Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1053839
`
`Filing date:
`
`05/07/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88142672
`
`Patent Bots LLC
`
`Applied for Mark
`
`PATENT BOTS
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`ABRAHAM LICHY
`THE LICHY LAW FIRM PC
`222 EAST 68TH STREET
`NEW YORK, NY 10065
`UNITED STATES
`alichy@lichylaw.com, dhalberstein@lichylaw.com
`917-933-3895
`
`Appeal Brief
`
`Patent Bots Appeal Brief.pdf(166088 bytes )
`PATENT BOTS TESS FILES.pdf(2156598 bytes )
`
`Abraham Lichy
`
`alichy@lichylaw.com
`
`/Abraham Lichy/
`
`05/07/2020
`
`

`

`
`
`MARK:
`SERIAL NO.:
`APPLICANT:
`FILING DATE:
`INTERNATIONAL
`CLASS:
`TO:
`
`
`Applicant’s Appeal Brief
`
`PATENT BOTS
`88142672
`Patent Bots LLC
`October 4, 2018
`042
`
`Trademark Trial and Appeal Board
`
`
`Applicant, Patent Bots LLC (“Applicant”) respectfully submits this Appeal to the trademark
`examiner’s Final Refusal to the Office Action issued on January 29, 2020 against Application Serial No.
`88142672 for the PATENT BOTS mark (for, Class 042, as amended – Providing a web site featuring
`technology that enables users to process patents and patent applications and find errors and mistakes in
`patents and patent applications; Providing a web site featuring technology that enables users to obtain
`information, analytics, and statistics about patent examiners; Providing a website that gives computer
`users the ability to process patents and patent applications and find errors and mistakes in patents and
`patent applications; Providing a website that gives computer users the ability to obtain information,
`analytics, and statistics about patent examiners; Providing an interactive website featuring technology
`that allows users to process patents and patent applications and find errors and mistakes in patents and
`patent applications; Providing an interactive website featuring technology that allows users to obtain
`information, analytics, and statistics about patent examiners (the “Mark”).
`
`The Examining Attorney has refused registration on the ground that the Mark is merely descriptive
`of Applicant’s goods, under 15 U.S.C. § 1052(e)(1). Consequently, Applicant respectfully requests that the
`Board overturn the examiner’s refusal because the Mark is not merely descriptive, rather, the Mark is
`suggestive.
`
`The Mark is Not Merely Descriptive Because it is Suggestive
`
`A trademark is not merely descriptive if it does not immediately tell an average potential purchaser
`what the goods or services are. In re Energy Resources Corporation, 173 USPQ 510 (TTAB 1972) (holding
`ENERGY RESOURCES not merely descriptive of the services of exploration for and production of oil and
`gas for others). If a trademark does not without interpretation and imagination describe the goods or
`services, then the trademark is not merely descriptive. In re The Gracious Lady Service, Inc., 174 USPQ
`340 (TTAB 1972). If the mental leap between the mark and the applicant’s goods and services is not almost
`instantaneous, this strongly indicates suggestiveness, not mere descriptiveness. See McCarthy On
`Trademarks (4th ed.), § 11.67 at 118. Further, a trademark is not merely descriptive if it is not needed by
`others to describe the goods or services. See McCarthy On Trademarks (4th ed.), § 11.68.
`
`Applicant’s Mark is PATENT BOTS. The Office reasons that this is merely descriptive because
`
`“patent” is “an official document conferring a right or privilege” and “bot” is “a computer program that
`performs automatic repetitive tasks”. The Examining Attorney appears to contend that the term “BOTS” is
`descriptive of all services implemented in software, but, respectfully, this position directly contradicts many
`trademarks registered by the USPTO.
`
`In the Office Action, the Examining Attorney asserts that Applicant’s Mark “describes a
`
`characteristic of the service, namely, that they are online technology using automation in patent drafting,”
`and that “PATENT” and “BOTS” immediately describe a “characteristic of the services, namely, that they
`are automated patent drafting proofreading services.” Notably, however, it is not clear from the Office
`
`
`
`

