United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
FINAL 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)
and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS
response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 13, 2022
The applicant’s amended Identification of Goods and Services obviates the likelihood of confusion refusal
with U.S. Registration No. 4671774.
IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services is indefinite and must be clarified
because to specify the function of the software indicated below. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01.
Applicant may adopt the following identification, if accurate:
- Class 9- Downloadable software for edge computing FOR MACHINE LEARNING AND DEEP LEARNING; DOWNLOADABLE COMPUTER SOFTWARE USING ARTIFICIAL
INTELLIGENCE FOR EDGE COMPUTING FOR MACHINE LEARNING AND DEEP LEARNING; downloadable software for data processing, data storage, data capture, data collection, data validation, data security, data
warehousing, data management, and data mining; downloadable software for artificial intelligence, machine learning, deep learning, natural language generation, statistical learning, supervised
learning, un-supervised learning, data mining, predictive analytics, business intelligence, and computer vision; downloadable software, namely, knowledge-based artificial intelligence platforms, data
analytics platforms, and automation platforms for use in the fields of artificial intelligence, machine learning, deep learning, statistical learning, supervised learning, un-supervised learning,
data mining, predictive analytics and business intelligence; downloadable simulation, modeling and data processing software for use in data visualization, data analysis, data mining, data
interpretation, predictive analytics, accessing and editing large-scale data, interactive visual computing, and design of information graphics; downloadable software for information and data
integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission,
storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information; downloadable software for analysis, management, collaboration,
algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing,
collection, editing, hosting, security, and tracking of geospatial, map and location data and information
- Class 42-Providing online non-downloadable edge artificial intelligence software; providing online non-downloadable software for data
processing, data storage, data capture, data collection, data validation, data security, data warehousing, data management, and data mining; providing online non-downloadable software for artificial
intelligence, machine learning, deep learning, natural language generation, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics, business
intelligence, and computer vision; providing online non-downloadable software, namely, knowledge-based artificial intelligence platforms, data analytics platforms, and automation platforms for use in
the fields of artificial intelligence, machine learning, deep learning, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics and business intelligence;
providing online non-downloadable simulation, modeling and data processing software for use in data visualization, data analysis, data mining, data interpretation, predictive analytics, accessing and
editing large-scale data, interactive visual computing, and design of information graphics; providing online non-downloadable software for information and data integration, analysis, management,
collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying,
auditing, collection, editing, hosting, security, and tracking of data and information; providing online non-downloadable software for analysis, management, collaboration, algorithmic and
human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing,
hosting, security, and tracking of geospatial, map and location data and information; software as a service (SaaS) featuring software for data processing, data storage, data capture, data collection,
data validation, data security, data warehousing, data management, and data mining; software as a service (SaaS) featuring software for artificial intelligence, machine learning, deep learning,
natural language generation, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics, business intelligence, and computer vision; software as a service
(SaaS) featuring knowledge-based artificial intelligence platforms, data analytics platforms, and automation platforms for use in the fields of artificial intelligence, machine learning, deep
learning, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics and business intelligence; software as a service (SaaS) featuring simulation, modeling
and data processing software for use in data visualization, data analysis, data mining, data interpretation, predictive analytics, accessing and editing large-scale data, interactive visual
computing, and design of information graphics; software as a service (SaaS) featuring software for information and data integration, analysis, management, collaboration, algorithmic and human-driven
exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting,
security, and tracking of data and information; software as a service (SaaS) featuring software for analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling,
exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of geospatial,
map and location data and information; advanced product research in the field of artificial intelligence; design and development of computer software; electronic storage of data; providing online
non-downloadable software for edge computing FOR MACHINE LEARNING AND DEEP LEARNING
The Trademark Act requires that a trademark or service mark application must
include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include
a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications
filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01,
1402.01(b)-(c).
Applicant’s goods and/or services may
be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R.
§2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific
identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably
amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the
identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
If applicant does not respond to this Office action within the six-month period for
response, the following goods and/or services in International Class(es) 9 and 42 will be
deleted from the application: Downloadable software for edge computing; downloadable edge artificial
intelligence software; providing online non-downloadable software for edge computing.
The application will then proceed with the following goods and/or services in International Class(es) 9 and 42 only:
- Class 9- Downloadable software for data processing, data storage, data capture, data collection, data validation, data
security, data warehousing, data management, and data mining; downloadable software for artificial intelligence, machine learning, deep learning, natural language generation, statistical learning,
supervised learning, un-supervised learning, data mining, predictive analytics, business intelligence, and computer vision; downloadable software, namely, knowledge-based artificial intelligence
platforms, data analytics platforms, and automation platforms for use in the fields of artificial intelligence, machine learning, deep learning, statistical learning, supervised learning,
un-supervised learning, data mining, predictive analytics and business intelligence; downloadable simulation, modeling and data processing software for use in data visualization, data analysis, data
mining, data interpretation, predictive analytics, accessing and editing large-scale data, interactive visual computing, and design of information graphics; downloadable software for information and
data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission,
storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information; downloadable software for analysis, management, collaboration,
algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing,
collection, editing, hosting, security, and tracking of geospatial, map and location data and information
- Class 42-Providing online non-downloadable edge artificial intelligence software; providing online non-downloadable
software for data processing, data storage, data capture, data collection, data validation, data security, data warehousing, data management, and data mining; providing online non-downloadable
software for artificial intelligence, machine learning, deep learning, natural language generation, statistical learning, supervised learning, un-supervised learning, data mining, predictive
analytics, business intelligence, and computer vision; providing online non-downloadable software, namely, knowledge-based artificial intelligence platforms, data analytics platforms, and automation
platforms for use in the fields of artificial intelligence, machine learning, deep learning, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics and
business intelligence; providing online non-downloadable simulation, modeling and data processing software for use in data visualization, data analysis, data mining, data interpretation, predictive
analytics, accessing and editing large-scale data, interactive visual computing, and design of information graphics; providing online non-downloadable software for information and data integration,
analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange,
sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information; providing online non-downloadable software for analysis, management, collaboration,
algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing,
collection, editing, hosting, security, and tracking of geospatial, map and location data and information; software as a service (SaaS) featuring software for data processing, data storage, data
capture, data collection, data validation, data security, data warehousing, data management, and data mining; software as a service (SaaS) featuring software for artificial intelligence, machine
learning, deep learning, natural language generation, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics, business intelligence, and computer vision;
software as a service (SaaS) featuring knowledge-based artificial intelligence platforms, data analytics platforms, and automation platforms for use in the fields of artificial intelligence, machine
learning, deep learning, statistical learning, supervised learning, un-supervised learning, data mining, predictive analytics and business intelligence; software as a service (SaaS) featuring
simulation, modeling and data processing software for use in data visualization, data analysis, data mining, data interpretation, predictive analytics, accessing and editing large-scale data,
interactive visual computing, and design of information graphics; software as a service (SaaS) featuring software for information and data integration, analysis, management, collaboration,
algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing,
collection, editing, hosting, security, and tracking of data and information; software as a service (SaaS) featuring software for analysis, management, collaboration, algorithmic and human-driven
exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting,
security, and tracking of geospatial, map and location data and information; advanced product research in the field of artificial intelligence; design and development of computer software; electronic
storage of data
See 37 C.F.R. §2.65(a)-(a)(1); TMEP
§718.02(a).
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Scott Bibb
/ScottBibb/
Examining Attorney
Law Office 109
571-272-5669
scott.bibb@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.