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:  May 18, 2020

 

This application was approved for publication on March 24, 2020.  See 37 C.F.R. §2.80.  However, approval of the application has been withdrawn to address the issue below.  See TMEP §706.01.  The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

SUMMARY OF ISSUES:

• Identification of Goods

 

IDENTIFICATION OF GOODS

 

Applicant must clarify certain wording in the identification of goods in International Classes 9 and 10 because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

The wording “computing devices in the nature of computers and computer application software to remotely control robots” in Class 9 must be clarified to describe the nature of the goods to ensure proper classification in Class 9. The wording 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 wording “Medical robots in the nature of companion robots, tactical robots, and humanoid robots with artificial intelligence, for personal wellness and therapeutic purposes” is indefinite and overbroad.  As worded, classification in Class 10 as a medical apparatus is not justified.  “Tactical robots” and “Humanoid robots with artificial intelligence” are both properly classified in Class 9.  As such, the nature and purpose of the goods requires clarification.  For example, Class 10 includes “Medical robots with attached spoons for assisting physically disabled persons with eating.”  Further, the wording “for personal wellness and therapeutic purposes” must be amended to provide clarity as to the purpose of the goods to ensure proper classification in Class 10. To be properly classified in Class 10, goods must be instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals.

 

Applicant may substitute the following wording, if accurate (suggestions in bold): 

 

International Class 9:

Teaching and companion robots for childhood development use and structural parts therefor; Tactical robots for childhood development use and structural parts therefor; Humanoid robots with artificial intelligence, for childhood development use and structural parts therefor; personal robot accessories in the nature of charging docks and mobile bases; computing devices in the nature of computers and downloadable computer application software to remotely control robots; downloadable computer software and computer application software for controlling, programming, and interfacing with personal robots and digital companions; downloadable computer software and computer application software for telepresence conferencing and management including personal robots or digital companions; downloadable computer software and computer application software that allows personal robots to control and interface with other electronic devices; downloadable computer software and computer application software that allows personal robots to interface with other computers, robots, databases, networks, online services, or mobile services

 

International Class 10:

Medical robots in the nature of companion robots and humanoid robots with artificial intelligence for personal wellness, namely, for use in social, cognitive, and emotional therapy, including conversational skills, emotional intelligence, emotion regulation, friendship skills and problem solving

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

 

 

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How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Sagar Vengurlekar

/Sagar Vengurlekar/

Trademark Examining Attorney

Law Office 117

Phone: (571) 272-5396

Sagar.Vengurlekar@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 May 18, 2020 for

U.S. Trademark Application Serial No. 88742796

 

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. 

 

 

Sagar Vengurlekar

/Sagar Vengurlekar/

Trademark Examining Attorney

Law Office 117

Phone: (571) 272-5396

Sagar.Vengurlekar@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 May 18, 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.”