`

`
`
`Action how a consumer could perceive the terms “PATENT” and “BOTS” and arrive at the conclusion that
`the mark represents “patent drafting,” “patent drafting proofreading services,” or, among other services,
`technology enabling users to find information regarding patent examiners.
`
`While the Examining Attorney indicates that the only software application relating to patents must
`be drafting and proofreading services, this is not the case. Software has a variety of uses related to patents,
`including:
`
`•
`
`finding prior art for a patent;
`• performing freedom to operate searches;
`• determining patent value;
`• determining patent validity;
`• determining patent infringement;
`translating patents to another language;
`• determining the quality of coverage of a patent;
`• determining the classification of a patent according to invention technology;
`• processing patents to determine quality of individual patent attorneys or law firms;
`• and comparing coverage of two different companies’ patent portfolios.
`
`•
`
`The above software application examples are remarkably different from each other, but using the
`Examining Attorney’s definition, “PATENT BOTS” would be descriptive of each and every example
`because they are all implemented in software.
`
`
`Moreover, based on the Examining Attorney’s definition of “BOT”, which again it defines as “a
`computer program that performs automatic repetitive tasks,” that definition does not describe the services
`for which Applicant has applied. Applicant has applied for services pertaining to Providing a website – not
`for “computer software”. Thus, while there may be a technological component contained on its website,
`this creates a multi-step process to arrive at the conclusion that “Bots” is descriptive of a service which is
`for providing a website, and therefore cannot be found to be descriptive. Moreover, among other of its
`applied-for services, “Providing an interactive website featuring technology that allows users to obtain
`information, analytics, and statistics about patent examiners”. This service has two distinct qualities which
`make the mark non-descriptive.
`
`First, the fact that the website is interactive distinctly implies that there is a human component to
`the process involved in using Applicant’s website. By its very nature, the word “interactive,” which means
`“involving the actions or input of a user,” a human user is required to input information. Thus, the
`Examining Attorney’s argument that because Applicant’s website advertises that its users can “increase
`your efficiency and quality with our automated proofreading” it somehow means that it is therefore a
`“computer program that performs automatic repetitive tasks” is inapposite. There is a human component
`involved in utilizing Applicant’s website that cannot be divorced from the process. Because of this human
`component, the website is not merely a “bot” but rather an interactive website which humans can interact
`with in a meaningful and substantive manner.
`
`Second, the website allows users to obtain information, analytics, and statistics about patent
`examiners. It would follow then that “Patent” in this context could not be descriptive of this type of service
`because a “patent examiner” is not “an official document conferring a right or privilege.” Therefore it
`cannot be maintained that PATENT BOTS is merely descriptive of this service.
`
`Applicant submits that the terms “PATENT” and “BOTS” cannot possibly describe all of the above
`software applications (including all the ones listed above that Applicant does not provide) relating to
`
`
`
`

`

`
`
`patents. It would be a leap of the imagination for a consumer to perceive the two terms that make up the
`mark and arrive at a conclusion that they represent any of those specific applications. Accordingly,
`Applicant maintains that “PATENT BOTS” is not descriptive but is suggestive of a website featuring
`technology that relates to patents.
`
`The USPTO has permitted numerous standard character marks on the principal register (and not on
`
`the basis of 2(f)) that include the terms “BOT” for goods and services related to software. Applicant refers
`the Board to the following standard character marks on the principal register that include “BOT” for goods
`and services related to software that do not disclaim “BOT”.
`
`Mark
`
`Registration
`No.
`
`Class Goods/Services
`
`SCANBOT
`
`5882279
`
`9
`
`COINBOT
`
`5763306
`
`42
`
`TUNEBOT
`
`5676075
`
`9
`
`BOTKEEPER
`
`5674319
`
`42
`
`STYLEBOT
`
`5648703
`
`9
`
`MEASUREBOT 5648698
`
`9
`
`
`
`Mobile application computer software for scanning images
`and documents, data processing, taking photographic
`images, creating and converting PDF files, optical character
`recognition, reading optical code and barcodes, data
`management, document management, converting document
`images into electronic formats, document automation,
`editing, transmission of photographs to mobile telephones
`and for organizing and viewing digital images and
`photographs
`
`Platform as a service (PAAS) featuring computer software
`platforms for buying and selling, and sharing information
`concerning blockchain and crypto currency; Providing on-
`line non-downloadable computer software for use as a
`cryptocurrency wallet
`
`Software for entertainment bars, restaurants, senior venues,
`resorts, private events, and entertainment venues for
`controlling musical selections and running music based
`bingo games
`
`Software as a service (SAAS) services featuring software for
`use in accounting, bookkeeping, account record keeping,
`virtual accounting, automated bookkeeping, machine
`learning, process automation and automated data entry
`
`Downloadable mobile applications for analyzing a user's
`physical appearance and recommending garment colors and
`products to the user; Downloadable computer software for
`analyzing a user's physical appearance and recommending
`garment colors and products to the user
`
`Downloadable mobile applications for measuring the sizes of
`garments and uploading those sizes to other applications;
`Downloadable computer software for measuring the sizes of
`garments and uploading those sizes to other applications
`
`

