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:  September 17, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-Filed Applications
• Clarification of Identification of Goods and Services Required
• Multiple-Class Application Requirements

 

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.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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
5015376	OPTIMUM	42	Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems.
4358922	OPTIMUM HEALTHCARE IT	42	Consulting in the field of information technology.
5888728
5888560	OPTIMUM TECH	42	Consulting services in the field of information technology.
5894521
4747119	OPTIMUM DOCUMENT SERVICES	42	Document Management System, namely, providing a web site and online non-downloadable software featuring technology to manage documents.
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.
5210573	OPTIMUMEDGE
5210574	OPTIMUMHEAT
4868545	OPTIMUMLOOP
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.
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.
5094413	OE OPTIMUM ENERGY
		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.
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.
1418192	OPTIMUM	9	Computer programs in the form of diskettes and tapes.
3277751	OPTIMUM	9	Computer software for enabling vendor access to automatic meter reading systems and data.
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.
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.
4699937	OPTIMUM	9	Computer application software for streaming television programs and movies on smartphones, tablets and laptop computers.
2386821	OPTIMUM	9	Computer software, namely, interactive software for preparing primary and secondary grade school students to take state-adminstered proficiency tests.
3800253	OPTIMUM GOAL SCHEDULING	9	Computer programs for use in the management and scheduling of recorded musical entertainment.
5218420	OPTIMUM HRIS	9	Computer software for managing payroll, human resources, and employee time and attendance.
5117333
5117332		42	Software as a service (SAAS) services featuring software for managing payroll, human resources, and employee time and attendance.
5218421
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.
		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.
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.

 

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

 

The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

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
5117332	Software as a service (SAAS) services featuring software for managing payroll, human resources, and employee time and attendance.
5218421
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).

 

It is important to note that any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).  This is because the overriding concern is not only to prevent buyer confusion as to the source of the goods and services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Applicant should note the following potential ground for refusal.

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88482178, 88721677, 88721800, 88722146, 88722083, 88485677, 88721647, 88721793, 88722132, and 88722072 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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.

 

Upon receipt of applicant’s response resolving the following requirements, action on this application will be suspended pending the disposition of U.S. Application Serial Nos. 88482178, 88721677, 88721800, 88722146, 88722083, 88485677, 88721647, 88721793, 88722132, and 88722072.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

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. 

 

The identification for “computer programs” in International Class 9 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its 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).

 

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 identification for “electronic publications” in International Class 9 is indefinite because the wording does not make clear the nature of the publications and could identify publications in International Classes 9 and 41.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x).  Applicant must amend this identification to clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.  In addition, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See TMEP §1402.03(e).  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id.

 

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 has included the term “or” in the identification of goods and services.  However, this term is generally not accepted in identifications when it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services, as in the present case.  See TMEP §1402.03(a). 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 “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “or” deleted and the goods or services specified using definite and unambiguous language.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and services in International Classes 9 and 42 for “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,” “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,” “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,” and “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.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and services may not later be reinserted.  TMEP §1402.07(e).

 

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.

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and 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 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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and requirements in this Office action.  See TMEP §§705.02, 709.06. 

 

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

• 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 September 17, 2020 for

U.S. Trademark Application Serial No. 88950949

 

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. 

 

 

/Monica L. Beggs/

Examining Attorney

Law Office 105

(571) 272-6614

monica.beggs@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 September 17, 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.”