DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-20 are currently pending in application 19/296,951.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/26/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f), because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “engine” in claims 1, 3, 5-8, and 18-19; and “module” in claims 1-2, 6, 9, and 12.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
Claim Objections
Claim 16 is objected to because of the following informalities: Claim 16 recites, “using an artificial intelligence model to generate a trademark registration number for the first keyword associated with the semantic meaning is insufficient basis to conclude a confusingly similar trademark in a trademark registry based on any of the DuPont factors and the first keyword is unlikely to dilute a famous trademark”. However, the underlined language above is both confusing and incomplete. Appropriate correction is required.
Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 6, 8, and 10-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 6 recites “the economic barrier” which contains insufficient antecedent basis. Correction for proper antecedent basis is requested.
Claims 8 recites “the DuPont Factors” which contains insufficient antecedent basis. Correction for proper antecedent basis is requested.
Claims 10 recites “the case of preliminary refusal” which contains insufficient antecedent basis. Correction for proper antecedent basis is requested.
Claims 16 recites “the DuPont Factors” which contains insufficient antecedent basis. Correction for proper antecedent basis is requested.
Claims 20 recites “the dilution” which contains insufficient antecedent basis. Correction for proper antecedent basis is requested.
Furthermore, the term “within minutes” in independent claim 10 is a relative term which renders the claim indefinite. The term “within minutes” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Independent Claim 10 recites, “autonomously generating a registration decision within minutes based on precedential trademark law analysis,” which renders the time to complete the autonomously generated registration decision indefinite.
Claims 11-15 and 17-20 are also rejected as being dependent from claims 10 and/or 16, under the same rationale and reasoning as identified above.
Claim Rejections – 35 USC §101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter, specifically an abstract idea.
Claims 1-20 are directed to a judicial exception (i.e., abstract idea), without providing a practical application, and without providing significantly more.
Under the 35 U.S.C. §101 subject matter eligibility two-part analysis, Step 1 addresses whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP §2106.03. If the claim does fall within one of the statutory categories, it must then be determined in Step 2A [prong 1] whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). See MPEP §2106.04. If the claim is directed toward a judicial exception, it must then be determined in Step 2A [prong 2] whether the judicial exception is integrated into a practical application. See MPEP §2106.04(d). Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in Step 2B whether the claim recites "significantly more" than the abstract idea. See MPEP §2106.05.
Examiner note: The Office’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) is currently found in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (MPEP), specifically incorporated in MPEP §2106.03 through MPEP §2106.07(c).
Regarding Step 1,
Claims 1-9 are directed toward an apparatus (system). Claims 10-20 are directed toward a process (method). Thus, all claims fall within one of the four statutory categories as required by Step 1.
Regarding Step 2A [prong 1],
Claims 1-20 are directed toward the judicial exception of an abstract idea.
Independent claims 1-20 are directed specifically to the abstract idea of trademark data intake, review, and decision.
Regarding independent claim 1, the underlined limitations emphasized below correspond to the abstract ideas of the claimed invention:
A computer-implemented platform for automating evaluation and registration of a trademark, the platform comprising:
a user-facing interface to enable an applicant to input a proposed trademark comprising at least one of a word mark, logo, and slogan along with a textual description of associated goods and services, and optionally, visual proof of use in commerce;
a classification engine powered by a natural language processing (NLP) model to dynamically assist the applicant in selecting appropriate classes of goods and services from standardized taxonomies;
a backend examination engine to perform real-time searches and comparative analyses across databases of registered, pending, and common law marks using a large language model and a design recognition algorithm;
an autonomous legal reasoning module powered by the large language model (LLM) configured to interpret trademark law precedents, disclaimer requirements, and registration criteria, and to simulate multi-perspective legal analysis through an internal adversarial process; and
an outcome generation engine to deliver, within a predefined time frame, at least one of a preliminary approval with automated registration and a preliminary refusal with detailed explanation and recommended amendments.
As the underlined claim limitations above demonstrate, independent claim 1 is directed to the abstract idea of Mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations); Mental processes (concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)); and Certain methods of organizing human activity (fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations; official legal and government operations)).