`

`PAGEBOT
`
`5587257
`
`9
`
`DOCUBOT
`
`5302627
`
`9
`
`TRAFFIBOT
`
`5225907
`
`9
`
`
`
`
`
`the open source
`in
`Downloadable software for use
`development of typographic design and the design of
`publication pages for print, electronic publishing and use on
`the Internet developed in a computer programming language
`
`Computer application software for mobile phones, namely,
`software for the automation of document creation; database
`management software for the automation of document
`creation; downloadable cloud-based software for
`the
`automation of document creation; software
`for
`the
`automation of document creation
`
`Measurement devices for traffic safety technology, in
`particular distance, speed and traffic control devices as well
`as traffic monitoring devices, in particular for red-light
`monitoring, for recording vehicle registration marks, for
`recording and verifying the payment of road tolls, for
`recording traffic density, traffic flow, and vehicle types,
`namely, radar apparatus and cameras, radar detectors, radar
`guns for police work, radar object detectors for use on
`vehicles; electric, electronic, and optoelectronic sensors,
`especially for the aforementioned devices, in particular
`electric radar sensors, electric laser sensors, piezo electric
`sensors, induction loops in the nature of electrical inductors,
`and video cameras; electronic and optoelectronic proximity
`sensors; position control and docking electric sensors; tactile
`and non-contact electric sensors and measuring heads,
`namely, distance, speed, traffic density and traffic flow
`measuring apparatus; electric measuring devices, namely,
`instruments for measuring length, distance, speed, traffic
`density and traffic flow; radar guns for police work;
`antennas; storage devices for data processing systems,
`namely, blank electronic storage media, blank flash drives,
`high-speed storage subsystems for storage and backup of
`electronic data either locally or via a telecommunications
`network, external computer hard drives computer storage
`devices; image receiving devices, namely, digital media
`receivers; image reproduction devices, namely, apparatus for
`reproduction of images; time-recording apparatus; analytical
`devices, not used for medical purposes, namely, analysis
`instruments for photogrammetric purposes, luxmeters being
`devices for measuring the brightness or illumination of a
`surface, liquid analyzers, photometers; flashlight devices,
`namely, flashlights for use in photography, flashlights with
`light emitting diodes for use in photography; data processing
`apparatus for data evaluation; optical signaling systems,
`namely, traffic lights, variable vehicle traffic signals; Traffic-
`light apparatus signaling devices; electric traffic information
`systems, namely, electronic LED signs, LED vehicle traffic
`signals, traffic control equipment, namely, actuated and
`pretimed traffic signal controllers, Traffic lights, Traffic
`
`

