To: | Uniphore Software Systems Private Limite ETC. (docket@mtiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88445655 - CONVERSATIONAL SERVICE AUTOMATION - RIP_TM007 |
Sent: | March 04, 2020 10:04:36 AM |
Sent As: | ecom104@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 |
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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FINAL 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) 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: March 04, 2020
This Office acknowledges receipt of applicant’s communication the February 18, 2020, in which applicant amended the identification of goods and services, provided attorney bar information and attorney attestation, and argued against the merely descriptive refusal.
Applicant satisfied the following requirements:
The examining attorney maintains and now makes FINAL the following refusal:
SUMMARY OF ISSUES:
Trademark Act 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.”
Applicant notes that the initial Office action did not have the foregoing evidence attached; however, that evidence was available to the applicant through the embedded web links shown above. See also the attached evidence from http://www.merriam-webster.com/dictionary/conversational (oral exchange of sentiments, observations, opinions, or ideas or an exchange similar to conversation, e.g., e-mail); http://www.merriam-webster.com/dictionary/service (a helpful act); http://www.merriam-webster.com/dictionary/automation (the technique of making an apparatus, a process, a system operate automatically).
The composite result means software acting to automatically help with spoken language or an exchange similar to conversation.
The attached evidence from applicant’s website demonstrates the accuracy of the meaning of the composite result. See http://www.uniphore.com/conversational-service-automation-the-future-of-customer-service/, which describes “Conversational Service Automation” as being “about enabling front office automation in contact centers.” Applicant describes the “conversational” feature of the mark, stating “[c]ustomer interactions are ‘conversational’ whether it is through your website, chat, voice, IVR, social or connected devices.” Applicant goes on, explaining that the “automation” feature is “end to end intelligent automation platform focused on contact center needs which also connects the dots between front office and back office and makes it a seamless process of information flow.” Explaining the meaning of the “service” component of the mark, applicant states “Conversational Service Automation is about automating customer service, automating the service experience, and automating mundane tasks to enable agents deliver the service experience.” See also the attached evidence from http://www.aurorpa.com/conversational-service-automation/, http://www.speechtechmag.com/Articles/ReadArticle.aspx?ArticleID=131809, and http://www.rtinsights.com/csa-2020-cx/.
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).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Johnson, Don
/Donald O. Johnson/
Examining Attorney
Law Office 104
571-272-7831
don.johnson@uspto.gov
RESPONSE GUIDANCE