Regarding independent claim 10, the underlined limitations emphasized below correspond to the abstract ideas of the claimed invention:
A computer-implemented method to register a trademark, the method comprising:
receiving user input comprising a proposed trademark, a textual description of goods and services, and a proof of use;
classifying the goods and services via a natural language processing (NLP)-assisted interface;
performing real-time similarity and conflict checks against a database of registered, pending, and common law trademarks using a natural language processing (NLP) model and an image recognition model;
autonomously generating a registration decision within minutes based on precedential trademark law analysis;
providing rationale and suggestions in the case of preliminary refusal; and
allowing appeals to be reviewed by a human examiner for edge cases.
As the underlined claim limitations above demonstrate, independent claim 10 is directed to the abstract idea of Mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations); Mental processes (concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)); and Certain methods of organizing human activity (fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations; official legal and government operations)).
Regarding independent claim 16, the underlined limitations emphasized below correspond to the abstract ideas of the claimed invention:
A method of generating a trademark registration comprising:
associating a first keyword formed with an alphanumeric string of characters in a first written script with a semantic meaning based on a secondary data comprising at least one of:
an image allegedly of a photograph of the first keyword affixed on an article of manufacture of an applicant for the trademark registration, and a contextual credibility of the image as a true and correct representation of the photograph,
a textual description of goods and services on which the first keyword the applicant for the trademark registration represents as at least one of the goods and services on which the first keyword is at least one desired to be affixed, and
a web page that the applicant for the trademark registration represents as marketing at least one of the goods and services associated with the first keyword, and a contextual relevancy of the web page as actually marketing at least one of the goods and services;
using an artificial intelligence model to generate a trademark registration number for the first keyword associated with the semantic meaning is insufficient basis to conclude a confusingly similar trademark in a trademark registry based on any of the DuPont factors and the first keyword is unlikely to dilute a famous trademark;
using the artificial intelligence model to reject the first keyword associated with the semantic meaning from trademark registration when the artificial intelligence model determines at least one of the conditions below is true:
the confusingly similar trademark in the trademark registry based on the DuPont factors; and
the first keyword with the semantic meaning to dilute the famous trademark.
As the underlined claim limitations above demonstrate, independent claim 16 is directed to the abstract idea of Mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations); Mental processes (concepts performed in the human mind (including an observation, evaluation, judgment, or opinion)); and Certain methods of organizing human activity (fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations; official legal and government operations)).
Dependent claims 2-9, 11-15, and 17-20 provide further details to the abstract idea of claims 1, 10 and 16 regarding the received data, therefore, these claims include mathematical concepts, mental processes, and certain methods of organizing human activities for similar reasons provided above for claims 1, 10 and 16.
After considering all claim elements, both individually and in combination and in ordered combination, it has been determined that the claims do not amount to significantly more than the abstract idea itself.
Regarding Step 2A [prong 2],
Claims 1-20 fail to integrate the recited judicial exception into any practical application. The claims recite additional limitations which are hardware or software elements or particular technological environment, such as a “computer”, a “platform”, a “user-facing interface”, a “classification engine”, a “natural language processing (NLP) model”, a “backend examination engine”, a “a large language model”, a “design recognition algorithm”, a “autonomous legal reasoning module”, an “outcome generation engine”, a “database”, a “web page”, and an “artificial intelligence model”. However, these limitations are not enough to qualify as “practical application” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of an abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide practical application for an abstract idea (MPEP 2106.05 (f) & (h)). The claims do not amount to "practical application" for the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
The presence of a machine learning algorithm or computer implementations do not necessarily restrict the claim from reciting an abstract idea. The machine learning algorithm and computer limitations claimed herein are simply used as a tool to apply the abstract idea without transforming the underlying abstract idea into patent eligible subject matter. As claimed, machine learning algorithm is not iteratively trained to improve the accuracy of the model itself, it merely processes data through saved mathematical patterns and probabilities. Examiner notes that the additional limitations of machine learning and computer processing do not result in computer functionality or technical/technology improvement and hence do not result in a practical application. The machine learning algorithm and the computer limitation simply process the data through inputting and outputting data. Processing data is mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 Fed.Cir. 2017) or speeding up a loan application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, Lending Tree, LLLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2019)(non-precedential). Thus, the additional limitations of machine learning algorithm and computer limitations do not transform the abstract idea into a practical application.
