United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88950949
Mark: OPTIMUM
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Correspondence Address: 4633 OLD IRONSIDES DRIVE, SUITE 160
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Applicant: PETUUM 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: September 17, 2020
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark OPTIMUM is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5015376, 4358922, 5888728, 5888560, 5894521, 4747119, 5210575, 5210573, 5210574, 4868545, 5878034, 5378488, 5094413, 4433357, 1418192, 3277751, 5993561, 6029362, 4699937, 2386821, 3800253, 5218420, 5117333, 5117332, 5218421, 5658726, and 5038497. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [and services] and differences in the marks.”); TMEP §1207.01.
In this case, the applied-for mark is likely to cause confusion because the compared marks are similar and the compared goods and services are related, as discussed below.
Comparison of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, applicant has applied for the mark OPTIMUM in standard characters.
Registrants have registered their marks as follows:
Registration No. |
Mark |
Class |
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5015376 |
OPTIMUM |
42 |
Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems. |
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4358922 |
OPTIMUM HEALTHCARE IT |
42 |
Consulting in the field of information technology. |
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5888728 |
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5888560 |
OPTIMUM TECH |
42 |
Consulting services in the field of information technology. |
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5894521 |
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4747119 |
OPTIMUM DOCUMENT SERVICES |
42 |
Document Management System, namely, providing a web site and online non-downloadable software featuring technology to manage documents. |
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5210575 |
OPTIMUMAIR |
9 |
Computer software platforms for providing data and analysis of energy consumption by central plant systems; process control software for central plant systems. |
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5210573 |
OPTIMUMEDGE |
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5210574 |
OPTIMUMHEAT |
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4868545 |
OPTIMUMLOOP |
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5878034 |
POWERED BY OPTIMUM ENERGY |
9 |
Process control software for pressure independent control valves for use in connection with heating, ventilation and air conditioning systems. |
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5378488 |
OPTIMUM ENERGY |
9 |
Computer software platforms for providing data and analysis of energy consumption by central plant systems; process control software for central plant systems. |
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5094413 |
OE OPTIMUM ENERGY |
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42 |
Providing on-line non-downloadable software for controlling, maintaining, analyzing and modifying building operations for heating, ventilating and air conditioning systems; cloud computing featuring software for controlling, maintaining, analyzing and modifying building operations for use with heating, ventilating and air conditioning systems; remote monitoring services of heating, ventilating and air conditioning apparatus; software as a service (SAAS) services featuring software for controlling, maintaining, analyzing and modifying building operations for heating, ventilating and air conditioning systems; design, maintenance, development and updating of computer software for heating, ventilating and air conditioning systems. |
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4433357 |
OPTIMUM |
9 |
Full line of industrial computer hardware, electronic and electrical apparatus, namely, electronic machine automation sensors and electronic inductive and capacitive proximity switches for use in the field of industrial automation. |
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1418192 |
OPTIMUM |
9 |
Computer programs in the form of diskettes and tapes. |
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3277751 |
OPTIMUM |
9 |
Computer software for enabling vendor access to automatic meter reading systems and data. |
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5993561 |
OPTIMUM |
9 |
Computer software, namely, downloadable and installable litigation software for automated and integrated case management, execution and tracking of electronic discovery related activities, namely, governance, collecting, storing, sharing, processing, reviewing, searching, managing, categorizing, coding, reporting and presenting documents, and management, execution, profiling and prediction of litigation. |
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6029362 |
OPTIMUM |
42 |
Computer services, namely, computer software application development for others, in the field of litigation software and litigation services; computer system design for others, in the field of litigation software and litigation services; computer software deployment for others, in the field of litigation software and litigation services; computer system and computer software integration and technical consulting, in the field of litigation software and litigation services; hosting online web and cloud facilities for others, in the field of litigation software and litigation services; application service provider featuring web-based litigation software for governance, collecting, storing, sharing, processing, reviewing, searching, managing, categorizing, coding, reporting and presenting documents and management, execution, profiling and prediction of litigation. |
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4699937 |
OPTIMUM |
9 |
Computer application software for streaming television programs and movies on smartphones, tablets and laptop computers. |
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2386821 |
OPTIMUM |
9 |
Computer software, namely, interactive software for preparing primary and secondary grade school students to take state-adminstered proficiency tests. |
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3800253 |
OPTIMUM GOAL SCHEDULING |
9 |
Computer programs for use in the management and scheduling of recorded musical entertainment. |
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5218420 |
OPTIMUM HRIS |
9 |
Computer software for managing payroll, human resources, and employee time and attendance. |
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5117333 |
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5117332 |
42 |
Software as a service (SAAS) services featuring software for managing payroll, human resources, and employee time and attendance. |
