To: | Beijing Roborock Technology Ltd. (gtipmail@gtlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88599441 - REACTIVEAI - N/A |
Sent: | December 04, 2019 03:22:37 PM |
Sent As: | ecom108@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 Attachment - 12 Attachment - 13 Attachment - 14 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88599441
Mark: REACTIVEAI
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Correspondence Address: 4 EMBARCADERO CENTER, SUITE 3000
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Applicant: Beijing Roborock Technology Ltd.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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.
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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Here, applicant has applied to register the mark REACTIVEAI for use in connection with “Downloadable computer software for remotely detecting, calculating, monitoring, mapping, and reporting surface conditions; Remote on-site robot; humanoid robot with artificial intelligence; cameras; detectors; optical position sensors; distance measuring devices; infrared, photoelectric, laser, and ultrasonic sensors for measuring position; Electro-dynamic apparatus for the remote control of signals; Camcorders; Detectors; Distance measuring apparatus; Distance recording apparatus; Measuring apparatus; Surveying apparatus and instruments; Optical apparatus and instruments for positioning; Sensors; Optical communications instruments; Optical receivers; Lasers, not for medical purposes; Laser pointers; Measuring, counting, alignment and calibrating instruments; Lasers for measuring instrument; Optical sensors; Data processing apparatus; Surveying instruments; Coordinate measuring instruments; Face recognition device; Navigation equipment for freight system” in International Class 9.
Please see the attached dictionary definitions showing that “REACTIVE” means “Tending to be responsive or to react to a stimulus” and “AI” means “artificial intelligence”.
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 do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.
In the context of the goods, “Downloadable computer software for remotely detecting, calculating, monitoring, mapping, and reporting surface conditions; Remote on-site robot; humanoid robot with artificial intelligence; cameras; detectors; optical position sensors; distance measuring devices; infrared, photoelectric, laser, and ultrasonic sensors for measuring position; Electro-dynamic apparatus for the remote control of signals; Camcorders; Detectors; Distance measuring apparatus; Distance recording apparatus; Measuring apparatus; Surveying apparatus and instruments; Optical apparatus and instruments for positioning; Sensors; Optical communications instruments; Optical receivers; Lasers, not for medical purposes; Laser pointers; Measuring, counting, alignment and calibrating instruments; Lasers for measuring instrument; Optical sensors; Data processing apparatus; Surveying instruments; Coordinate measuring instruments; Face recognition device; Navigation equipment for freight system”, the combined wording of REACTIVEAI immediately conveys that the goods feature artificial intelligence that responds to a stimulus. Please see the attached Internet evidence from Government Technology, Futurism, and Forbes showing that “REACTIVE” artificial intelligence is a type of artificial intelligence used in systems and machines, such as robots. Specifically, Government Technology provides, “The most basic types of AI systems are purely reactive, and have the ability neither to form memories nor to use past experiences to inform current decisions.” Futurism provides, “Purely Reactive. This is the most basic form of AI”. Forbes provides, “Reactive Machines. These are the oldest forms of AI systems that have extremely limited capability.”
In view of the above, the applied-for mark is merely descriptive of the characteristics and purpose of the applicant’s goods, and therefore, registration is refused under Trademark Act Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. Applicant should note the following advisory.
ADVISORY: SUPPLEMENTAL REGISTER INELIGIBILITY
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
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.
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
(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
The identification of goods in Class 9 is indefinite and must be clarified to ensure proper analysis.
The wording “Remote on-site robot”, “detectors”, “distance measuring devices; infrared, photoelectric, laser, and ultrasonic sensors for measuring position”, “Measuring apparatus; Surveying apparatus and instruments; Optical apparatus and instruments for positioning; Sensors; Optical communications instruments”, “Measuring, counting, alignment and calibrating instruments”, and “Coordinate measuring instruments; Face recognition device; Navigation equipment for freight system” in the identification of goods is indefinite and must be clarified to further specify the nature or purpose of the goods, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Applicant may adopt the following suggestions, if accurate:
009: Downloadable computer software for remotely detecting, calculating, monitoring, mapping, and reporting surface conditions; Remote on-site robot, namely,
telepresence robots; humanoid robot with artificial intelligence; cameras; detectors, namely, {specify type of detector, e.g., motion detector, fire and smoke detectors,
etc.}; optical position sensors; distance measuring apparatus; infrared, photoelectric, laser, and ultrasonic sensors for determining position;
Electro-dynamic apparatus for the remote control of signals; Camcorders; Detectors; Distance measuring apparatus; Distance recording apparatus; {specify purpose, e.g.,
antenna parameter, pressure, etc.} measuring apparatus; Surveying apparatus and instruments, namely, {specify apparatus and instruments, e.g., surveying compass needles,
levelling rods, transits, chains, machines, etc.}; Optical apparatus and instruments for positioning, namely, {specify apparatus and instruments, e.g., optical reflectors,
optical readers, optical shutters, etc.}; Sensors, namely, {specify sensors, e.g., ultrasonic sensors, pressure sensors, oil level sensors, pollutant sensors, etc.}; Optical
communications instruments, namely, {specify instruments, e.g., optical transmitters, optical receivers, digital transmitters, etc.}; Optical receivers; Lasers, not for medical
purposes; Laser pointers; Measuring, counting, alignment and calibrating instruments, namely, {specify instruments, e.g., vehicle wheel alignment machines, industrial calibration
sensors, etc.}; Lasers for measuring instrument; Optical sensors; Data processing apparatus; Surveying instruments; Coordinate measuring machines; Face recognition
devices, namely, cameras; GPS navigation devices for freight systems
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 must address the following requirement.
CLARIFICATION OF ENTITY TYPE
Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “limited corporation” in this instance than to the legal entities listed in TMEP Appendix D. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
RESPONSE GUIDELINES
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.
/Nathaniel Pettican/
Nathaniel Pettican
Examining Attorney
Law Office 108
(571) 272-1087
nathaniel.pettican@uspto.gov
RESPONSE GUIDANCE