To: | X Development LLC (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88618820 - EVERYDAY ROBOTS - 125818.4064 |
Sent: | December 16, 2019 10:07:09 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88618820
Mark: EVERYDAY ROBOTS
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Correspondence Address:
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Applicant: X Development LLC
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Reference/Docket No. 125818.4064
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.
Issue date: December 16, 2019
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).
IDENTIFICATION OF GOODS
The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Anything in bold requires deletion, clarification or reclassification.
Class 9: Robots with artificial intelligence, machine learning, reinforcement learning, and deep learning; autonomous robots with artificial intelligence, machine learning, reinforcement learning, and deep learning; autonomous robots for residential, commercial and industrial use; Software for robots with artificial intelligence and robots; computer software and hardware for artificial intelligence, machine learning, reinforcement learning, and deep learning for use in connection with robots; downloadable computer software development tools; Computer software platforms, downloadable, for artificial intelligence, machine learning, reinforcement learning, and deep learning; Computer software platforms, downloadable, for robots; Computer software platforms, recorded, for artificial intelligence, machine learning, reinforcement learning, and deep learning; Computer software platforms, downloadable, for use in connection with robots; Computer software platforms, recorded, for use in connection with robots; Computer operating software; computer programs and software for artificial intelligence, machine learning, reinforcement learning, and deep learning; computer programs and software for intelligent data services using artificial intelligence, machine learning, reinforcement learning, and deep learning; computer programs and software for artificial intelligence, machine learning, reinforcement learning, and deep learning, for contextual prediction, personalization, and predictive analytics; computer programs and software for artificial intelligence, machine learning, reinforcement learning, and deep learning for processing large volumes of data; computer software for use as an application programming interface (API); software development kits (SDK) Cameras; multiple purpose cameras; video cameras; optical sensors; proximity sensors; telecommunications transmitters
All software must specify it is downloadable which is Class 9 or non downloadable which is in Class 42. Applicant must also specify the purpose and function of the software. Computer software platforms, downloadable, for {indicate purpose of platforms, e.g., application development, web hosting, database management, etc.}
Anytime the term “kit” is used, applicant must also list the components of the kit. Are the goods, cameras as a part of software development kits?
Class 38: is acceptable as submitted.
Class 42: Research, design and development of computer hardware and software; research, design and development of robots and for structural parts thereof; technical support services, namely, installation, administration, and troubleshooting for robots; software as a service (SaaS) services featuring computer software for use as an application programming interface (API); advanced product research, design and development in the field of artificial intelligence; computer software development; computer software development tools; computer software development, computer programming and maintenance of computer software for robots; software development consulting in the field of robots
Again, all software must specify it is downloadable which is Class 9 or non downloadable which is in Class 42.
Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. 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.
In this case, applicant must disclaim the wording “ROBOTS” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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).
Applicant’s own identification of goods and services show that the goods are either actual robots, or software for such robots and as such the term is descriptive and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ROBOTS” 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.
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.
/Jacqueline Abrams/
Examining Attorney LO 101
(571) 272-9185
United States Patent and Trademark Office
jacky.abrams@USPTO.gov (INFORMAL ONLY)
RESPONSE GUIDANCE