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 22, 2020

 

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

 

SEARCH CONDUCTED

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

ACCEPTABLE IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRED

 

Applicant has elected to use wording in the identification of goods and/or services that is not found in the U.S. Acceptable Identification of Goods and Services Manual.  The wording that applicant has chosen to use instead does not meet the standards set forth in the Manual and is unacceptable.  Specifically, the following underlined wording in the identification of goods and/or services is indefinite and must be clarified as set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The exact nature of the goods and/or services cannot be determined from this wording. The italicized wording is redundant and must be limited to a single occurrence as discussed below.

 

Class 9

Machine perception software, namely, software for image and signal processing, [Clarify both whether the software is downloadable and the specific function(s) of the software as noted in the ID Manual, for example, downloadable computer software for developing software.] object detection and recognition, and motion analysis; Computer software for processing digital images [Specify whether the software is downloadable as noted in the standard ID Manual entries.]; Computer programmes for image processing; Computer software development tools [Clarify both whether the software is downloadable and the specific function(s) of the software, for example, downloadable computer software for developing software.]; Computer software platforms, recorded or downloadable; Recorded computer software for safe car driving; Data processing software; Software for machine learning, deep learning, artificial intelligence (AI), natural language generation, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics and business intelligence [Clarify both whether the software is downloadable and the specific function(s) of the software as noted in the ID Manual, for example, downloadable computer software for developing software.]; Computer software for detecting objects, user gestures and commands; Software for image rendering, modeling, and image manipulation and processing; Artificial intelligence software [Clarify both whether the software is downloadable and the specific function(s) of the software as noted in the ID Manual, for example, downloadable computer software for developing software.]; Computer software for use in self-driving and autonomous land vehicle electronic computing platform for artificial intelligence, machine learning, deep learning, natural language generation, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics and business intelligence [Clarify both whether the software is downloadable and the specific function(s) of the software as noted in the ID Manual, for example, downloadable computer software for developing software.]; Computer software for self-driving and autonomous land vehicles [Clarify both whether the software is downloadable and the specific function(s) of the software as noted in the ID Manual, for example, downloadable computer software for developing software.]; Computer software for learning about and developing skills in the fields of deep learning, machine learning, artificial intelligence, neural networks, and machine vision; Computer software for training, simulating, testing and deploying learning models to remote control and autonomous vehicles; Computer software for controlling, programming and communicating with remote control and autonomous vehicles; Computer programs and software for artificial intelligence(AI), machine learning, and deep learning, for contextual prediction, personalization, and predictive analytics; Computer software for use in relation to artificial intelligence, machine learning, deep learning, reinforcement learning, building neural networks, high performance computing, distributed computing, virtual reality; Software for collecting, tracking, analyzing, and reporting data and information in the field of self-driving and autonomous vehicles [Clarify both whether the software is downloadable and the specific function(s) of the software as noted in the ID Manual, for example, downloadable computer software for developing software.]

 

Class 35

Compilation and systemization of information into computer databases in the fields of artificial intelligence, deep learning, high performance computing, distributed computing, virtual reality and machine learning; Systematization of data in computer databases; Collection and systematisation of information into computer databases; Systemisation of information into computer databases; Electronic data processing; On-line data processing services; Compilation of information into computer databases; Systemization of information into computer databases [Redundant.]; Updating and maintenance of data in computer databases; Management and compilation of computerised databases 

 