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5218421 |
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5658726 |
OPTIMUM MAXIMIZER |
9 |
Educational software featuring professional and personal development training programs in the field of entrepreneurial development, growth and business management; downloadable software in the nature of an application for use with professional and personal development training programs in the field of business management; pre-recorded dvds and pre-recorded compact discs, all containing instructional guides for use with professional and personal development training programs in the field of entrepreneurial development, growth and business management. |
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42 |
Platform as a service (paas) featuring online interactive computer software platforms for use with professional and personal development training programs in the field of entrepreneurial development, growth and business management. |
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5038497 |
OPTIMUMDIGITAL PLANET |
9 |
computer printers, scanners being data processing equipment, photocopiers; blank magnetic and optic data carriers and computer software for use in database management, use with the operation of industrial printers and computer operating programmes recorded thereto, downloadable and recordable electronic publications in the nature of books, magazines, manuals in the field of industrial printing. |
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The applied-for mark is identical to the literal element in the registered marks OPTIMUM in appearance, sound, and meaning, and thus the marks “have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and services. Id.
Further, the applied-for mark is entirely incorporated in the registered marks OPTIMUM HEALTHCARE IT, OPTIMUM TECH, OPTIMUM DOCUMENT SERVICES, OPTIMUMAIR, OPTIMUMEDGE, OPTIMUMHEAT, OPTIMUMLOOP, POWERED BY OPTIMUM ENERGY, OPTIMUM ENERGY, OE OPTIMUM ENERGY, GOAL SCHEDULING, OPTIMUM HRIS, OPTIMUM MAXIMIZER, and OPTIMUMDIGITAL PLANET. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
Applicant’s mark and registrants’ marks are identical and identical in part in appearance, sound, connotation, and commercial impression. As such, the marks are confusingly similar.
Comparison of Goods and Services
In the present case, applicant has applied for its mark for use in connection with “Downloadable or recorded software for optimizing, predicting and controlling process parameters; Downloadable or recorded software for optimizing, predicting, and controlling industrial process parameters; Downloadable or recorded software for optimizing, predicting, and controlling manufacturing process parameters; Downloadable or recorded software for optimizing, predicting and controlling production parameters; Downloadable or recorded software for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve, production end point, emission, energy efficiency, safety, etc.; Downloadable or recorded software for optimizing, predicting, and controlling process parameters using artificial intelligence; Downloadable or recorded software for optimizing, predicting, and controlling industrial process parameters using artificial intelligence; Downloadable or recorded software for optimizing, predicting and controlling production parameters using artificial intelligence; Downloadable or recorded software for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve, production end point, emission, energy efficiency, safety, etc. using artificial intelligence; Downloadable or recorded software for optimizing, predicting, and controlling process parameters using machine learning; Downloadable or recorded software for optimizing, predicting, and controlling industrial process parameters using machine learning; Downloadable or recorded software for optimizing, predicting and controlling production parameters using machine learning; Downloadable or recorded software for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve, production end point, emission, energy efficiency, safety, etc. using machine learning; Machine Learning algorithm based downloadable or recorded software for optimizing, predicting and controlling process parameters; Machine Learning algorithm based downloadable software for optimizing, predicting, and controlling industrial process parameters; Machine Learning algorithm based downloadable or recorded software for optimizing, predicting, and controlling manufacturing process parameters; Machine Learning Algorithm Based downloadable or recorded software for optimizing, predicting and controlling production parameters; Machine Learning based downloadable or recorded software for optimizing, predicting and controlling production parameters; Downloadable or recorded software for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quantity, temperature-time curve, production end point; Artificial Intelligence, Machine Learning Deep Learning, or Neural Network based downloadable or recorded software for optimizing, predicting and controlling production; Artificial Intelligence, Machine Learning Deep Learning, or Neural Network based downloadable or recorded software for optimizing, predicting and controlling industrial process; Artificial Intelligence, Machine Learning Deep Learning, or Neural Network based downloadable or recorded software for autonomously optimizing, predicting and controlling industrial process; Downloadable or recorded software; data processing equipment; computers; computer peripherals; computer programs; software development kits (SDKs) in the nature of downloadable or recorded software; Downloaded or recorded computer software for collecting, analyzing, editing, managing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Downloaded or recorded computer software for use in data management and analysis; computer software development tools; personal assistance software and devices; computer software databases; computer data in recorded form; electronic publications; audio recordings and video recordings for educational and training purposes; Downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Downloadable or recorded computer software for developing artificial intelligence (AI) applications or programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial Intelligence (AI) computer software platform in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial Intelligence (AI) computer software platform in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Artificial Intelligence (AI) computer software platform in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial Intelligence (AI) computer software platform in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software component in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Computer