`

`
`
`
`
`POTBOT
`
`5138213
`
`9
`
`equipment, namely, display monitors,
`management
`computers, auto compasses, and software to manage traffic,
`Traffic-light apparatus signaling devices, Vehicle traffic
`signals
`
`Computer software for recommending cannabinoid levels
`and custom strains to medical marijuana patients to guide
`patients toward the appropriate strain and consumption
`method for their specific ailments, eliminating the need for
`patients to experiment with different strains themselves
`
`EXPENSEBOT
`
`4756944
`
`9
`
`Cloud-based software enabling the creation and submision of
`expense reimbursement claims
`
`RECEIPTBOT
`
`4730207
`
`42
`
`Computer services, namely, hosting and maintaining an
`online web site and mobile application software of others for
`use
`in analyzing, displaying,
`indexing, managing,
`organizing, searching, sharing, storing, synchronizing, and
`transmitting
`personal
`account
`documents,
`namely,
`automobile sales and leasing documents, bank statements,
`coupons,
`financial
`records, household bills, medical
`documents,
`loyalty cards program documents and
`subscriptions, real estate sales and leasing documents,
`receipts,
`store
`rewards
`program
`documents
`and
`subscriptions,
`travel rewards program documents and
`subscriptions, and utility bills; computer services, namely,
`creating an on-line community for registered users to
`participate in discussions, get feedback from other users,
`form virtual communities, engage in social networking and
`share information with other users
`
`TAXBOT
`
`4081369
`
`9
`
`Downloadable software for tracking information related to
`tax deductible expenses
`
`Respectfully, these examples show that the term “BOT” is not descriptive of all of the services
`implemented in software, and thus, that “PATENT BOTS” is not descriptive of the specific service of this
`application.
`
`Finally, with respect to the Examining Attorney’s citation of In re Oppedahl & Larson LLP, where
`
`the application sought to trademark “PATENTS.COM” for services relating to patents. In that case, the
`issue was the significance of the “.COM” top-level domain, and the Court treated that issue similarly to
`“Corp.” or “Inc.” in finding the mark unregistrable. Here, this case is not relevant since the term “BOTS”
`in the pending application is not a generic term like “.com,” “Corp.,” or “Inc.”
`
`Applicant’s Mark, PATENT BOTS, does not immediately tell a consumer what the services are.
`
`Consumers would have to exercise imagination and interpretation to reach a conclusion as to the nature of
`the Mark. Therefore, respectfully, the Mark is not merely descriptive of the applied-for services because it
`is suggestive.
`
`
`
`

`

`
`
`Doubts as to Registrability are Resolved in Favor of Applicant and Publication
`
`Applicant respectfully notes that the Office bears the burden of demonstrating mere descriptiveness
`by a preponderance of evidence. At a minimum, Applicant has raised a doubt about the propriety of the
`classification of Applicant's Mark as merely descriptive. Any doubts concerning the descriptive
`significance of a mark are to be resolved in favor of Applicant and of passing the mark to publication. See
`In re Grand Forest Holdings Inc., 78 U.S.P.Q.2d 1152, 2006 WL 337549 (T.T.A.B. 2006).
`
`As the Federal Circuit stated in the case In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828
`F.2d 1567, 1571, 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987), “It is incumbent on the Board to balance the evidence
`of public understanding of the mark against the degree of descriptiveness encumbering the mark, and to
`resolve reasonable doubt in favor of the applicant, in accordance with practice and precedent.” See also In
`re the Gracious Lady Service, Inc., 175 U.S.P.Q. 380, 382, 1972 WL 17804 (T.T.A.B. 1972) (“It is
`recognized that there is a large gray area in determining the descriptiveness of a mark, and where reasonable
`men may differ, it has been the practice to resolve such doubt in an applicant's behalf and publish the mark
`for opposition purposes …”).
`
`CONCLUSION
`
`Applicant respectfully requests that the Examining Attorney withdraw the refusal to register
`Applicant’s Mark and approve the Application for publication. If a telephone call will assist in the
`prosecution of this Application, the Examining Attorney is invited to call 917-933-3895.
`
`
`Respectfully submitted,
`
`By: Abraham Lichy
`The Lichy Law Firm, P.C.
`Attorney for Applicant
`222 East 68th Street
`New York, NY 10065
`917-933-3895
`alichy@lichylaw.com
`
`
`
`
`
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2020-04-20 10:32:04 EDT
`
`Mark: QC BOT
`
`US Serial Number: 77879893
`
`US Registration
`Number:
`
`3987711
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Nov. 24, 2009
`
`Registration Date: Jul. 05, 2011
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Section 8 declaration has been accepted.
`
`Status Date: Mar. 24, 2017
`
`Publication Date: Apr. 19, 2011
`
`
`
`Mark Information
`
`Mark Literal
`Elements:
`
`QC BOT
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Disclaimer: "BOT"
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Research, design, development, consulting and implementation of engineering hardware and software solutions in the field of health
`care robotics
`
`International
`Class(es):
`
`042 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 101
`
`First Use: Jan. 01, 2007
`
`Use in Commerce: Jan. 01, 2007
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`