The relevant question under Step 2A [prong 2] is not whether the claimed invention itself is a practical application, instead, the question is whether the claimed invention includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application by imposing a meaningful limit on the judicial exception. This is not the case with Applicant’s claimed invention. Automating the recited claimed features as a combination of computer instructions implemented by computer hardware and/or software elements as recited above does not qualify an otherwise unpatentable abstract idea as patent eligible. Examples where the Courts have found selecting a particular data source or type of data to be manipulated to be insignificant extra-solution activity include selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); Applicant’s limitations as recited above do nothing more than supplement the abstract idea using additional hardware/software computer components as a tool to perform the abstract idea and generally link the use of the abstract idea to a technological environment, which is not sufficient to integrate the judicial exception into a practical application since they do not impose any meaningful limits. Dependent claims 2-9, 11-15, and 17-20 merely incorporate the additional elements recited above, along with further embellishments of the abstract idea of independent claims respectively, but these features only serve to further limit the abstract idea of independent claims. Therefore, the additional elements recited in the claimed invention individually, and in combination fail to integrate the recited judicial exception into any practical application.
Regarding Step 2B,
Claims 1-20 fail to amount to “significantly more” than an abstract idea. The claims recite additional limitations which are hardware or software elements or particular technological environment, such as a “computer”, a “platform”, a “user-facing interface”, a “classification engine”, a “natural language processing (NLP) model”, a “backend examination engine”, a “a large language model”, a “design recognition algorithm”, a “autonomous legal reasoning module”, an “outcome generation engine”, a “database”, a “web page”, and an “artificial intelligence model”. However, these limitations are not enough to qualify as “significantly more” being recited in the claims along with the abstract idea since these limitations are merely invoked as a tool to perform instruction of Abstract idea in a particular technological environment and/or are generally linking the use of the abstract idea to a particular technological environment or field of use, and merely applying and abstract idea in a particular technological environment and merely limiting use of an abstract idea to a particular field or a technological environment do not provide significantly more to an abstract idea (MPEP 2106.05(f) & (h)). The claims do not amount to "significantly more" than the abstract idea because they neither (1) recite any improvements to another technology or technical field; (2) recite any improvements to the functioning of the computer itself; (3) apply the judicial exception with, or by use of, a particular machine; (4) effect a transformation or reduction of a particular article to a different state or thing; (5) add a specific limitation other than what is well-understood, routine and conventional in the field; (6) add unconventional steps that confine the claim to a particular useful application; nor (7) provide other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Dependent claims 2-9, 11-15, and 17-20 merely recite further additional embellishments of the abstract idea of independent claims 1, 10 and 16 respectively, but these features only serve to further limit the abstract idea of independent claims 1, 10 and 16; however, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limits. The addition of another abstract concept to the limitations of the claims does not render the claim other than abstract. Under the Interim Guidance on Patent Subject Matter Eligibility (PEG 2019), it specifically states that narrowing an abstract idea of claims do not resolve the claims of being "significantly more" than the abstract idea. Thus, the additional elements in the dependent claims only serve to further limit the abstract idea utilizing the computer components as a tool and/or generally link the use of the abstract idea to a particular technological environment.
Therefore, since there are no limitations in the claims 1-20 that transform the exception into a patent eligible application such that the claims amount to significantly more than the exception itself, and looking at the limitations as a combination and as an ordered combination adds nothing that is not already present when looking at the elements taken individually, claims 1-20 are rejected under 35 USC § 101 as being directed to non-statutory subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent and Trademark Office, Herein after USPTO (United States Patent and Trademark Office (USPTO), Trademark Manual of Examining Procedure (TMEP), July 2022 Version) in view of Epstein (Epstein, Matthew D., "AI Enters the Design Patent Arena as the USPTO Launches DesignVision", Dinsmore, 20250725 (Year: 2025).
