To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`TokenAI LLC (TMadmin@goodwinlaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 88015660 - TOKEN AI - TOK-600
`
`11/1/2018 1:44:53 PM
`
`ECOM109@USPTO.GOV
`
`Attachment - 1
`Attachment - 2
`Attachment - 3
`Attachment - 4
`Attachment - 5
`Attachment - 6
`Attachment - 7
`Attachment - 8
`Attachment - 9
`Attachment - 10
`Attachment - 11
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*88015660*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   88015660
`
`           
`
`MARK: TOKEN AI
`
`CORRESPONDENT
`ADDRESS:
`    
`    JESSICA S. PARISE
`
`    GOODWIN PROCTER
`    
`LLP
`
`      
`
`620 EIGHTH AVENUE
`
`    THE NEW YORK
`    
`TIMES BUILDING
`
`    NEW YORK, NY
`    
`10018
`
`APPLICANT: TokenAI
`LLC
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`NO:       
`
`  TOK-600
`
`   
`
`CORRESPONDENT E-
`
`MAIL ADDRESS:       
`
`TMadmin@goodwinlaw.com
`
`OFFICE ACTION
`
` 
` 
` 
` 
` 
` 
` 
`

`

`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 11/1/2018
`
`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 OF OFFICE’S DATABASE OF MARKS
`
`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).
`
`SUMMARY OF ISSUES:
`
`Section 2(e)(1) Refusal - Merely Descriptive
`Supplemental Register
`Identification of Services
`
`SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
`
`Registration is refused because the applied-for mark merely describes the function of applicant’s goods.   Trademark Act Section 2(e)(1), 15
`U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
`
`Applicant has applied for the mark TOKEN AI in standard characters for “Software as a service (SAAS) services featuring cryptocurrency
`market and portfolio analysis; Platform as a service (PAAS)featuring cryptocurrency market and portfolio analysis; Platform as a service (PAAS)
`featuring computer software for data mining and data analytics; computer software for creating and controlling artificial intelligence; Providing
`artificial intelligence based data analysis, pattern discovery, process automation, contextual prediction, predictive analytics, predictive modelling,
`recognition, segmentation, regression, decision support and visualization services” in International Class 42.
`
`  A
`
` mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or
`services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl
`& Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420,
`
`1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents , 252 U.S. 538, 543 (1920)).  
`
`In this case, the term “TOKEN AI” describes a feature of applicant’s services. As shown in the attached evidence, linked below, in the context
`of applicant’s services “TOKEN” refers to “a unit of cryptocurrency.” The attached evidence, linked below, also shows that the term “AI” is
`short for “artificial intelligence” and means “intelligent machines that work and react like humans”.
`  Taken together, the mark “TOKEN AI”
`means “artificial intelligence related to units of cryptocurrency,” or, in other words, “intelligent machines that work and react like humans to
`issues related to units of cryptocurrency.”
`
`Merriam-Webster: https://www.merriam-webster.com/dictionary/token (token)
`
`CryptoCurrency Facts: https://cryptocurrencyfacts.com/what-is-a-cryptocurrency-token/
`
`  
`  
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`Citowise: https://blog.citowise.com/the-basics-coin-vs-token-what-is-the-difference-5cd270591538
`
`Investopedia: https://www.investopedia.com/terms/c/crypto-token.asp
`
`Blockchain Council: https://www.blockchain-council.org/blockchain/what-are-crypto-tokens-how-crypto-tokens-work/
`
`            
`            
`            
`
`Merriam-Webster: https://www.merriam-webster.com/dictionary/AI (AI)
`
`Oxford Dictionaries: https://en.oxforddictionaries.com/definition/us/AI (AI)
`
`Techopedia: https://www.techopedia.com/definition/190/artificial-intelligence-ai
`
`Investopedia: https://www.investopedia.com/terms/a/artificial-intelligence-ai.asp
`
`Webopedia: https://www.webopedia.com/TERM/A/artificial_intelligence.html
`
`In this case, applicant’s identification of services shows that applicant provides services related to cryptocurrencies and services using artificial
`intelligence. Thus, applicant’s identification of services shows that applicant’s services likely include using artificial intelligence in connection
`with cryptocurrencies. In other words, applicant is using “artificial intelligence related to units of cryptocurrency,” or “TOKEN AI”. Moreover,
`applicant’s website, attached and linked below, confirms that applicant is providing consumers with artificial intelligence software to manage
`cryptocurrency tokens. Therefore, the mark “TOKEN AI” merely describes a characteristic of applicant’s services and is refused.
`
`            
`
`Token AI: https://tokenai.io/
`
`SUPPLEMENTAL REGISTER
`
`Although an amendment to the Supplemental Register would normally be an appropriate response to the Section 2(e)(1) refusal above, such a