software component in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software component in the nature of downloadable or recorded computer software for use by others for developing artificial intelligence (AI) applications or programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial Intelligence (AI) platform computer software component in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial Intelligence (AI) computer software platform component in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Artificial Intelligence (AI) computer software platform component in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial Intelligence (AI) computer software platform component in the nature of downloadable or recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing” in International Class 9 and “Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling industrial process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling manufacturing process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve, production end point, emission, energy efficiency, safety, etc.; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling process parameters using artificial intelligence; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling industrial process parameters using artificial intelligence; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters using artificial intelligence; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve, production end point, emission, energy efficiency, safety, etc. using artificial intelligence; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling process parameters using machine learning; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling industrial process parameters using machine learning; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters using machine learning; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve, production end point, emission, energy efficiency, safety, etc. using machine learning; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling industrial process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling manufacturing process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quantity, temperature-time curve, production end point; Machine Learning algorithm based Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling process parameters; Machine Learning algorithm based Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling industrial process parameters; Machine Learning algorithm based Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling manufacturing process parameters; Machine Learning Algorithm Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters; Machine Learning based Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production parameters such as yield, purity, cost, production time, output quantity, temperature-time curve, production end point; Artificial Intelligence, Machine Learning, Deep Learning, or Neural Network based Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production; Artificial Intelligence, Machine Learning Deep Learning, or Neural Network based Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling industrial process; Software as a Service (SAAS) or Platform as a Service (PAAS); Software as a Service (SAAS) or Platform as a Service (PAAS) for collecting, analyzing, editing, managing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Software as a Service (SAAS) or Platform as a Service (PAAS) for use in data management and analysis; Software as a Service (SAAS) or Platform as a Service (PAAS) for software development tools; Computer software consulting; Computer software development in the field of Artificial Intelligence, Machine Learning, Deep Learning, or Neural Network based software or software platform for optimizing, predicting and controlling industrial processes or manufacturing processes; Computer software development in the field of Artificial Intelligence, Machine Learning, Deep Learning, or Neural Network based software or software platform for autonomously optimizing, predicting and controlling industrial processes or manufacturing processes; Computer software as a service (SAAS) in the area of artificial intelligence, machine learning, or deep learning, namely, computer software as a service (SAAS) featuring non-downloadable artificial intelligence, machine learning, or deep learning computer software application or programs; Computer software as a service (SAAS) for use in developing and deploying machine learning or deep learning applications or programs; Computer software as a service (SAAS) for use in developing and deploying machine learning or deep learning applications or programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software as a service (SAAS) for use in developing artificial intelligence applications or programs; Computer software as a service (SAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs; Computer software as a service (SAAS) featuring non-downloadable artificial intelligence computer software or application for developing and deploying machine learning or deep learning applications or software programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software as a service (SAAS) featuring non-downloadable artificial intelligence computer software platform; Computer software as a service (SAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs; Computer software as a service (SAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software platform as a service (PAAS) featuring computer software platforms, including an operating system, for building machine learning, deep learning, or artificial intelligence applications; Computer software platform as a service (PAAS) in the area of artificial intelligence, machine learning, or deep learning; Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence, machine learning, or deep learning computer software application or programs; Computer software platform as a service (PAAS) for use in developing and deploying machine learning or deep learning applications or programs; Computer software platform as a service (PAAS) for use in developing and deploying machine learning or deep learning applications or programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software platform as a service (PAAS) for use in developing artificial intelligence applications or programs; Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs; Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence computer software or application for developing and deploying machine learning or deep learning applications or software programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence computer software platform; Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs; Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing” in International Class 42.
