IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
RESPONSE TO OFFICE ACTION
Applicant responds to the Office Action identified above as follows.
Mark: RE:ACTION Serial No.: 99252648 Office Action of: 2025-12-04 (NFIN20251204125328)
Amendment to the Identification of Goods/Services
Applicant responds to the requirement to amend the identification of services. 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Applicant accepts the examining attorney's proposed identification and adopts the suggested wording set forth in the Office Action, completing the function-and-purpose specifications the examining attorney left for Applicant to supply, as set forth below.
Consistent with TMEP §1402.09 and Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958), the amended identification deletes the registered wording "United States Patent and Trademark Office" (U.S. Registration Nos. 6832042 and 6832052) from each entry in which it appeared and substitutes the descriptive wording supplied by the examining attorney: "the federal agency in the United States responsible for granting U.S. patents and registering trademarks." Applicant notes that one "Software as a service (SAAS)" entry in the suggested identification, as printed in the Office Action, retained the registered wording; because the requirement directs deletion of that wording wherever it appears in the identification, Applicant has applied the examining attorney's same substitute descriptive wording uniformly to that entry as well.
Applicant amends the identification of goods/services to read as follows:
International Class 042: Providing temporary use of a non-downloadable web application for [APPLICANT TO CONFIRM: analyzing legal issues using] artificial intelligence; Providing temporary use of a non-downloadable web application for analyzing legal issues; Software as a service (SAAS) services featuring software using artificial intelligence for [APPLICANT TO CONFIRM: analyzing legal issues; if the software is content- or field-specific, specify the content or field of use]; Software as a service (SAAS) services featuring software for analyzing legal issues; Software as a service (SAAS) services featuring software for analyzing Office Actions from the federal agency in the United States responsible for granting U.S. patents and registering trademarks; Providing temporary use of a non-downloadable web application for analyzing Office Actions from the federal agency in the United States responsible for granting U.S. patents and registering trademarks; Providing a web site featuring temporary use of non-downloadable software for [APPLICANT TO CONFIRM: analyzing legal issues using] artificial intelligence; Providing a web site featuring temporary use of non-downloadable software for analyzing legal issues; Providing a web site featuring temporary use of non-downloadable software for analyzing Office Actions from the federal agency in the United States responsible for granting U.S. patents and registering trademarks
The bracketed insertions above correspond to the placeholders the examining attorney included in the suggested identification (e.g., "{specify function or purpose of software, e.g., analyzing, managing, training, etc.}"). Each insertion draws only on wording already present elsewhere in the identification of record and must be confirmed by Applicant before filing:
- For the two entries reading "web application for . . . artificial intelligence" and "non-downloadable software for . . . artificial intelligence," Applicant has specified the function as "analyzing legal issues using artificial intelligence," consistent with the parallel entries of record. [APPLICANT TO CONFIRM: the specific function or purpose of the artificial intelligence software.]
- For the entry "Software as a service (SAAS) services featuring software using artificial intelligence," the examining attorney additionally requested the content or field of use if the software is content- or field-specific. [APPLICANT TO CONFIRM: whether to specify a field of use, e.g., the field of legal issues or Office Actions.]
This amendment clarifies and limits the services of record and does not broaden or expand the identification beyond the scope of the original application. 37 C.F.R. §2.71(a); TMEP §1402.06. Each amended entry either adopts the examining attorney's suggested wording verbatim or specifies the function or purpose of the software within the scope of the corresponding original entry; no goods or services have been added.
Because this amendment resolves the identification requirement as to every entry identified in the Office Action, including each service listed in the partial-abandonment advisory, Applicant respectfully submits that no services should be deleted from the application and requests that the application proceed to publication with all services in International Class 042. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a). Applicant remains willing to authorize any minor conforming edits to the identification by examiner's amendment via telephone or email, per the examining attorney's advisory. TMEP §707.
Partial Abandonment Advisory — Additional Issue Flagged (Not Automated)
The Office Action also raises the following issue: Partial Abandonment Advisory.
Office Action passage: "If applicant does not respond to this Office action by the response deadline, the following services in"
Strategy outline (suggested by the automated cross-check; verify before relying on it): - Respond timely and amend all six affected services to preserve full scope - Deliberately let the indefinite services abandon and proceed only with the 'analyzing legal issues' services - Amend some affected services and drop the rest, weighing scope needs against prosecution cost
This issue was flagged by an automated LLM cross-check of the Office Action text; the deterministic issue detector did not classify it. Drafting for it is not automated. Verify the issue against the Office Action and prepare the substantive response manually.
Option to Call or Email Examiner to Enter Amendments — Additional Issue Flagged (Not Automated)
The Office Action also raises the following issue: Option to Call or Email Examiner to Enter Amendments.
Office Action passage: "Applicant may call or email the assigned trademark examining attorney to expedite resolution of the"
Strategy outline (suggested by the automated cross-check; verify before relying on it): - Call or email the examiner to authorize an examiner's amendment adopting the suggested identification, placing the application in condition for approval - File a formal TEAS response instead if wording beyond the examiner's suggestion is needed - Confirm the proposed substitute wording is acceptable with the examiner before committing
This issue was flagged by an automated LLM cross-check of the Office Action text; the deterministic issue detector did not classify it. Drafting for it is not automated. Verify the issue against the Office Action and prepare the substantive response manually.
Conclusion
For the foregoing reasons, applicant respectfully requests that the refusal(s) be withdrawn, the requirement(s) be deemed satisfied, and the application be approved for publication.
Respectfully submitted, [ATTORNEY NAME] [FIRM] [DATE] Attorney for Applicant