`

`Owner Name: Vecna, Inc.
`
`Owner Address: 36 Cambridgepark Drive
`Cambridge, MASSACHUSETTS UNITED STATES 02140
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Albert J. Brunett
`
`Attorney Primary
`Email Address:
`
`abrunett@vecna.com
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`ALBERT J. BRUNETT
`36 CAMBRIDGEPARK DR
`CAMBRIDGE, MASSACHUSETTS UNITED STATES 02140-2313
`
`Phone: 6176820636
`
`Correspondent e-
`mail:
`
`abrunett@vecna.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative
`
`Domestic
`Representative
`Name:
`
`Domestic
`Representative e-
`mail:
`
`Albert J. Brunett
`
`Phone: 6176820636
`
`abrunett@vecna.com
`
`Domestic
`Representative e-
`mail Authorized:
`
`Yes
`
`Prosecution History
`
`Date
`
`Description
`
`Mar. 24, 2017
`
`NOTICE OF ACCEPTANCE OF SEC. 8 - E-MAILED
`
`Mar. 24, 2017
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED
`
`Mar. 24, 2017
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Feb. 14, 2017
`
`TEAS SECTION 8 RECEIVED
`
`Jul. 05, 2011
`
`REGISTERED-PRINCIPAL REGISTER
`
`Apr. 19, 2011
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Apr. 19, 2011
`
`PUBLISHED FOR OPPOSITION
`
`Mar. 12, 2011
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Proceeding
`Number
`
`71378
`
`71378
`
`77312
`
`77312
`
`Mar. 11, 2011
`
`ASSIGNED TO LIE
`
`Feb. 18, 2011
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Feb. 16, 2011
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Feb. 16, 2011
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Feb. 16, 2011
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Aug. 28, 2010
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Aug. 28, 2010
`
`NON-FINAL ACTION E-MAILED
`
`Aug. 28, 2010
`
`NON-FINAL ACTION WRITTEN
`
`Aug. 05, 2010
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Aug. 05, 2010
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 05, 2010
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Mar. 01, 2010
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Mar. 01, 2010
`
`NON-FINAL ACTION E-MAILED
`
`Mar. 01, 2010
`
`NON-FINAL ACTION WRITTEN
`
`Mar. 01, 2010
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Mar. 01, 2010
`
`NON-FINAL ACTION E-MAILED
`
`Mar. 01, 2010
`
`NON-FINAL ACTION WRITTEN
`
`Mar. 01, 2010
`
`ASSIGNED TO EXAMINER
`
`Dec. 02, 2009
`
`NOTICE OF PSEUDO MARK MAILED
`
`88889
`
`88889
`
`6325
`
`6325
`
`68113
`
`88889
`
`88889
`
`6325
`
`6325
`
`68113
`
`6325
`
`6325
`
`68113
`
`68113
`
`

`

`Dec. 01, 2009
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`TM Staff and Location Information
`
`Current Location: TMO LAW OFFICE 114
`
`Date in Location: Mar. 24, 2017
`
`TM Staff Information - None
`
`File Location
`
`

`

`Generated on: This page was generated by TSDR on 2020-04-20 11:43:09 EDT
`
`Mark: BOT COLONY
`
`US Serial Number: 85093044
`
`US Registration
`Number:
`
`4298559
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark, Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Jul. 26, 2010
`
`Registration Date: Mar. 05, 2013
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Section 8 declaration has been accepted.
`
`Status Date: Mar. 30, 2018
`
`Publication Date: Oct. 05, 2010
`
`
`
`Mark Literal
`Elements:
`
`BOT COLONY
`
`Notice of
`Allowance Date:
`
`Nov. 30, 2010
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Disclaimer: "BOT"
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Children's educational software; Computer game discs; Computer game equipment, namely, discs; Computer game programmes;
`Computer game programmes downloadable via the Internet; Computer game programs; Computer game software; Computer game
`software downloadable from a global computer network; Computer game software for personal computers and home video game
`consoles; Computer game software for use on mobile and cellular phones; Computer game software for use with personal computers,
`home video game consoles used with televisions, and for arcade-based video game consoles; Computer programs for pre-recorded
`games; Computer programs for video and computer games; Computer-gaming software; Downloadable computer game programs;
`Downloadable computer game software via a global computer network and wireless devices; Downloadable computer programs
`featuring positionable game piece figures for use in the field of computer games; Downloadable electronic game programs;
`Downloadable virtual goods, namely, computer programs featuring artifacts for use in online virtual worlds; Educational software
`featuring instruction in English and analytical thinking; Electronic game programs; Electronic game software; Electronic game software
`for cellular telephones; Electronic game software for handheld electronic devices; Electronic game software for wireless devices; Game
`software; Interactive game programs; Interactive game software; Interactive video game programs; Recorded computer game
`programs; Robots for personal, educational and hobby use and structural parts therefor; Video and computer game programs; Video
`game discs; Video game software; Virtual reality game software
`
`International
`Class(es):
`
`009 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`First Use: Nov. 13, 2012
`
`Use in Commerce: Nov. 13, 2012
`
`