Registrants have registered their marks for use in connection with the goods and services delineated above.
Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). In this case, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Further, the application uses broad wording to describe “downloadable or recorded software,” “computer programs,” and “Software as a Service (SAAS) or Platform as a Service (PAAS),” which presumably encompasses all goods and services of the type described, including registrants’ narrower:
Registration No. |
Goods and Services |
1418192 |
Computer programs in the form of diskettes and tapes. |
3277751 |
Computer software for enabling vendor access to automatic meter reading systems and data. |
5993561 |
Computer software, namely, downloadable and installable litigation software for automated and integrated case management, execution and tracking of electronic discovery related activities, namely, governance, collecting, storing, sharing, processing, reviewing, searching, managing, categorizing, coding, reporting and presenting documents, and management, execution, profiling and prediction of litigation. |
6029362 |
Application service provider featuring web-based litigation software for governance, collecting, storing, sharing, processing, reviewing, searching, managing, categorizing, coding, reporting and presenting documents and management, execution, profiling and prediction of litigation. |
4699937 |
Computer application software for streaming television programs and movies on smartphones, tablets and laptop computers. |
2386821 |
Computer software, namely, interactive software for preparing primary and secondary grade school students to take state-adminstered proficiency tests. |
3800253 |
Computer programs for use in the management and scheduling of recorded musical entertainment. |
5218420 |
Computer software for managing payroll, human resources, and employee time and attendance. |
5117333 |
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5117332 |
Software as a service (SAAS) services featuring software for managing payroll, human resources, and employee time and attendance. |
5218421 |
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5658726 |
Educational software featuring professional and personal development training programs in the field of entrepreneurial development, growth and business management; downloadable software in the nature of an application for use with professional and personal development training programs in the field of business management. |
Platform as a service (paas) featuring online interactive computer software platforms for use with professional and personal development training programs in the field of entrepreneurial development, growth and business management. |
See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).
Additionally, applicant’s “data processing equipment” and “electronic publications” encompass Registration No. 5038497’s “scanners being data processing equipment; downloadable and recordable electronic publications in the nature of books, magazines, manuals in the field of industrial printing,” respectively, and Registration No. 4433357’s “industrial computer hardware.”
Applicant’s “Software as a Service (SAAS) or Platform as a Service (PAAS) for collecting, analyzing, editing, managing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Software as a Service (SAAS) or Platform as a Service (PAAS) for use in data management and analysis” also encompasses Registration No. 4747119’s “providing online non-downloadable software featuring technology to manage documents.”
Further, Registration Nos. 4358922 and 5888728’s “consulting in the field of information technology” and Registration Nos. 5888560 and 5894521’s “consulting services in the field of information technology” encompass applicant’s “computer software consulting.”