`response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for
`registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been
`timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
`
`If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the
`date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37
`C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting
`marks based on the later application filing date.  TMEP §§206.01, 1102.03.
`
`Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the
`following advantages to the registrant:
`
`(1)      
`
`Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides
`public notice of the registration and potentially deters third parties from using confusingly similar marks.
`
`(2)      
`
`Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third
`parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third
`parties from using confusingly similar marks.
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`(3)      
`
`Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications
`filed by third parties.
`
`(4)      
`
`Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state
`court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual
`damages, and attorneys’ fees and costs.
`
`(5)      
`
`Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with
`international treaties.
`
`See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp.
`2017).
`
`ADVISORY – WORDING APPEARS TO BE GENERIC
`
`Applicant is advised that, if an acceptable allegation of use and an amendment to the Supplemental Register are filed, applicant will be required
`to disclaim “AI” because such wording appears to be generic in the context of applicant’s goods and/or services.
`  See 15 U.S.C. §1056(a); In re
`Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986);
`TMEP §1213.03(b).
`
`The following is the standardized format for a disclaimer:
`
`No claim is made to the exclusive right to use “AI” apart from the mark as shown.
`
`TMEP §1213.08(a)(i).
`
`Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support
`of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
`
`IDENTIFICATION OF SERVICES
`
`The wording noted below in the identification of services is indefinite and must be clarified because it does not specify the nature of applicant’s
`
`services or the common name for applicant’s services.   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  
`
`The trademark examining attorney has previously discussed the suggestions below with applicant’s attorney. Based on those conversations,
`applicant may substitute the following wording, if accurate (additions in bold):
`
`International Class 42: Software as a service (SAAS) services featuring software for cryptocurrency market and portfolio analysis;
`Platform as a service (PAAS) featuring computer software platforms for cryptocurrency market and portfolio analysis; Platform as a
`service (PAAS) featuring computer software for data mining and data analytics; computer software for creating and controlling artificial
`intelligence; Software as a service (SAAS) services featuring software for artificial intelligence based data analysis, pattern discovery,
`process automation, contextual prediction, predictive analytics, predictive modelling, recognition of data and market patterns resulting
`from asset metrics and features, segmentation of asset data, market data, external data sources, social media and other data
`sources, regression in the nature of analysis regression and asset performance and metrics regression, decision support in the
`nature of consumer and professional asset trading and visualization services in the nature of visualizing analysis results and
`recommendations.
`
`Applicant may amend the identification 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.  Generally, any deleted goods
`and/or 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.
`
`RESPONSE GUIDELINES
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online
`using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office
`actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3)
`agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b);
`TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125
`per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS
`Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring
`
`this additional fee.   
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail
`communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this
`Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 
`Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this
`Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.   See TMEP §§705.02,
`709.06.
`
`/Robert Ratcliffe/
`
`Examining Attorney        
`
`Law Office 109
`
`Phone: (571) 272-5257
`
`Fax: (571) 273-5562
`
`robert.ratcliffe@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
` 
` 
` 
` 
` 
` 
` 
` 
`  
`

