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:  January 07, 2020

 

 

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.

 

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).

 

SUMMARY OF ISSUES:

• Identification and Classification of Goods
• Multiple Class Application Requirements

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The identification in International Class 9 features multiple entries for computer software with definite functions.  However, the identification of goods in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

The identification for “Computer software for nueroevolution” in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the (1) nature or (2) format of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Specifically, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d).  Additionally, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable.  See id.  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). 

 

The following are examples of acceptable identifications in International Class 9:  “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.”  Additionally, the following are acceptable identifications in International Class 41:  “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.”  Finally, the following are acceptable identifications in International Class 42:  “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”

 

International Class 42

 

The wording “Providing temporary use of online, non-downloadable software for nueroevolution” in the identification of services is indefinite and must be clarified because the entry does not specify a function.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “computer software consultation” services in International Class 42 must be clarified because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(e).  This wording is indefinite because the wording “computer software consultation” is a duplicative entry and is no longer acceptable. 

 

Consultation services are classified in the international class of the subject matter of the consultation.  See TMEP §1401.02(a).  For example, “consultation about the repair of computer hardware” is in International Class 37 (the class for computer hardware repair), and “computer technology consultation” is in Class 42 (the class for various computer technology services).

 

In both classes, applicant has included the term “or” in the identification of goods and services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant intends to use the mark on all of the identified goods and services.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Finally, the lettering “API” in the identification of goods and services in International Classes 9 and 41 is indefinite and must be clarified because the nature of the entry is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following wording, if accurate: 

 

International Class 9: Downloadable computer software for generating and building artificial intelligence solutions, namely, data cleansing in the nature of amending and removing data in a database that is incorrect, incomplete, improperly formatted, and duplicated, automated data filtering, automated evaluating and selecting features, model building, and visualization and reporting of model execution results, all in the field of artificial intelligence; Downloadable computer software for deep learning in the field of artificial intelligence; Downloadable computer software for machine learning tool, namely, an algorithm and application programming interface (API) in the field of artificial intelligence; Downloadable computer software for creating and optimizing artificial neural networks; Downloadable computer software for employing genetic algorithms and deep learning techniques in the field of artificial intelligence; Downloadable computer software for {specify function of software} neuroevolution; Downloadable computer software for cognitive computing analytics; Downloadable Cyber-physical software for the safety, security, reliability, and optimization of Information Technology, Operational Technology, and the Industrial Internet of Things using artificial intelligence; Downloadable computer software for natural language processing; Downloadable computer software for natural language processing using artificial intelligence; Downloadable Artificial intelligence computer software that utilizes algorithms and deep learning techniques that create a separate executable software for an end-user

 

International Class 41: providing online non-downloadable computer game software for neuroevolution

 

International Class 42: Providing temporary use of online, non-downloadable software for generating and building artificial intelligence solutions, namely, data cleansing in the nature of amending and removing data in a database that is incorrect, incomplete, improperly formatted, or duplicated, automated data filtering, automated evaluating and selecting features, model building, and visualization and reporting of model execution results, all in the field of artificial intelligence; Providing temporary use of online, non-downloadable software for deep learning in the field of artificial intelligence; Providing temporary use of online, non-downloadable software for machine learning tool, namely, an algorithm and application programming interface (API) in the field of artificial intelligence; Providing temporary use of online, non-downloadable software for creating and optimizing artificial neural networks; Providing temporary use of online, non-downloadable software for employing genetic algorithms and deep learning techniques in the field of artificial intelligence; Providing temporary use of online, non-downloadable software for {specify function of software} neuroevolution; Providing temporary use of online, non-downloadable software for cognitive computing analytics; Providing temporary use of online, non-downloadable for cyber-physical software for the safety, security, reliability, and optimization of Information Technology, Operational Technology, and the Industrial Internet of Things using artificial intelligence; Providing temporary use of online, non-downloadable software for natural language processing; Providing temporary use of online, non-downloadable software for natural language processing using artificial intelligence; Providing temporary use of online, non-downloadable artificial intelligence computer software that utilizes algorithms and deep learning techniques that create a separate executable software for an end-user; Providing software as a service (SAAS) services featuring software for generating and building artificial intelligence solutions, namely, data cleansing in the nature of amending or removing data in a database that is incorrect, incomplete, improperly formatted, or duplicated, automated data filtering, automated evaluating and selecting features, model building, and visualization and reporting of model execution results, all in the field of artificial intelligence; Providing software as a service (SAAS) services featuring software for deep learning in the field of artificial intelligence; Providing software as a service (SAAS) services featuring software for machine learning tool, namely, an algorithm and application programming interface (API) in the field of artificial intelligence; Providing software as a service (SAAS) services featuring software for creating and optimizing artificial neural networks; Providing software as a service (SAAS) services featuring software for employing genetic algorithms and deep learning techniques in the field of artificial intelligence; Providing software as a service (SAAS) services featuring software for {specify function of software} neuroevolution; Providing software as a service (SAAS) services featuring software for cognitive computing analytics; Providing software as a service (SAAS) services featuring Cyber-physical software for the safety, security, reliability, and optimization of Information Technology, Operational Technology, and the Industrial Internet of Things using artificial intelligence; Providing software as a service (SAAS) services featuring software for natural language processing; Providing software as a service (SAAS) services featuring software for natural language processing using artificial intelligence; Providing software as a service (SAAS) services featuring artificial intelligence computer software that utilizes algorithms and deep learning techniques that create a separate executable software for an end-user; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to generating and building artificial intelligence solutions, namely, data cleansing in the nature of amending or removing data in a database that is incorrect, incomplete, improperly formatted, or duplicated, automated data filtering, automated evaluating and selecting features, model building, and visualization and reporting of model execution results, all in the field of artificial intelligence; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to deep learning in the field of artificial intelligence; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to machine learning tool, namely, an algorithm and application programming interface (API) in the field of artificial intelligence; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to creating and optimizing artificial neural networks; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to employing genetic algorithms and deep learning techniques in the field of artificial intelligence; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to neuroevolution; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to cognitive computing analytics; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to the safety, security, reliability, and optimization of Information Technology, Operational Technology, and the Industrial Internet of Things using artificial intelligence; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to natural language processing; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to natural language processing using artificial intelligence; Computer software consulting and technical support services in the nature of troubleshooting of computer software problems relating to artificial intelligence computer software that utilizes algorithms and deep learning techniques that create a separate executable software for an end-user

 

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

 

Applicant should note the following additional requirement.

 

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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 3 classes; however, applicant submitted a fees sufficient for only 2 classes.  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.

 

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.    

 

 

/Joseph P. McCarthy/

Trademark Examining Attorney

Law Office 127

Phone: (571) 272-0458

joseph.mccarthy@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 January 07, 2020 for

U.S. Trademark Application Serial No. 88688056

 

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. 

 

 

/Joseph P. McCarthy/

Trademark Examining Attorney

Law Office 127

Phone: (571) 272-0458

joseph.mccarthy@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 January 07, 2020, 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.”