Thus, applicant’s and registrants’ goods and services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
For those goods and services not encompassing, or encompassed by, registrants’ goods and services, evidence exists establishing that the goods and services of applicant and registrants are related. For example, the attached evidence from http://www.johnsoncontrols.com/, http://www.br-automation.com/, and http://new.siemens.com/ shows Johnson Controls, B&R, and Siemens offering process control software for optimizing and controlling process parameters. This establishes that the same entity commonly provides applicant’s “Downloadable or recorded software for optimizing, predicting and controlling process parameters; Downloadable or recorded software for optimizing, predicting, and controlling industrial process parameters” and “Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling industrial process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling manufacturing process parameters” and Registration Nos. 5210575, 5210573, 5210574, 4868545, 5378488, and 5094413’s “process control software for central plant systems” and Registration No. 5878034’s “process control software for pressure independent control valves for use in connection with heating, ventilation and air conditioning systems” and markets the goods and services under the same mark.
Additionally, the attached evidence from http://www.scnsoft.com/, http://www.itransition.com/, and http://www.forth.com/ shows ScienceSoft, Itransition, and Forth offering software consulting and support services. This establishes that the same entity commonly provides applicant’s “computer software consulting” and Registration No. 5015376’s “troubleshooting in the nature of diagnosing computer software problems” and markets the services under the same mark.
Thus, applicant’s and registrants’ goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Conclusion
Because applicant and registrants’ marks and goods and services are similar, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and services of the applicant and registrants. Accordingly, the proposed mark OPTIMUM creates a likelihood of confusion with registered marks, and registration is properly refused on the Principal Register under Section 2(d).
Applicant should note the following potential ground for refusal.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
CLARIFICATION OF IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The wording “for optimizing, predicting and controlling process parameters,” “for optimizing, predicting and controlling production parameters,” “for optimizing, predicting and controlling production,” and “etc.” in the identification of goods and services is indefinite and must be clarified because it fails to make clear the function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Similarly, the wording “Downloadable or recorded software,” “computer software as a service (SAAS) featuring non-downloadable artificial intelligence, machine learning, or deep learning computer software application or programs,” “Computer software as a service (SAAS) featuring non-downloadable artificial intelligence computer software platform,” “Computer software platform as a service (PAAS) in the area of artificial intelligence, machine learning, or deep learning,” “Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence, machine learning, or deep learning computer software application or programs,” and “Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence computer software platform” is indefinite because it fails to specify the function of the software.
Additionally, the wording “computer software development tools” is indefinite because it fails to specify whether the software is downloadable, recorded, or online non-downloadable.
The wording “personal assistance software and devices” and “computer data in recorded form” is also indefinite because it fails to make clear the nature of the goods.
Additionally, the wording “computer software databases” is indefinite because it fails to specify the format and subject matter of the databases.
Further, the wording “audio recordings and video recordings for educational and training purposes” is indefinite because it fails to specify the subject matter of the recordings.
