Offc Action Outgoing

 

United States Patent and Trademark Office (USPTO)

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

 

 

 

 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:  7/29/2019

 

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:

 

• Identification of Goods and Services
• Mark Significance

 

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).

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification for “Downloadable computer software and hardware, and non?downloadable software, with machine learning and artificial intelligence functionality” in International Class 9 is indefinite and must be clarified by amending to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  Furthermore, applicant’s non-downloadable software is misclassified and should be in Class 42, which is the class for non-downloadable software. 

 

The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

The following are examples of acceptable identifications for software in International Class 9:  “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”

 

In addition, the identification of services in International Class 35, “Retail store services featuring an automated virtual assistant/agent chatbot solution” is indefinite and likely misclassified because retail store services are for goods only.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Individual services are classified according to subject-matter.  For example, websites featuring technology or non-downloadable technology is classified in Class 42.  Applicant must also specify the common commercial or generic name of the services and re-classify according to subject-matter as indicted above.  See TMEP §1402.01. 

 

Applicant may adopt the following wording, if accurate: 

 

International Class 009:  Downloadable computer chatbot software for simulating conversations; downloadable chatbot software using artificial intelligence to answer customer questions and retrieve data from systems; downloadable chatbot software for data retrieval automation via a chatbot; downloadable chatbot software for providing information via voice-controlled automated inquiries; downloadable chatbot software for providing an online automated resource for searching, locating, rating and providing directions for the purchase, consumption and use of a wide range of products, services and information; downloadable chatbot software for providing business, consumer product, and commercial information through a chatbot incorporating machine learning and artificial intelligence technology; downloadable computer software and hardware, with machine learning and artificial intelligence functionality, for {specify function}

 

International Class 035:  Electronic monitoring and reporting of retail consumer shopping activity for business purposes

 

International Class 042:  Data automation and collection service using proprietary software to evaluate, analyze and collect service data; providing temporary use of non-downloadable computer software, with machine learning and artificial intelligence functionality, for {specify function}; providing a website featuring technology that generates an automated virtual assistant or agent chatbot that enables users to {specify activities that users may perform using the software} for facilitating retail store services

 

Applicant should note that the above bolded language indicate the examining attorney’s suggestions, and the braces indicate where applicant must insert specific types of goods and services.  The braces should not appear in the amended identification; only the specific goods and services indicated, as inserted by applicant.  Applicant need not amend its identification other than where specified by bold font.

 

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

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must explain whether the wording in the mark “SIVA” has any significance in the computer or retail trade or industry or as applied to applicant’s goods and services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814. 

 

Applicant must also explain whether the wording in the mark “SIVA” is an acronym and if so, what it means. 

 

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.

 

ASSISTANCE

 

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.  

 

 

/Salima Parmar Oestreicher/

Examining Attorney

Law Office 108

(571) 272-6786

salima.oestreicher@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 7/29/2019 for

U.S. Trademark Application Serial No. 88430008

 

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. 

 

/Salima Parmar Oestreicher/

Examining Attorney

Law Office 108

(571) 272-6786

salima.oestreicher@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 , 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 TSDR 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 often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices – most of which require fees.  These companies often have names similar to the USPTO.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.