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:  September 17, 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.

 

SEARCH RESULTS

 

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).

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

IDENTIFICATION OF SERVICES

 

The wording “Development and implementation of artificial intelligence, machine learning, deep learning and cognitive computing technologies business consulting services” in the identification of services is indefinite and must be clarified because it fails to identify specific services and could include services in more than one international class (e.g., advanced product research in the field of artificial intelligence in Class 42, computer software development in Class 42, business consultancy in Class 35).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Business consulting services in the field of development and implementation of artificial intelligence, machine learning, deep learning and cognitive computing technologies” in Class 35.

 

To summarize, applicant may amend the entire identification to the following wording, if accurate (with proposed changes in bold):

 

Class 9:  Recorded computer software platforms for application development; Recorded computer software platforms for application deployment; Recorded computer software development tools; Recorded computer software applications using artificial intelligence for the analysis and evaluation of data; Downloadable computer software platforms for application development; Downloadable computer software platforms for application deployment; Downloadable computer software applications using artificial intelligence for the analysis and evaluation of data

 

Class 35:  Business consultancy; Business consulting services in the fields of information technology (IT), cloud computing and digital transformation; Business consulting services in the field of artificial intelligence, machine learning, deep learning and cognitive computing technologies; Business consulting services in the field of development and implementation of artificial intelligence, machine learning, deep learning and cognitive computing technologies

 

Class 42:  Information technology consulting services; Planning, design and management of information technology systems; Programming of computer software for others; Computer software development for others; Design and development of software and hardware for information technology systems; Computer software consultancy; Consultancy in the design and development of computer hardware; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Consulting services in the field of cloud computing; Data conversion of electronic information; Computer systems integration services; Development of computer platforms

 

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.

 

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).

 

 

 

FAILURE TO RESPOND

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class(es) 35 will be deleted from the application:  Development and implementation of artificial intelligence, machine learning, deep learning and cognitive computing technologies business consulting services.  The application will then proceed with the following goods and/or services in International Class(es) 9, 35, and 42 only:  Recorded computer software platforms for application development; Recorded computer software platforms for application deployment; Recorded computer software development tools; Recorded computer software applications using artificial intelligence for the analysis and evaluation of data; Downloadable computer software platforms for application development; Downloadable computer software platforms for application deployment; Downloadable computer software applications using artificial intelligence for the analysis and evaluation of data; Business consultancy; Business consulting services in the fields of information technology (IT), cloud computing and digital transformation; Business consulting services in the field of artificial intelligence, machine learning, deep learning and cognitive computing technologies; Information technology consulting services; Planning, design and management of information technology systems; Programming of computer software for others; Computer software development for others; Design and development of software and hardware for information technology systems; Computer software consultancy; Consultancy in the design and development of computer hardware; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Consulting services in the field of cloud computing; Data conversion of electronic information; Computer systems integration services; Development of computer platforms.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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.  

 

 

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

 

 

/Cimmerian Coleman/

Trademark Examining Attorney

Law Office 102

571-272-9146

cimmerian.coleman@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 September 17, 2019 for

U.S. Trademark Application Serial No. 88478926

 

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. 

 

 

Coleman, Cimmerian

 

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 September 17, 2019, 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.”