Applicant may substitute the following wording, if accurate:
International Class 9: Downloadable or and recorded software for optimizing, predicting and controlling
industrial manufacturing process parameters; Downloadable or and recorded software for optimizing, predicting, and controlling industrial process
parameters; Downloadable or and recorded software for optimizing, predicting, and controlling manufacturing process parameters; Downloadable or
and recorded software for optimizing, predicting and controlling industrial manufacturing production parameters; Downloadable or and recorded
software for optimizing, predicting and controlling industrial production parameters such as yield, purity, cost, production time, output quality, output quantity,
temperature-time curve, production end point, emission, energy efficiency, and safety, etc.; Downloadable or and
recorded software for optimizing, predicting, and controlling industrial manufacturing process parameters using artificial intelligence; Downloadable or
and recorded software for optimizing, predicting, and controlling industrial process parameters using artificial intelligence; Downloadable or and recorded software
for optimizing, predicting and controlling industrial production parameters using artificial intelligence; Downloadable or and recorded software for
optimizing, predicting and controlling industrial production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve,
production end point, emission, energy efficiency, and safety, etc. using artificial intelligence; Downloadable or and
recorded software for optimizing, predicting, and controlling industrial manufacturing process parameters using machine learning; Downloadable or and
recorded software for optimizing, predicting, and controlling industrial process parameters using machine learning; Downloadable or and recorded software for optimizing,
predicting and controlling industrial production parameters using machine learning; Downloadable or and recorded software for optimizing, predicting
and controlling industrial production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve, production end point,
emission, energy efficiency, and safety, etc. using machine learning; Machine learning algorithm based downloadable or
and recorded software for optimizing, predicting and controlling industrial manufacturing process parameters; Machine learning algorithm based downloadable software for
optimizing, predicting, and controlling industrial process parameters; Machine learning algorithm based downloadable or and recorded software for optimizing, predicting,
and controlling manufacturing process parameters; Machine learning algorithm based downloadable or and recorded software for optimizing, predicting and controlling
industrial production parameters; Machine learning based downloadable or and recorded software for optimizing, predicting and controlling industrial production parameters; Downloadable or and recorded software for optimizing, predicting and controlling industrial
production parameters such as yield, purity, cost, production time, output quantity, temperature-time curve, and production end point; Artificial intelligence, machine learning
deep learning, or neural network based downloadable or and recorded software for optimizing, predicting and controlling industrial production;
Artificial intelligence, machine learning deep learning, or neural network based downloadable or and recorded software for optimizing, predicting and controlling
industrial process; Artificial intelligence, machine learning deep learning, or neural network based downloadable or and recorded software for autonomously optimizing,
predicting and controlling industrial process; Downloadable or recorded software; data processing equipment; computers; computer peripherals; downloadable computer programs for optimizing, predicting and controlling industrial manufacturing processes; software development kits (SDKs) in the nature of
downloadable or and recorded software; Downloadable or and recorded computer software for collecting, analyzing, editing, managing,
organizing, modifying, bookmarking, transmission, storage and sharing of data and information; Downloadable or and recorded computer software for use in data management
and analysis; downloadable computer software development tools; downloadable personal assistance software for appointment reminders
and personal digital assistant (PDA) devices; downloadable computer software databases in the field of {indicate subject matter, e.g.,
sports statistics, annual rainfall statistics, etc.}; computer data in recorded form, namely, recorded computer programs for use in electronic storage of data; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; audio
recordings and video recordings featuring {specify subject matter} for educational and training purposes; Downloadable or and recorded computer
software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or programs, in the nature of namely,
for helping others to build artificial intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Downloadable
or and recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or programs, in the nature of namely, for helping others to build artificial intelligence computer software or computer application to train ML or DL models for ML or DL
computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Downloadable
or and recorded computer software for developing artificial intelligence (AI) applications or programs, in the nature of
namely, for helping others to build artificial intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial
Intelligence (AI) computer software platform in the nature of downloadable or and recorded computer software for use by others for developing and deploying machine
learning (ML) or deep learning (DL) applications or software programs, in the nature of namely, for helping others to build artificial intelligence
computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial Intelligence (AI) computer software platform in the nature of
downloadable or and recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software
programs, in the nature of namely, for helping others to build artificial intelligence computer software or computer application to train ML or DL
models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging
computing; Artificial Intelligence (AI) computer software platform in the nature of downloadable or and recorded computer software for use by others for developing and
deploying machine learning (ML) or deep learning (DL) applications or software programs, in the nature of namely, for helping others to build
