To: | SparkCognition, Inc. (aparekh@sparkcognition.com) |
Subject: | U.S. Trademark Application Serial No. 88720539 - MODEL DRIVEN ENTERPRISE - T0004 |
Sent: | January 07, 2020 08:31:55 AM |
Sent As: | ecom127@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88720539
Mark: MODEL DRIVEN ENTERPRISE
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Correspondence Address:
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Applicant: SparkCognition, Inc.
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Reference/Docket No. T0004
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 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).
Sections 1, 2, 3, and 45 Refusal – Failure to Function
Terms and expressions that merely convey an informational message are not registrable. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04. “The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
The attached evidence from Forbes, IEEE, Boxes and Arrows, and OMG shows that this term or expression is commonly used to refer to enterprises that use model-driven or data oriented information based on algorithms and techniques to push the organization forward and conveys an information and data based decision making platform. Because consumers are accustomed to seeing this term or expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s goods and services but rather as only conveying an informational message.
An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
IDENTIFICATION AND CLASSIFICATION OF GOODS
International Class 9
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 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
Applicant may adopt the following wording, if accurate:
International Class 9: Downloadable computer software for automating business workflows using a pipeline of artificial intelligence models; 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} neuroevolution; Downloadable computer software for natural language processing; Downloadable computer software for virus protection; Downloadable computer software for Downloadable computer software, namely, scanning, detecting, quarantining and eliminating of viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices; Downloadable computer software for providing machine learning based predictive analytics on data sources, namely, industrial sensor data, financial data, marketing, sales and other forms of business information
International Class 41: providing online non-downloadable computer game software for neuroevolution
International Class 42: Providing temporary use of online non-downloadable computer software for automating business workflows using a pipeline of artificial intelligence models; Providing temporary use of online non-downloadable computer software for creating and optimizing artificial neural networks; Providing temporary use of online non-downloadable computer software for employing genetic algorithms and deep learning techniques in the field of artificial intelligence; Providing temporary use of online non-downloadable computer software for {specify function} neuroevolution; Providing temporary use of online non-downloadable computer software for natural language processing; Providing temporary use of online non-downloadable computer software for virus protection services; Providing temporary use of online non-downloadable computer software for computer services, namely, scanning, detecting, quarantining and eliminating of viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices; Providing temporary use of online non-downloadable computer software for providing machine learning based predictive analytics on data sources, namely, industrial sensor data, financial data, marketing, sales and other forms of business information
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
(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/or 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.
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