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:  October 03, 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

 

• Section 2(d) Refusal—Likelihood of Confusion
• Prior Application Filed
• Identification and Classification of Services
• Multiple-Class Action Requirements
• Foreign Registration Certificate Required
• Drawing
• Amendment to Description of Mark Required
• Disclaimer Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5072658.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark “AI” is for “Database management; providing business and commercial information concerning commerce and electronic commerce transacting; business process outsourcing services in the fields of web site design, electronic marketing and promotion, data mining, data collection and analysis, commerce and electronic commerce transaction hosting; real time customer support to enhance commerce transactions for the users of same; electronic payment services, integrated customer support services and electronic delivery of audio, visual and audio-visual entertainment; advertising services; advertising information services; personalizing online retail shopping experiences for others; providing advertising and marketing; design of advertising materials for others; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; promoting the goods and services of others via press releases, contests, promotional sales, discounts, coupons, special offer and gift giveaway programs, corporate identity services; advertising and marketing of the brands, businesses, profiles, wares and services of others” in International Class 42.

 

Registrant’s mark “AI” is for “Advertising via electronic media and specifically the internet; promoting the goods and services of others by means of distributing advertising on the internet” in International Class 35.

 

Standard of Analysis for 2(d) Refusal

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).  

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  In this case, registrant’s mark is in standard characters while applicant’s mark contains a very weak stylization/design element.  The word portions of the marks are identical.

 

Additionally, despite the design, where the goods and/or services of an applicant and registrant are identical or virtually identical, as in this case, the degree of similarity between the marks required to support a finding that confusion is likely declines.  See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).

 

Accordingly, in this case, the mark “AI” offers the same commercial impression as the registered “AI” mark.  For this reason, the marks are confusingly similar.

 

Similarity of the Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

In this case, applicant has misclassified the majority of their services, see Identification and Classification of Services Section below, but seems to mainly be providing advertising services.  When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the advertising services in the application and registration are partially identical.  Both applicant and registrant identify “advertising” and “promoting the goods and services of others” in their identifications.  Specifically, applicant lists “advertising services” and “advertising and marketing of the brands, businesses, profiles, wares and services of others” which presumably encompasses all services of the type described, including registrant’s more narrow “Advertising via electronic media and specifically the internet”.  In regards to the “promoting the goods and services of others” language, applicant does so “via press releases, contests, promotional sales, discounts, coupons, special offer and gift giveaway programs, corporate identity services” and registrant does so “by means of distributing advertising on the internet”.  These services are often performed by the same advertising agency.  See attached evidence from ImageWorksCreative, Renegade Communications, and Ciniva.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s services are related.

 

Lastly, to the extent the evidence may not address all of the items in applicant’s identification, relatedness does not have to be established for every good or service.  It is sufficient for a finding of likelihood of confusion if relatedness is established for any or some item(s) encompassed by the identification within a particular class in an application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).  In this case, relatedness has been established for many of the identified items, which is enough to show a likelihood of confusion.

 

In summary, the marks are confusingly similar and the services are identical or related.  Accordingly, purchasers are likely to be confused as to the source of the services.  Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

PRIOR-FILED APPLICATION(S)

 

The filing date of pending U.S. Application Serial No. 87866537 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES

 

Applicant has classified “database management”, “providing business and commercial information concerning commerce and electronic commerce transacting”, “advertising services; advertising information services”,  “providing advertising and marketing”, “design of advertising materials for others” “electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes”, “electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes” and “promoting the goods and services of others via press releases, contests, promotional sales, discounts, coupons, special offer and gift giveaway programs, corporate identity services”, “advertising and marketing of the brands, businesses, profiles, wares and services of others” in International Class 42; however, the proper classification is International Class 35 since these services are all generally for business and advertising purposes.  Therefore, applicant may respond by (1) adding International Class 35 to the application and reclassifying these services in the proper international class, (2) deleting the problematic misclassified wording, specified in bold above, from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Generally, as mentioned above, business and advertising services belong in International Class 35, while scientific and technical data analysis and design services belong in International Class 42.  International Class 36 is for financial data and International Class 38 is for Telecommunications.  Lastly, International Class 41 is for entertainment services.  Applicant must adopt the appropriate international classification number for the services identified in the application.  The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services.  See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

Accordingly, applicant must clarify the wording “business process outsourcing services in the fields of web site design, electronic marketing and promotion, data mining, data collection and analysis, commerce and electronic commerce transaction hosting” because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  Further, this wording could identify services in more than one international class.  For example, business tailored outsourcing services such as business analytics and data collection are in International Class 35 and outsourcing services in the field of information technology, designing and creating a website for others, data mining, Data automation and collection service using proprietary software to evaluate, analyze and collect service data are all in International Class 42.  Also, the wording “business process outsourcing services in the field of …commerce and electronic commerce transaction hosting” is overly broad because it is unclear what is meant by “hosting”.  Applicant could mean website hosting services in International Class 42 or providing secure commercial transactions and payment options in International Class 36.

 

Similarly, the wording “real time customer support to enhance commerce transactions for the users of same” is indefinite and overbroad because the classification depends on what is meant by “customer support”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Similarly, the wording “electronic payment services, integrated customer support services and electronic delivery of audio, visual and audio-visual entertainment” could potentially fall into three separate classes.  As mentioned above, electronic payment services fall into International Class 36 while customer support services generally fall into International Class 35.  Electronic delivery  of digital music or data and other broadcasting services falls into International Class 38.