`

`For: Entertainment in the nature of language games; Entertainment services, namely, conducting alternate reality games via the internet;
`Entertainment services, namely, providing a website featuring games and puzzles; Entertainment services, namely, providing an on-
`line computer game; Entertainment services, namely, providing brain training games on-line and in mobile wireless form; Entertainment
`services, namely, providing games of chance via the Internet; Entertainment services, namely, providing on-line computer games;
`Entertainment services, namely, providing online computer games that help maintain an active brain and thus improve memory, speed
`of processing, and that provide a variety of cognitive benefits that positively impact quality of life; Entertainment services, namely,
`providing online electronic games; Entertainment services, namely, providing online video games; Rental of video games
`
`International
`Class(es):
`
`041 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 101, 107
`
`First Use: Nov. 13, 2012
`
`Use in Commerce: Nov. 13, 2012
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: 2904802 Canada Inc.
`
`DBA, AKA,
`Formerly:
`
`DBA North Side Inc.
`
`Owner Address: 4 Sunnyside Avenue
`Westmout, Quebec CANADA H3Y1C1
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`CANADA
`
`Attorney/Correspondence Information
`
`Attorney of Record - None
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`2904802 CANADA INC.
`4 Sunnyside Avenue
`Westmount, Quebec CANADA H3Y1C1
`
`Phone: 514-935-4566
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Mar. 30, 2018
`
`NOTICE OF ACCEPTANCE OF SEC. 8 - E-MAILED
`
`Mar. 30, 2018
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED
`
`Mar. 30, 2018
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Mar. 22, 2018
`
`TEAS SECTION 8 RECEIVED
`
`Mar. 22, 2018
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Mar. 05, 2018
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`Mar. 05, 2013
`
`REGISTERED-PRINCIPAL REGISTER
`
`Jan. 31, 2013
`
`NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
`
`Jan. 30, 2013
`
`LAW OFFICE REGISTRATION REVIEW COMPLETED
`
`Jan. 22, 2013
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Jan. 17, 2013
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Jan. 17, 2013
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jan. 11, 2013
`
`ASSIGNED TO LIE
`
`Proceeding
`Number
`
`68973
`
`68973
`
`70629
`
`70629
`
`70629
`
`70629
`
`