As per independent Claim 1, USPTO discloses a computer-implemented platform for evaluation and registration of a trademark, the platform comprising:
a user-facing interface to enable an applicant to input a proposed trademark comprising at least one of a word mark, logo, and slogan along with a textual description of associated goods and services, and optionally, visual proof of use in commerce (See at least TMEP 301, Electronic Filing, “The Trademark Electronic Application System ("TEAS") makes electronic filing available on the United States Patent and Trademark Office ("USPTO") website, at http://www.uspto.gov.”);
a classification engine to dynamically assist the applicant in selecting appropriate classes of goods and services from standardized taxonomies (See at least TMEP 1902.02(g), Classification in International Applications, “The goods/services should be classified according to the version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement") that is in effect as of the filing date of the international application.”; The Nice Classification website (http://www.wipo.int/classifications/en/) includes word search capabilities.);
a backend examination to perform real-time searches and comparative analyses across databases of registered, pending, and common law marks (See at least TMEP 104, Trademark Searching, “X-Search, the USPTO's computerized search system, contains text and images of registered marks, and marks in pending and abandoned applications. X-Search is used by examining attorneys when searching for conflicting marks during examination”);
a legal reasoning configured to interpret trademark law precedents, disclaimer requirements, and registration criteria, and to simulate multi-perspective legal analysis through an internal adversarial process (See at least 704, Initial Examination); and
an outcome generation to deliver, within a predefined time frame (USPTO first action pendency target time 2023-2024: 8.5 months from the initial filing date to the first action, See Teaching Reference – USPTO Trademark Dashboard, 2023-2026), at least one of a preliminary approval with automated registration and a preliminary refusal with detailed explanation and recommended amendments (See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)).
While USPTO does describe automated tools for applying/ classifying/ and searching trademarks, USPTO fails to expressly disclose using automated analysis based artificial intelligence tools/ engines/ modules (natural language processing (NLP) model, large language model, design recognition algorithm) to automated the completion of required steps in the trademark examination process.
However, the analogous art of Epstein discloses how the USPTO has implemented Artificial Intelligence tools (DesignVision) for automating steps in the examination process (See at least Pgs. 1-3, “DesignVision is integrated into the USPTO’s Patents End-to-End (PE2E) search suite. It enables design patent examiners to conduct prior art searches using images as queries, rather than relying solely on text-based searches. The tool supports searching across more than 80 global design databases, including those maintained by the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO) and other international IP offices. Key features of DesignVision include: Uploading up to seven images in a single search query, Focused searching on specific image elements, Text and classification filters to refine results, Automated search history reporting for transparency. When an examiner uses DesignVision, the tool compares uploaded images against global design databases and returns results based on image similarity. This is somewhat similar to reverse image searching which is commonly done on Google or other online platforms. The examiner’s use of DesignVision is recorded in the design patent application’s file wrapper, including the number of images uploaded, filters applied, and a summary of the search results.” … “This development follows the USPTO’s broader initiative to incorporate AI into patent examination, building on earlier AI tools such as ‘More Like This’ and ‘Similarity Search’ that assists patent examiners in conducting a prior art searches.” )
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have included using automated analysis based artificial intelligence tools/ engines/ modules (natural language processing (NLP) model, large language model, design recognition algorithm) to automated the completion of required steps in the trademark examination process, as disclosed by Epstein in the system disclosed by USPT, for the advantage of providing a method/ system of examining intellectual property, with the ability to increase the speed, efficiency, and accuracy by incorporated automated tools, to include Machine Learning (ML) and Artificial Intelligence (AI) (See KSR [127 S Ct. at 1739] “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
As per Claim 2, USPTO and Epstein disclose an optional escalation module to enable a human review for applications exhibiting novel, ambiguous, and potentially contested legal characteristics (USPTO: See at least TMEP 1501, Appeal to Trademark Trial and Appeal Board, “An appeal from an examining attorney’s action is taken to the Trademark Trial and Appeal Board ("Board"), not to a court. An appeal is taken by filing a notice of appeal and paying the appeal fee within six months of the date of issuance of the action from which the appeal is taken. 15 U.S.C. §1070; 37 C.F.R. §2.142(a). See Trademark Trial and Appeal Board Manual of Procedure ("TBMP") §1202.03. The Trademark Act gives applicants a right to appeal to the Board after a final action by an examining attorney. 15 U.S.C. §1070.”).
As per Claim 3, USPTO and Epstein disclose a computer vision and a machine learning subsystem for authenticating submitted trademark specimens, additionally comprising: an image processing engine to receive, parse, and inspect photographic and graphical evidence submitted with trademark filing; a manipulation detection algorithm trained to identify artifacts of digital alteration comprising at least one of layering, lassoing, pixel duplication, and AI-generated text and graphics indicative of forgery; an intent inference model to evaluate contextual metadata and semantic alignment between the specimen and the goods and services claimed; and an automated classification output to flag suspicious filings for review, provide automated rejection with explanation, and clear authentic submissions for continued processing (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1202.17(b)(ii), Marks Displaying an Unusual Depiction of a Universal Symbol; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)) (Epstein: Pgs. 1-3).