 

The wording “personalizing online retail shopping experiences for others” is indefinite because it is unclear how applicant is personalizing the online shopping experience.  If applicant is creating a website or non-downloadable software to do so, that would fall into International Class 42.  If applicant is merely providing tailored advertisements online to shoppers then that would fall into International Class 35.

 

In summary, applicant may adopt the following wording and classifications, if accurate:

 

International Class 35: Database management; Providing business and commercial information in the fields of commerce and electronic commerce transacting; Outsource service provider in the field of business analytics; Outsource service providers in the field of electronic marketing and promotion; Outsource service providers in the field of data collection and analysis for business purposes;  Promoting, advertising and marketing on-line web sites of others; Business assistance services, namely, providing live customer support services in the nature of online chats and call centers for customers for others and monitoring services during the online checkout process with automated interaction and data feedback, monitoring and compilation capacity; Business assistance services, namely, providing customer support services in the nature of integrated online chats and call centers for others; advertising services; advertising information services; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; On-line advertising and marketing services; Design of advertising materials for others; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Promoting the goods and services of others via press releases, contests, promotional sales, discounts, coupons, special offer and gift giveaway programs, corporate identity services; Advertising and marketing of the brands, businesses, profiles, wares and services of others

 

International Class 36: Electronic payment services involving electronic processing and subsequent transmission of bill payment data; Outsource service providers in the field of financial transaction services, namely, providing secure commercial transactions and payment options

 

International Class 38: Providing electronic transmission of credit card transaction data and electronic payment data via a global computer network; Providing electronic transmission of contactless payment data via the internet; Electronic delivery of audio, visual and audio-visual entertainment

 

International Class 42: Database management; providing business and commercial information concerning commerce and electronic commerce transacting; business process outsourcing services in the fields of web site design, electronic marketing and promotion, data mining, data collection and analysis, commerce and electronic commerce transaction hosting Outsource service providers in the field of designing and creating a website for others; Outsource service providers in the field of data mining; Outsource service providers in the field of data automation and collection service using proprietary software to evaluate, analyze and collect service data; Outsource service providers in the field of hosting websites for electronic commerce transactions; Outsource services, namely, developing and hosting a server on a global computer network for the purpose of facilitating e-commerce via such a server; real time customer support to enhance commerce transactions for the users of same; electronic payment services, integrated customer support services and electronic delivery of audio, visual and audio-visual entertainment; advertising services; advertising information services; personalizing online retail shopping experiences for others Providing non-downloadable software and hosting a website that customizes the shopping experience for potential customers of others; providing advertising and marketing; design of advertising materials for others electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; promoting the goods and services of others via press releases, contests, promotional sales, discounts, coupons, special offer and gift giveaway programs, corporate identity services; advertising and marketing of the brands, businesses, profiles, wares and services of others

 

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

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

DRAWING

 

The drawing is not acceptable because the digitized image of the mark is unclear and does not show all aspects of the mark in sufficient detail.  See TMEP §807.04(a).  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52. 

 

Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).  Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.

 

For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.

 

AMENDMENT TO DESCRIPTION OF MARK REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of the stylized letters “AI”. The upper portion of the letters is light blue, and the lower portion is dark blue. Both letters are separated by a diagonal stripe curving upwards to the right, starting midway through the letter “A”, and ending in between the dot and the line in the letter “I”.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive.  These unregistrable terms are at best are merely descriptive of a characteristic of applicant’s services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).

 

An abbreviation, initialism, or acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents.  See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).

 

A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if:

 

(1)    the applied-for mark is an abbreviation, initialism, or acronym for specific wording;

 

(2)    the specific wording is merely descriptive of applicant’s goods and/or services; and

 

(3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as the equivalent of the merely descriptive wording it represents.

 

TMEP §1209.03(h); see In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)).

 

In the present case, the attached evidence shows that applicant’s mark “AI” is an acronym for the wording “artificial intelligence.”  See http://www.acronymfinder.com/AI.html.  Further, the attached evidence shows this wording is commonly used in connection with similar advertising, technology, and telecommunications services to indicate the type of technology used within those industries.  See http://www.marketingaiinstitute.com/blog/ai-in-advertising, http://www.sciencenews.org/topic/artificial-intelligence, and http://techsee.me/blog/artificial-intelligence-in-telecommunications-industry/. Thus, the wording merely describes applicant’s services because it indicates a highly advanced form of technology is used in providing those services.

 

Lastly, a relevant consumer viewing applicant’s mark in connection with the identified services would recognize it as the equivalent of the descriptive wording it represents because this acronym is commonly used as descriptive within those industries, as indicated by the attached articles.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “AI” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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  

 

 

Sasha Rios

/Sasha Rios/

Trademark Examining Attorney

Law Office 125

P:  (571)272-2616

Sasha.Rios@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 October 03, 2019 for

U.S. Trademark Application Serial No. 88491203

 

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. 

 

 

Sasha Rios

/Sasha Rios/

Trademark Examining Attorney

Law Office 125

P:  (571)272-2616

Sasha.Rios@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 October 03, 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.”