`

`Jan. 09, 2013
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Dec. 31, 2012
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Dec. 31, 2012
`
`NON-FINAL ACTION E-MAILED
`
`Dec. 31, 2012
`
`SU - NON-FINAL ACTION - WRITTEN
`
`Dec. 19, 2012
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Dec. 12, 2012
`
`USE AMENDMENT FILED
`
`Dec. 12, 2012
`
`TEAS STATEMENT OF USE RECEIVED
`
`Dec. 08, 2012
`
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`
`Dec. 07, 2012
`
`EXTENSION 4 GRANTED
`
`Nov. 30, 2012
`
`EXTENSION 4 FILED
`
`Dec. 04, 2012
`
`NOTICE OF REVIVAL - E-MAILED
`
`Dec. 03, 2012
`
`EXTENSION RECEIVED WITH TEAS PETITION
`
`Dec. 03, 2012
`
`PETITION TO REVIVE-GRANTED
`
`Dec. 03, 2012
`
`TEAS PETITION TO REVIVE RECEIVED
`
`Aug. 08, 2012
`
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`
`Aug. 07, 2012
`
`EXTENSION 3 GRANTED
`
`May 30, 2012
`
`EXTENSION 3 FILED
`
`Jul. 11, 2012
`
`NOTICE OF REVIVAL - E-MAILED
`
`Jul. 11, 2012
`
`EXTENSION RECEIVED WITH TEAS PETITION
`
`Jul. 11, 2012
`
`PETITION TO REVIVE-GRANTED
`
`Jul. 11, 2012
`
`TEAS PETITION TO REVIVE RECEIVED
`
`Jul. 02, 2012
`
`ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED
`
`Jul. 02, 2012
`
`ABANDONMENT - NO USE STATEMENT FILED
`
`Jan. 13, 2012
`
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`
`Jan. 12, 2012
`
`EXTENSION 2 GRANTED
`
`Nov. 30, 2011
`
`EXTENSION 2 FILED
`
`Jan. 10, 2012
`
`EXTENSION RECEIVED WITH TEAS PETITION
`
`Jan. 10, 2012
`
`PETITION TO REVIVE-GRANTED
`
`78303
`
`71034
`
`71034
`
`71034
`
`71034
`
`88889
`
`71034
`
`71034
`
`88889
`
`99999
`
`71034
`
`71034
`
`88889
`
`Jan. 10, 2012
`
`TEAS PETITION TO REVIVE RECEIVED
`
`Jan. 02, 2012
`
`ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED
`
`Jan. 02, 2012
`
`ABANDONMENT - NO USE STATEMENT FILED
`
`Aug. 17, 2011
`
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`
`Aug. 16, 2011
`
`EXTENSION 1 GRANTED
`
`May 30, 2011
`
`EXTENSION 1 FILED
`
`Aug. 11, 2011
`
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`
`Jul. 20, 2011
`
`EXTENSION RECEIVED WITH TEAS PETITION
`
`Jul. 20, 2011
`
`PETITION TO REVIVE-GRANTED
`
`Jul. 20, 2011
`
`TEAS PETITION TO REVIVE RECEIVED
`
`Jul. 05, 2011
`
`ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED
`
`Jul. 05, 2011
`
`ABANDONMENT - NO USE STATEMENT FILED
`
`Nov. 30, 2010
`
`NOA E-MAILED - SOU REQUIRED FROM APPLICANT
`
`Oct. 05, 2010
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Oct. 05, 2010
`
`PUBLISHED FOR OPPOSITION
`
`Sep. 02, 2010
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Sep. 02, 2010
`
`ASSIGNED TO LIE
`
`Aug. 19, 2010
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Aug. 10, 2010
`
`APPLICANT AMENDMENT PRIOR TO EXAMINATION - ENTERED
`
`Aug. 09, 2010
`
`TEAS VOLUNTARY AMENDMENT RECEIVED
`
`Aug. 10, 2010
`
`EXAMINER'S AMENDMENT ENTERED
`
`Aug. 10, 2010
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Aug. 10, 2010
`
`EXAMINERS AMENDMENT E-MAILED
`
`Aug. 10, 2010
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Jul. 30, 2010
`
`ASSIGNED TO EXAMINER
`
`Jul. 29, 2010
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Jul. 29, 2010
`
`NEW APPLICATION ENTERED IN TRAM
`
`99999
`
`71034
`
`71034
`
`71034
`
`88889
`
`99999
`
`68658
`
`68658
`
`88888
`
`88888
`
`6328
`
`6328
`
`78303
`
`78303
`
`

`

`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: TMEG LAW OFFICE 104
`
`Date in Location: Mar. 30, 2018
`
`

`

`Generated on: This page was generated by TSDR on 2020-04-20 11:44:40 EDT
`
`Mark: BOT 365
`
`US Serial Number: 87257059
`
`US Registration
`Number:
`
`5269616
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Dec. 05, 2016
`
`Registration Date: Aug. 22, 2017
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Aug. 22, 2017
`
`Publication Date: Jun. 06, 2017
`
`
`
`Mark Literal
`Elements:
`
`BOT 365
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Disclaimer: "BOT"
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Software as a service (SAAS) services featuring software for conversational user interface services
`
`International
`Class(es):
`
`042 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 101
`
`First Use: Nov. 04, 2016
`
`Use in Commerce: Nov. 04, 2016
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`File