`

` 
`

`

`522425? PM 10f22i’2018
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`https:iftokenai.ioir
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`Our mission, is to empower anyone who wants to participate in the crypto markets, regardless of experience, by
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`ILANA FRAINES l LEAD BLOCKCHAIN DEVELOPER m
`Ilana is a Certified Bitcoin Professional.
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`Advisors
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`Terms and Conditons
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`© TokerIAl LLC. All fights reserved.
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`SEND MESSAGE
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`5:18:26 PM 10222018
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`
`Artificial intelligence is the branch of computer science concerned
`with making computers behave like humans. The term was coined in
`1956 by John McCarthy at the Massachusetts Institute ot
`Technology.
`
`Can Computers Exhibit Fuii Al?
`Currently, no computers exhibit full artificial intelligence (that is, are
`able to simulate human behavior). The greatest advances have
`
`occurred in the field of games playing. The best computer chess
`programs are now capable of beating humans In May, 199?, an lBM
`super-computer called Deep Biue defeated world chess champion
`Gary Kasparov in a chess match.
`
`Rented Terms
`. Al NOS
`. Al s|m Detector
`- ALICE
`- assortment intelligence
`I
`forward chaining
`_ backward chaining
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`.
`.
`.
`
`Intelligent agent
`intelligent terminal
`Intelligent Exposure
`
`In the area of robotics. computers are now widely used in assembly plants. but they are capable only of very
`limited tasks. Robots have great difficulty identifying objects based on appearance or feet. and they still move and
`handle objects clumsily
`
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`Al Specialization
`Artificial intelligence includes the followmg areas of specialization:
`. games playing: programming computers to play games against human opponents
`-
`expert systems: programming computers to make decisions in real-life situations (for example, some
`expert systems heip doctors diagnose diseases based on symptoms}
`a natural language: programming computersto understand natural human languages
`- neural networks: Systems that simuiate intelligence by attempting to reproduce the types of physical
`connections that occur in animal brains
`-
`robotics: programming computers to see and hearand react to other sensory stimuii
`
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`computers without needing any specialized knowledge. You could simply walk up to a computer and talk to it
`
`Natural Language and Voice Recognition
`Naturalelanguage processing otters the greatest potential rewards because it would alEow people to interact With
`
`Find Your School!
`
`)
`
`Unfortunately, programming computers to understand natural languaga has proved to be more difiicultthan
`originally thought. Some rudimentary translation systems that translate from one human language to another are in
`existence, but they are not neaity as good as human translators. There are also voice recognition systems that can
`convert spoken sounds into written words‘ but they do not understandwhat they are writing; they simply take
`dictation. Even these systems are quite limited — you must speak slowly and distinctly.
`
`Systems Fail Short of Early Expectations
`In the early 19305, expert systems were believed to represent the future of artificial intelligence and ofcomputers
`
`in general. To date, however, they have not lived up to expectations. Many expert systems hetp human experts in
`such fields as medicine and engineering, but they are very expensive to produce and are helptui only in special
`situations.
`
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`Today‘ the hottest area of artificial intelligence is neural networks, which are proving successful in a number of 0 LATEST ARTICLES
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`Artificial Intelligence — Al
`
`What is 'Artificial Intelligence - Al'
`Artificial intelligence (Al) is a term for simulated intelligence in machines. These machines are
`programmed to "think" like a human and mimic the way a person acts. The ideal characteristic of
`artificial intelligence is its ability to rationalize and take actions that have the best chance of
`achieving a specific goal, although the term can be applied to any machine that exhibits traits
`associated with a human mind, such as learning and solving problems.
`
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`BREAKING DOWN ‘Artificial Intelligence - Al'
`Artificial intelligence is based around the idea that human intelligence can be defined in such exact
`terms that a machine can mimic it. The goals of artificial intelligence include learning, reasoning and
`perception, and machines are wired using a cross—disciplinary approach based in mathematics,
`computer science, linguistics, psychology and more.
`
`As technology advances, previous benchmarks that defined artificial intelligence become outdated.
`For example, machines that calculate basic functions or recognize text through methods such as
`optimal character recognition are no longer said to have artificial intelligence, since this function is
`now taken for granted as an inherent computer function.
`
`Some examples of machines with artificial intelligence include computers that play chess, which
`have been around for years, and self—driving cars, which are a relatively new development. Each of
`these machines must weigh the consequences ofany action they take, as each action will impact the
`end result. In chess, this end result is winning the game. For selfrdriving cars, the computer system
`must take into account all external data and compute it to act in a way that prevents collision
`
`Controversy Over Artificial Intelligence
`Since its beginning, artificial intelligence has come under scrutiny from scientists and the public
`alike. One common theme is the idea that machines will become so highly developed that humans
`will not be able to keep up, and they will take off on their own, redesigning themselves at an
`exponential rate. Another is that machines can hack into people's privacyand even be
`weaponized. Other arguments debate the ethics of artificial intelligence, and whether or not
`intelligent systems such as robots should be treated with the same rights as humans.
`
`Selfedriving cars have been the subject of controversy, as their machines tend to be designed for the
`lowest possible risk and the least casualties. While they remove the incidence of human error, this
`means that if they were put in a situation in which they had to decide between a collision with one
`person and a collision with another, they would calculate which option would cause the least
`amount of damage, but would still have to choose one. This is disconcerting to many people who
`believe that lives should not be put at the mercy ofa machine.
`
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`Artificial Intelligence (Al)
`
`Definition - What does Artificial Intelligence (Al) mean?
`
`Artificial intelligence (Al) is an area of computer science that emphasizes the creation of intelligent machines that
`work and react like humans. Some of the activities computers with artificial intelligence are designed for include:
`
`. Speech recognition
`- Learning
`- Planning
`. Problem solving
`
`A Techopedia explains Artificial Intelligence (Al)
`
`Artificial intelligence is a branch of computer science that aims to create intelligent machines. It has become an
`essential part of the technology 3 industry.
`
`Research associated with artificial intelligence is highly technical and specialized. The core problems of artificial
`intelligence include pr_ogramming 3 computers for certain traits such as:
`
`- Knowledge
`. Reasoning
`. Problem solving
`- Perception
`. Learning
`- Planning
`Ability to manipulate and move objects
`
`Free Download: Machine Learning and Why it Matters
`
`Knowledge engineering is a core part of Al research 3. Machines can often act and react like humans