United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88640602
Mark: SMARTSORT
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Correspondence Address: |
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Applicant: Fidelity Ag, Inc.
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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.
Issue date: January 10, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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
Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose or function of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In this case, the applied-for mark is SMARTSORT for “Recycling; Recycling of waste.” The term “smart” means “programmed so as to be capable of some independent action” and “using a built-in microprocessor for automatic operation, for processing of data, or for achieving greater versatility,” as shown by the attached dictionary definition evidence. This describes a feature or characteristic of the services because the services use an automated sorter device that appears to use artificial intelligence, as shown by the attached internet evidence from applicant’s website, www.smartsortai.com (“Smartsort AI”). The term AI, or artificial intelligence, means “The theory and development of computer systems able to perform tasks that normally require human intelligence, such as visual perception, speech recognition, decision-making, and translation between languages” as shown by the attached dictionary definition evidence. This type of wording (“smart” or AI) is commonly used to describe a feature of recycling machines that are automated as shown by the attached internet evidence from www.allerin.com (blog post discusses using AI in recycling machinery or an automated, smart, process: “The year 2011 saw a Finnish company, ZenRobotics, employ AI for smart recycling by managing waste using a robotic waste sorter. Combining computer vision, machine learning, and artificial intelligence, the robots ran synchronized trials to sort and pick recycled materials from moving conveyor belts”), www.ge.com (discusses the use of AI in recycling machinery or an automated, or smart, process: “Dumpster Diving Robots: Using AI For Smart Recycling”; “But the future of smart recycling is looking brighter. Spider-like robotic arms, guided by cameras and artificial intelligence (AI) — think of it as facial-recognition technology for garbage — are helping to make municipal recycling facilities (MRFs) run more efficiently”), and www.acorecycling.com (makes a smart recycling system: “Review Aco Recycling B-1 Smart Reverse Vending Machine”; “It becomes possible for users to preserve and to collect the waste separately and cleanly at the point that the waste occurs by throwing the recyclable material like plastic , glass bottles or aluminum beverage cans into the smart machine”; “Within Our Smart Reverse Vending Machines, we use a smart camera and CCD censors an equipment which measure weight and recognize material”). As a result, this term merely describes a feature of characteristic of the recycling services
The term “sort” means “Arrange systematically in groups; separate according to type, class, etc” and “to arrange according to characteristics” as shown by the attached dictionary definition evidence. This is merely descriptive of the purpose or function of the applicant’s services because presumably the recycling services use a sorting machine. This is common in recycling service machinery, as shown by the attached internet evidence from www.cpmfg.com (makes “recycling sorting equipment”; “Our superior sorting equipment line includes disc screens, trommels, conveyor systems, air classifiers, metering equipment, optical sorters, glass crushers, magnetic separation equipment, and an extensive line of balers to tie it all together”), www.tomra.com (makes waste sorting equipment for recycling), and www.greenmachine.com (makes “optical sorting recycling system”). As a result, this term merely describes a function of purpose of the recycling services.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Putnam Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the 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 services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, as discussed above, the terms SMART and SORT are descriptive of a characteristic, feature, purpose and use of applicant’s services because the recycling services use a sorting machine that is automated with artificial intelligence, or “smart.” Therefore, this wording directly describes the services. Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
(1) Do the recycling services utilize a smart, or automated process or machinery?
(2) Do the recycling services utilize a sorting machine?
Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the services will not satisfy this requirement for information.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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 and requirement 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.
/Jillian Cantor/
Trademark Examining Attorney
Law Office 117
(571) 272-6564
Jillian.Cantor@uspto.gov
RESPONSE GUIDANCE