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 24, 2019

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

 

SEARCH

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

SUMMARY OF ISSUES:

 

•           Mark is merely descriptive

•           Recitation of services indefinite

•           Requirements for adding additional classes

 

 

SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes the purpose/function/intended users of applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Applicant has applied to register AUTOMATED FLIGHT RULES for “Consultation and technological design services related to the use and operation of unmanned aircraft (flying taxis) and autonomous vehicles in urban environments including solutions related to safety requirements, operations and procedures for take off and landing, flight paths, locations and landing, navigation, coordination, inspection, infrastructure, rules and criteria and documentation related to impacts and registries; downloadable and non-downloadable (SAAS) software, software design and development related to the foregoing.”

 

AUTOMATED FLIGHT RULES merely describes applicant’s goods/services, which are used in connection with automated flight.  The services involve, among other things, “rules and criteria” related to the use and operation of unmanned aircraft and autonomous vehicles.  Unmanned aircraft could be said to provide automated flight, and in fact the term is used in the industry.  The attached New York Times article discusses automated flight, saying “‘Automated flight controls go back into the 1920s, and through World War II they had rudimentary autopilots,’ Dr. Wiggins said. ‘The idea was that the automation would relieve the pilots of very routine flying and monitoring tasks and would allow them to focus on situational awareness and other monitoring duties they have to take care of.’”  It goes on to say “if you look at the most modern aircraft now, they have fully automated landing capability for very low visibility and other automated controls.”  Finally, “Mr. Schmidt also said he was more bullish about the future of automated flight controls.  ‘The technology to be able to do all the things that a pilot does on an unmanned aerial vehicle today exists,’ he said. ‘Is that going to happen in the next year? No. Is that going to happen sooner than we think? Yes.’”

 

Also see the attached Financial Times article titled “How the safety of automated flight is challenging tech experts,” which begins “While much of the popular discussion around automated transport focuses on self-driving cars, engineers are also looking to the skies. Both the risks and the opportunities inherent in air transport of the future are drawing in some of the best minds in artificial intelligence, engineering and urban planning.”

 

As such, AUTOMATED FLIGHT RULES merely describes applicant’s suite of services.  “A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if a mark describes only one significant function, attribute, or property.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.

 

 

A mark does not need to be merely descriptive of all the goods or services specified in an application.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012).  “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’”  In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).

 

As such, registration is refused because the mark merely describes the goods/services.  Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

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

 

 

IDENTIFICATION OF GOODS/SERVICES

 

The recitation of services is indefinite and must be clarified as explained below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

The recitation must also be clarified because it is too broad and could include goods/services in several other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Consultation services are in numerous classes depending on the subject matter of the consultation.  For example, flight safety consultation is in Class 45 with other safety consultation, but consultation regarding flight paths, locations and landing, navigation, etc. is in Class 39 with transportation services.  The phrase “technological design services” is unclear.  Most design services for others are in Class 42, e.g. software design, computer aided design, design of buildings, etc.  Applicant must list specific design services.  Technological design services of things like safety requirements and navigation makes no sense.  The wording “consultation and technological design services related to … rules and criteria and documentation related to impacts and registries” is unclear.  If this refers to public policy consultation, that service is in Class 35.  Finally, downloadable software is in Class 9 but online software is in Class 42.

 

Applicant may substitute one or more of the following wording, if accurate: 

 

[new class] DOWNLOADABLE SOFTWARE for use in operation of unmanned aircraft, such as flying taxis, and autonomous vehicles in urban environments including assistance with safety requirements, operations and procedures for take-off and landing, flight paths, locations and landing, navigation, coordination and inspection (Class 9), and/or

 

[new class] PUBLIC POLICY CONSULTATION related to the use and operation of unmanned aircraft (flying taxis) and autonomous vehicles in urban environments (Class 35), and/or

 

[new class] Consultation and technological design services related to the use and operation of unmanned aircraft (flying taxis) and autonomous vehicles in urban environments including solutions related to, SPECIFICALLY, CONSULTATION IN THE FIELD OF UNMANNED AIRCRAFT AND AUTONOMOUS VEHICLE operations and procedures for take-off and landing, flight paths, locations and landing, navigation, FLIGHT coordination AND TRANSPORTATION infrastructure (Class 39), and/or

 

[existing class] Consultation and technological design services related to the use and operation of unmanned aircraft (flying taxis) and autonomous vehicles in urban environments including solutions related to, SPECIFICALLY, DESIGN AND DEVELOPMENT OF [SPECIFY]; downloadable and non-downloadable (SAAS) software, software design and development related to the foregoing; SOFTWARE AS A SERVICE (SaaS) SERVICES FEATURING SOFTWARE FOR USE IN operation of unmanned aircraft, such as flying taxis, and autonomous vehicles in urban environments including assistance with safety requirements, operations and procedures for take-off and landing, flight paths, locations and landing, navigation, coordination and inspection; software design and development FOR OTHERS IN THE FIELD OF operation of unmanned aircraft, such as flying taxis, and autonomous vehicles in urban environments including assistance with safety requirements, operations and procedures for take-off and landing, flight paths, locations and landing, navigation, coordination and inspection (Class 42), and/or

 

[new class] Consultation and technological design services related to the use and operation of unmanned aircraft (flying taxis) and autonomous vehicles in urban environments including solutions related to, SPECIFICALLY, CONSULTATION IN THE FIELD OF UNMANNED AIRCRAFT AND AUTONOMOUS VEHICLE safety requirements AND SAFETY inspections (Class 45).

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 in or encompassed by those in the original U.S. 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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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 goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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

 

 

 

/James T. Griffin/

Examining Attorney, Law Office 103

United States Patent & Trademark Office

571-272-9169

jim.griffin@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 24, 2019 for

U.S. Trademark Application Serial No. 88497881

 

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. 

 

 

/James T. Griffin/

Examining Attorney, Law Office 103

United States Patent & Trademark Office

571-272-9169

jim.griffin@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 September 24, 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.”