artificial intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial Intelligence (AI) computer software
platform in the nature of downloadable or and recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL)
applications or software programs, in the nature of namely, for helping others to build artificial intelligence computer software or computer
application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet
of things and edging computing; Computer software component in the nature of downloadable or and recorded computer software for use by others for developing and deploying
machine learning (ML) or deep learning (DL) applications or programs, in the nature of namely, for helping others to build artificial intelligence
computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Computer software component in the nature of downloadable or and recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or programs,
in the nature of namely, for helping others to build artificial intelligence computer software or computer application to train ML or DL models for ML or DL computer
applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software component
in the nature of downloadable or and recorded computer software for use by others for developing artificial intelligence (AI) applications or programs, in the nature of namely, for helping others to build artificial intelligence computer software or computer application to train ML or DL models for ML or
DL computer applications or computer programs; Artificial Intelligence (AI) platform computer software component in the nature of downloadable or and recorded computer
software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs, in the nature of
namely, for helping others to build artificial intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs; Artificial
Intelligence (AI) computer software platform component in the nature of downloadable or and recorded computer software for use by others for developing and deploying
machine learning (ML) or deep learning (DL) applications or software programs, in the nature of namely, for helping others to build artificial
intelligence computer software or computer application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such
as workstations, datacenters, the internet of things and edging computing; Artificial Intelligence (AI) computer software platform component in the nature of downloadable or
and recorded computer software for use by others for developing and deploying machine learning (ML) or deep learning (DL) applications or software programs, in the nature of namely, for helping others to build artificial intelligence computer software or computer application to train ML or DL models for ML or DL computer applications
or computer programs; Artificial Intelligence (AI) computer software platform component in the nature of downloadable or recorded computer software for use by others for
developing and deploying machine learning (ML) or deep learning (DL) applications or software programs in the nature of helping others to build Artificial Intelligence computer software or computer
application to train ML or DL models for ML or DL computer applications or computer programs using various program languages on any computer hardware, such as workstations, datacenters, the internet
of things and edging computing.
International Class 41: Providing online non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}.
International Class 42: Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting and controlling industrial manufacturing process parameters; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting, and controlling industrial process parameters; Software as a
Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting, and controlling manufacturing process
parameters; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting and controlling
industrial production parameters; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software
for optimizing, predicting and controlling industrial production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time
curve, production end point, emission, energy efficiency, and safety, etc.; Software as a Service (SAAS) or and Platform
as a Service (PAAS) services featuring software for optimizing, predicting, and controlling industrial manufacturing process parameters using artificial
intelligence; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting, and
controlling industrial process parameters using artificial intelligence; Software as a Service (SAAS) or and Platform as a Service (PAAS) services
featuring software for optimizing, predicting and controlling industrial production parameters using artificial intelligence; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting and controlling production parameters such as yield, purity, cost,
production time, output quality, output quantity, temperature-time curve, production end point, emission, energy efficiency, and safety, etc. using
artificial intelligence; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting,
and controlling industrial manufacturing process parameters using machine learning; Software as a Service (SAAS) or and Platform as a Service (PAAS)
services featuring software for optimizing, predicting, and controlling industrial process parameters using machine learning; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting and controlling industrial production
parameters using machine learning; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing,
predicting and controlling industrial production parameters such as yield, purity, cost, production time, output quality, output quantity, temperature-time curve, production end
point, emission, energy efficiency, and safety, etc. using machine learning; Software as a Service (SAAS) or Platform as a
Service (PAAS) for optimizing, predicting and controlling process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling industrial
process parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting, and controlling manufacturing process parameters; Software as a Service (SAAS) or Platform
as a Service (PAAS) for optimizing, predicting and controlling production parameters; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting and controlling industrial production parameters such as yield, purity, cost, production time, output
quantity, temperature-time curve, and production end point; Machine learning algorithm based Software as a Service (SAAS) or and Platform as a
Service (PAAS) services featuring software for optimizing, predicting and controlling industrial manufacturing process parameters; Machine learning
algorithm based Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting, and
