To: | Uniphore Software Systems Private Limite ETC. (docketing@mtiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88445655 - CONVERSATIONAL SERVICE AUTOMATION - RIP_TM007 |
Sent: | August 18, 2019 05:10:46 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88445655
Mark: CONVERSATIONAL SERVICE AUTOMATION
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Correspondence Address: |
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Applicant: Uniphore Software Systems Private Limite ETC.
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Reference/Docket No. RIP_TM007
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 18, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
Although no conflicting marks that would bar registration under Trademark Act Section 2(d) have been found, applicant must respond to the refusal and requirements set forth below.
SECTION 2(e)(1) Refusal – Merely Descriptive
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
As the attached evidence from http://www.vocabulary.com/dictionary/conversational shows, “conversational” means “characteristic of informal spoken language or conversation.”
The attached evidence from http://www.vocabulary.com/dictionary/service shows that, in the context of applicant’s goods and services, “service” means “an act of help or assistance.”
The attached evidence from http://www.vocabulary.com/dictionary/automation shows that “automation” means “the condition of being automatically operated or controlled.”
The composite result means the act of automatically helping with spoken language.
Given that the identified goods and services are “Computer software using artificial intelligence and algorithms for conversational analytics, conversational assistants, and conversational security in the field of customer service experience” and “Design and development of Software as a Service (SaaS) using artificial intelligence and algorithms for conversational analytics, conversational assistants, and conversational security in the field of customer service experience,” the proposed mark merely describes characteristics, features, function of applicant’s goods and services.
Accordingly, applicant’s application for registration of the proposed mark on the Principal Register is refused under Trademark Act Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
SUPPLEMENTAL REGISTER (ADVISORY)
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT
Applicant may substitute the following wording, if accurate:
Class 9: DOWNLOADABLE computer software using artificial intelligence and algorithms for conversational analytics, conversational assistants, and conversational security in the field of customer service experience
Class 42: Design and development FOR OTHERS of Software as a Service (SaaS) SERVICES FEATURING SOFTWARE using artificial intelligence and algorithms for conversational analytics, conversational assistants, and conversational security in the field of customer service experience
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
ATTORNEY BAR INFORMATION
ATTORNEY ATTESTATION
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 nonfinal Office action
/Donald Johnson/
Examining Attorney
Law Office 104
571-272-7831
don.johnson@uspto.gov
RESPONSE GUIDANCE