicant’s services.  Trademark Act Sections 23(c) and 45, 15 U.S.C. §§1091(c), 1127; see TMEP §§1209.01(c) et seq.

 

A term is generic if the relevant public understands the term as referring to the category or genus of the goods and/or services in question.  In re Nordic Naturals, Inc., 755 F.3d 1340, 1342, 111 USPQ2d 1495, 1497 (Fed. Cir. 2014); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); see TMEP §1209.01(c).  “[A] term [also] is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole.”  Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358, 1367-68, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018) (quoting In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“the term ‘pizzeria’ would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants”)). 

 

Generic terms do not meet the statutory definition of a trademark because they are incapable of indicating a particular source of goods and/or services and thus cannot be registered.  In re Cordua Rests., Inc., 823 F.3d at 599, 118 USPQ2d at 1634 (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.”)); TMEP §1209.01(c). 

 

The test for determining whether an applied-for mark is generic is its primary significance to the relevant public.  Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553-54 (Fed. Cir. 1991) (citing In re Montrachet S.A., 878 F.2d 375, 376, 11 USPQ2d 1393-94 (Fed. Cir. 1989)).  Making this determination involves a two-step inquiry:

 

(1)        What is the genus of goods and/or services at issue?

 

(2)        Does the relevant public understand the designation primarily to refer to that genus of goods and/or services?

 

In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986)); TMEP §1209.01(c)(i). 

 

Regarding the first part of the inquiry, the genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services.  See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1552); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).

 

In this case, the application identifies the services as “Software as a service (SAAS) services featuring software for contact center management featuring personalized one-on-one artificial intelligence conversations over the phone using human voice and tonality to provide a realistic and connected experience for customers; Design, development, and implementation of software for contact center management featuring personalized one-on-one artificial intelligence conversations over the phone using human voice and tonality to provide a realistic and connected experience for customers; Providing temporary use of non-downloadable cloud-based software for contact center management featuring personalized one-on-one artificial intelligence conversations over the phone using human voice and tonality to provide a realistic and connected experience for customers,” which adequately defines the genus at issue.

 

Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified services.  The Loglan Inst. Inc. v. The Logical Language Grp., 962 F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553).  In this case, the relevant public comprises ordinary consumers who purchase applicant’s services, because there are no restrictions or limitations to the channels of trade or classes of consumers. 

 

The attached evidence from chatbots.org shows that “conversational agent” is “a software program which interprets and responds to statements made by users in ordinary natural language.” See http://www.chatbots.org/conversational_agent/.  The previously attached evidence from neurosciencenews.com shows that the wording “CONVERSATIONAL AI AGENT” in the mark is a conversational agent with artificial intelligence features, namely, technology that uses human input to learn and be more effective for answering questions.  Additional evidence attached to this Office action further demonstrates that the term CONVERSATIONAL AI AGENT is used to refer to the genus of applicant’s services:

 

• http://appinventor.mit.edu/explore/research (“In [7], I empower students with little to no programming experience to develop conversational AI agents (programs that use AI and natural language to communicate with humans).”)
• http://botpress.com/blog/tech-for-good-how-technologies-fight-covid-19 (“By deflecting calls to a chatbot, you are allowing your agents to focus their effort on patients with complex situations. In the meantime, the conversational AI agent can answer frequently asked questions to make sure everyone is informed from the best source.”)
• http://dschool.stanford.edu/classes/pop-out-talk-to-me (“Conversational AI agents are here to stay. Two out of three Americans reported that they interacted with conversational AI like Alexa or Siri in the last month or so. From virtual assistants to customer service chatbots and robot receptionists, the number of these AI agents are rapidly growing, helping people navigate their lives.”)
• http://towardsdatascience.com/introducing-the-plato-research-dialogue-system-building-conversational-applications-at-ubers-fbd257a50e33 (“Offline Training: Learning from online interactions is a key capability of large scale conversational applications. However, the process of training a conversational AI agent in most frameworks is based on offline interactions”)

 

Evidence of the public’s understanding of the term “may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers and other publications.”  Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1366, 127 USPQ2d 1041, 1046 (Fed. Cir. 2016) (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987)); TMEP §1209.01(c)(i).  This includes evidence obtained from electronic sources such as the LEXIS/NEXIS® research database and Internet websites.  See In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1465-66 (TTAB 2015); In re Active Ankle Sys., Inc., 83 USPQ2d 1532, 1534-37 (TTAB 2007); TBMP §1208.03; TMEP §§710.01(b), 1209.01(c)(i). 