controlling industrial process parameters; Machine learning algorithm based Software as a Service (SAAS) or and Platform as a Service (PAAS) services
featuring software for optimizing, predicting, and controlling manufacturing process parameters; Machine learning algorithm Software as a Service (SAAS) or and
Platform as a Service (PAAS) services featuring software for optimizing, predicting and controlling industrial production parameters; Machine learning
based Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting and controlling
industrial production parameters; Software as a Service (SAAS) or Platform as a Service (PAAS) for optimizing, predicting and controlling production
parameters such as yield, purity, cost, production time, output quantity, temperature-time curve, production end point; Artificial intelligence, machine learning, deep learning, or neural
network based Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting and
controlling industrial manufacturing production; Artificial intelligence, machine learning deep learning, or neural network based Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for optimizing, predicting and controlling industrial manufacturing
processes; Software as a Service (SAAS) or Platform as a Service (PAAS); Software as a Service (SAAS) or and Platform as
a Service (PAAS) services featuring software for collecting, analyzing, editing, managing, organizing, modifying, bookmarking, transmission, storage and sharing of data and
information; Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring software for use in data management and analysis;
Software as a Service (SAAS) or and Platform as a Service (PAAS) services featuring for software development tools; Computer software
consulting; Computer software development in the field of artificial intelligence, machine learning, deep learning, or neural network based software or software platform for optimizing, predicting
and controlling industrial processes or manufacturing processes; Computer software development in the field of artificial intelligence, machine learning, deep learning, or neural network based
software or software platform for autonomously optimizing, predicting and controlling industrial processes or manufacturing processes; Computer software as a service (SAAS) in the area of artificial
intelligence, machine learning, or deep learning, namely, computer software as a service (SAAS) featuring non-downloadable artificial intelligence, machine learning, or deep learning computer
software application or programs for autonomously optimizing, predicting and controlling industrial manufacturing processes; Computer software as a
service (SAAS) for use in developing and deploying machine learning or deep learning applications or programs; Computer software as a service (SAAS) for use in developing and deploying machine
learning or deep learning applications or programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer
software as a service (SAAS) for use in developing artificial intelligence applications or programs; Computer software as a service (SAAS) featuring non-downloadable artificial intelligence computer
software platform for use in developing and deploying machine learning or deep learning applications or software programs; Computer software as a service (SAAS) featuring non-downloadable artificial
intelligence computer software or application for developing and deploying machine learning or deep learning applications or software programs using various program languages on any computer
hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software as a service (SAAS) featuring non-downloadable artificial intelligence computer software
platform for optimizing, predicting and controlling industrial manufacturing production; Computer software as a service (SAAS) featuring non-downloadable
artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs; Computer software as a service
(SAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs using
various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software platform as a service (PAAS) featuring computer
software platforms, including an operating system, for building machine learning, deep learning, or artificial intelligence applications; Computer software platform as a service (PAAS) in the area of
artificial intelligence, machine learning, or and deep learning for optimizing, predicting and controlling industrial manufacturing production;
Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence, machine learning, or and deep learning computer
software application or programs for optimizing, predicting and controlling industrial manufacturing production; Computer
software platform as a service (PAAS) for use in developing and deploying machine learning or deep learning applications or programs; Computer software platform as a service (PAAS) for use in
developing and deploying machine learning or deep learning applications or programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things
and edging computing; Computer software platform as a service (PAAS) for use in developing artificial intelligence applications or programs; Computer software platform as a service (PAAS) featuring
non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep learning applications or software programs; Computer software platform
as a service (PAAS) featuring non-downloadable artificial intelligence computer software or application for developing and deploying machine learning or deep learning applications or software
programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things and edging computing; Computer software platform as a service (PAAS)
featuring non-downloadable artificial intelligence computer software platform for optimizing, predicting and controlling industrial manufacturing production; Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing and deploying machine learning or deep
learning applications or software programs; Computer software platform as a service (PAAS) featuring non-downloadable artificial intelligence computer software platform for use in developing
and deploying machine learning or deep learning applications or software programs using various program languages on any computer hardware, such as workstations, datacenters, the internet of things
and edging computing.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and 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 three classes; however, applicant submitted a fee sufficient for only two 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Monica L. Beggs/
Examining Attorney
Law Office 105
(571) 272-6614
monica.beggs@uspto.gov
RESPONSE GUIDANCE