Class 42

Research and development of computer software; Computer programming; Development of image processing software; Software as a service [Specify the nature of the software and its functions as noted in the ID Manual and discussed below. See previous examples above.]; Platform as a Service [Specify the nature of the services and the function of the software they feature as noted in the ID Manual, for example, platform as a service (PAAS) featuring computer software platforms for ___ {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use}.]; Design and development of computer hardware and software in the fields of machine learning, deep learning, and deep neural networks; Providing nondownloadable software for machine learning, deep learning, natural language generation, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics and business intelligence; Providing nondownloadable software for detecting objects, user gestures and commands; Software as a service (SaaS) featuring software in the field of self-driving and autonomous land vehicle and self-driving and autonomous land vehicle component operation, control, maintenance, management and communication; Design and development of computer hardware and software in the fields of self-driving and autonomous land vehicle electronic computing platforms and systems; Software as a service (SaaS) featuring data processing software; Software as a service (SaaS) featuring software for learning about and developing skills in the fields of deep learning, machine learning, artificial intelligence, neural networks, and machine vision; Software as a service (SaaS) featuring software for developing, deploying, updating and monitoring the performance of deep learning, machine learning, artificial intelligence, neural network and machine vision applications; Software as a service (SaaS) featuring software for connecting deep learning enabled cameras, remote control vehicles, autonomous vehicles, and computer hardware to cloud services; Software as a service (SaaS) featuring software for training, simulating, testing and deploying learning models to remote control and autonomous vehicles; Computer software for controlling, programming and communicating with remote control and autonomous vehicles  [Clarify both whether the software is downloadable or non-downloadable and the specific function(s) of the software as noted in the ID Manual, for example, downloadable computer software for developing software.]

 

The identification for software in International Classes 9 and 42 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).

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 35 for “[s]ystemization of information into computer databases.”  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/or services, but not to broaden or expand the goods and/or 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/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the goods and/or services as well as their main purpose, channels of trade, and the intended consumer(s).  See TMEP §1402.01.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

As noted above, an applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

It is the applicant’s duty to identify the goods and/or services, and any goods and/or services deleted from the application by amendment may not be reinserted at a later point in prosecution.  TMEP §1402.01(e). 

 

Applicant may find acceptable identification wording by: 1) using the sample wording provided in the Identification Manual for this purpose; 2) researching the Register for wording that has recently been accepted by the Office and is consistent with the current rules governing identifications; 3) using wording that is the common name widely used in the relevant industry or trade; or 4) drafting wording that otherwise complies with the requirements described in the Code of Federal Regulations as exemplified by the entries in the Identification Manual. 

 

CORRECTED DESCRIPTION OF MARK REQUIRED

 

Although applicant submitted a drawing showing the mark in color with a color claim, applicant did not provide the required description that specifies where each color appears in the literal and/or design elements in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii).  Therefore, applicant must provide this description.  See TMEP §807.07(a)(ii). 

 

Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following description is acceptable, for example, if accurate:  “The mark consists of a stylized eye formed by a green circle, over which appears a red line starting at the nine o’clock position to the left of the circle and curving over the circle and becoming straight at approximately the 1 o’clock position and continuing to a curved end at approximately the 3 o’clock position to the right of the circle, with a green line beginning at the three o’clock position and ________ {continue to similarly list each element and the associated color(s) for each element in the mark accordingly}...to the right of all of which appears the wording STRADVISION in uppercase gray lettering.”

 

CORRECTED COLOR CLAIM REQUIRED

 

Although applicant submitted a color drawing with a description referencing colors in the mark, applicant did not provide a complete list of all the colors claimed as a feature of the mark, known as a color claim.  Therefore, applicant must provide this required color claim.  37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq. 

 

The following color claim is acceptable with the sample mark description above, for example, if accurate:  “The colors red, green and gray are claimed as a feature of the mark.”  TMEP §807.07(a)(i).

 

FOREIGN REGISTRATION CERTIFICATE REQUIRED

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

RESPONSE GUIDELINES

 

E-mail may not be used to file responses to Office actions.  These documents may be filed electronically using TEAS.  TMEP § 304.02.  Further, e-mail may not be used to request an advisory opinion as to the likelihood of overcoming a refusal or requirement. 

 

Applicant may call or email the assigned trademark examining attorney to request additional explanation about the refusal(s) and/or requirement(s) in this Office action.  However, the trademark examining attorney cannot provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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

 

 

/Edward Fennessy/

Attorney Advisor

Law Office 114

571-272-8804

Edward.Fennessy@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 22, 2020 for

U.S. Trademark Application Serial No. 90022794

 

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. 

 

 

/Edward Fennessy/

Attorney Advisor

Law Office 114

571-272-8804

Edward.Fennessy@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 22, 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.”