 

In addition, competitor use has been found probative on the issue of genericness.  See BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 1570, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995) (“The cases have recognized that competitor use is evidence of genericness.”) (citing Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1578, 13 USPQ2d 1444, 1446 (Fed. Cir. 1990)); In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *9 (TTAB 2019) (“We find probative the generic uses of the [applied-for mark] by competitors”) (citing Royal Crown Co. v. Coca-Cola Co., 892 F.3d at 1370, 127 USPQ2d at 1048).  The following evidence shows use by competitors providing similar services:

 

• http://www.beca.com/getmedia/fa00b259-a339-4e00-a5de-e39f96ffeba7/Beca-ai-Flyer.pdf/ (“The conversational AI agent is operational 24/7 and is happy to listen to whatever community issue the person wishes to raise.”)
• http://connectedthings.mitforumcambridge.org/overview/startup-exhibitors/dynamicly/ (“Dynamicly is an application development company focused on the design and implementation of sophisticated conversational interfaces (chatbots) powered by artificial intelligence and data analytics. […] We are working with pharmaceutical companies to integrate our conversational AI agent into clinical trials that include IoT devices.”)
• http://www.espressive.com/press/espressive-raises-30-million-series-b-to-cement-leadership-in-ai-for-enterprise-service-management-as-demand-for-intelligent-automation-heats-up/ (“Looking ahead, we’re uniquely positioned to continue our rapid growth, while maintaining our relentless focus on building a highly scalable conversational AI agent that understands the language of employees.””)
• http://www.the-digital-insurer.com/wp-content/uploads/securepdfs/2019/12/1548-accelerate-business-growth-and-outcomes-with-ai-codex3743.pdf (“We helped the airline develop a text-based conversational AI agent solution to automate frequently asked questions (FAQ) related to its loyalty program. The conversational AI agent has significantly reduced call center costs by answering guest questions 80% of the time. On average, 1,200 members are using the conversational AI agent for support every week.”)
• http://www.ipsoft.com/amelia/city/ (“Amelia City is IPsoft’s one-of-a-kind interactive showcase for how AI technologies can transform the world of business. Visitors can have one-to-one conversations with Amelia, the market-leading conversational AI agent, and experience demonstrations of AI in action.”)
• http://satisfaction.ai/ (“Create complex scenarios for your conversational AI agent within a few hours.”) (attached to July 23, 2019 Office action)

 

Furthermore, applicant in fact appears to use the term CONVERSATIONAL AI AGENT in a generic manner to refer to the genus of goods.  See http://www.convoso.com/use-ai-in-these-4-ways-to-scale-your-outbound-call-center/ (“Conversational AI boosts your call center’s efficiency, whether you’re selling the actual offers or live transfers. This is primarily because agents no longer need to pre-qualify leads themselves. A conversational AI agent asks the initial questions and only transfers qualified leads to human agents.”)  An applicant’s website may assist in clarifying or refining the genus by providing the context for the terms in the identification.  In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1379, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); In re Katch, LLC, 2019 USPQ2d 233842, at *3 (TTAB 2019) (quoting In re DNI Holdings Ltd., 77 USPQ2d 1435, 1439 (TTAB 2005)).

 

Thus, the relevant public would understand this designation to refer primarily to that genus of services because this wording CONVERSATIONAL AI AGENT as a whole is so commonly and widely used to refer to call center software or programs that utilize artificial intelligence to communicate and answer questions from consumers.  Therefore, applicant’s mark CONVERSATIONAL AI AGENT is generic for applicant’s services and is refused registration on the Supplemental Register under Sections 23(c) and 45 of the Trademark Act.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

571-272-5579

young.wolfe@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 April 22, 2020 for

U.S. Trademark Application Serial No. 88415296

 

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. 

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

571-272-5579

young.wolfe@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 April 22, 2020, 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.”