To: | Nowcasting.ai Inc. (docketing@procopio.com) |
Subject: | U.S. Trademark Application Serial No. 90522415 - STREETBEAT.AI - 12972202US01 |
Sent: | September 07, 2021 11:28:44 AM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90522415
Mark: STREETBEAT.AI
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Correspondence Address: PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
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Applicant: Nowcasting.ai Inc.
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Reference/Docket No. 12972202US01
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 07, 2021
The referenced application and amendment to allege use have been reviewed by the assigned trademark examining attorney. The amendment to allege use satisfies the minimum filing requirements under 37 C.F.R. §2.76(c); however, it does not satisfy all statutory requirements. See TMEP 1104.10. Therefore, applicant must respond timely and completely to the issue(s) below related to the application and amendment to allege use. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03, 1104.10(a).
SEARCH RESULTS
ISSUES WITH THE SPECIMEN
There are multiple issues with the applicant’s specimen of record. First, the only place where the applied-for mark STREETBEAT.AI appears is in the URL of the websites shown. This utilization does not function as a trademark. Every other iteration of the applied-for mark does not include the .AI wording and thus the mark differs between the drawing and the specimen in every other iteration of the applied-for mark. Each issue is set forth below with response options.
FAILURE TO FUNCTION AS A MARK – DOMAIN NAME ONLY
Determining whether a term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019) (citing D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016)); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); TMEP §1202.04.
In the present case, the specimen shows the applied-for mark used as an Internet domain name in that it only appears in the URL portion of the specimens – the portion where consumers would enter wording to reach a certain website. The specimens do not include the applied-for mark STREETBEAT.AI in any other manner, other than in the URL portion of the websites shown. The attached evidence from Wikipedia shows that .ai is a TLD. Therefore, the mark consists only of wording coupled with a non-source-identifying generic top-level domain (gTLD) and, as used on the specimen of record, would be perceived as the domain name where applicant’s website would appear on the Internet, and not as a trademark or service mark for particular goods and/or services.
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows proper trademark/service mark use for the goods/services in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §904.03(i).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §1301.04(a).
(2) Amend the filing basis to intent to use under Section 1(b) for which no specimen is required before publication. See TMEP §806.03(c). This includes withdrawing an amendment to allege use, if one was filed. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
To amend the basis from Section 1(a) to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
To withdraw an amendment to allege use, applicant must make a statement in the record requesting that the amendment to allege use be withdrawn.
For more information about the response options above and instructions on how to submit a different specimen using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
MARK ON DRAWING DIFFERS FROM MARK ON SPECIMEN
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 9 and 42, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as STREETBEAT in every iteration except the url, which is discussed above. However, the drawing displays the mark as STREETBEAT.AI. The mark on the specimen does not match the mark in the drawing because in every iteration of the mark on the specimen except where it appears in the URL, the mark lacks the .AI TLD which is included in the drawing. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Response options. Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(1), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
For more information about drawings and instructions on how to satisfy these response options using the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Applicant must reclassify the services as follows:
Class 35: Data processing services, namely, real-time data processing services for transaction data, predictive model generating services for predicting company-specific key company performance indicators, data processing services for generating real-time views of economic information, data processing services for automatically tagging consumer transaction data, data processing services for predicting corporate revenue, data processing services for identifying and measuring correlations of financial data, all services using machine learning
Note that bolding, italics, and the like are used only to highlight suggested changes to the original language.
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.
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.
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.
/Natalie L. Kenealy/
Examining Attorney
Law Office 104
571-272-7817
Natalie.Kenealy@uspto.gov
RESPONSE GUIDANCE