As per Claim 4, USPTO and Epstein disclose wherein: upon preliminary refusal, the platform automatically generates a structured, editable response for reconsideration and appeal, citing legal justifications, alternative classifications, and recommended disclaimers to improve registrability likelihood (USPTO: See at least TMEP 707, Examiner’s Amendment).
As per Claim 5, USPTO and Epstein disclose wherein the backend examination engine to: continually refine examination and adjudication capabilities by ingesting new trademark registrations, TTAB decisions, and federal court rulings; and periodically retrain using active learning loops, feedback from a human examiner, and an aggregated user behavior data to enhance future decision quality (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)) (Epstein: Pgs. 1-3).
As per Claim 6, USPTO and Epstein disclose a fee determination engine to reduce filing costs based on system automation level, applicant profile, and filing simplicity, thereby lowering the economic barrier to entry for entrepreneurs with lesser economic means; and a real-time analytics and a transparency module to publish key performance indicators (KPIs), comprising registration processing time, approval and refusal rate, regional applicant trend, and bias audit in a dashboard, wherein the dashboard is publicly accessible and designed to foster government accountability and public trust. (USPTO: See at least TMEP 301, Electronic Filing, “The Trademark Electronic Application System ("TEAS") makes electronic filing available on the United States Patent and Trademark Office ("USPTO") website, at http://www.uspto.gov.”; TMEP 810 Filing Fee)
As per Claim 7, USPTO and Epstein disclose a fully automated dispute resolution system for trademark conflicts, further comprising: an online portal wherein two or more parties upload potentially conflicting trademarks with claims of ownership, evidence of first use in commerce within the United States, allegations and defenses to trademark infringement, and declarations in support and opposition thereto, an adjudicative reasoning engine to use pre-trained legal inference models to assess likelihood of confusion, prior use, and classification conflicts based on statutory law and judicial precedent, a decision generation component to produce written findings of fact, legal reasoning, and determination on confusion and infringement is likely, and optional pathways for a supplemental alternative dispute resolution and a litigation pathway in which one party is unsatisfied with the written findings. (USPTO: See at least TMEP 301, Electronic Filing; TMEP 503.06(c), Assignment, Change of Name, or Other Interest Improperly Filed and Recorded by Another Person Against Owner’s Application or Registration.)
As per Claim 8, USPTO and Epstein disclose the platform further comprising: a scoring engine to weigh semantic and visual conflicts based on the DuPont factors and outputs a composite risk score; and a user interface to visually display the composite risk score with contributing factors and suggestions to reduce risk (USPTO: See at least TMEP 104, Trademark Searching; TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)).
As per Claim 9, USPTO and Epstein disclose the platform further comprising: a foreign language processing model trained in all human languages to analyze foreign-language trademarks and identify transliterated and translated similarities causing confusion; a fraud detection module configured to analyze patterns of repeated submissions, altered specimens, and conflicting claims across user accounts to flag potential bad-faith filings; and an immutable audit logging subsystem to store timestamped records of AI- generated decisions, user actions, and revision history to enable traceability and regulatory compliance (USPTO: See at least TMEP 301, Electronic Filing; TMEP 1209.03(g), Foreign Equivalents).
As per independent Claim 10, USPTO discloses a computer-implemented method to register a trademark, the method comprising:
receiving user input comprising a proposed trademark, a textual description of goods and services, and a proof of use (See at least TMEP 301, Electronic Filing, “The Trademark Electronic Application System ("TEAS") makes electronic filing available on the United States Patent and Trademark Office ("USPTO") website, at http://www.uspto.gov.”);
classifying the goods and services via a interface; performing real-time similarity and conflict checks against a database of registered, pending, and common law trademarks (See at least TMEP 1902.02(g), Classification in International Applications, “The goods/services should be classified according to the version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement") that is in effect as of the filing date of the international application.”; The Nice Classification website (http://www.wipo.int/classifications/en/) includes word search capabilities.);
generating a registration decision within minutes (subjective/ relative term – could be within any amount of minutes, e.g. within 525,600 minutes/ 1 Year) based on precedential trademark law analysis (See at least 704, Initial Examination; See also See at least TMEP 104, Trademark Searching);
providing rationale and suggestions in the case of preliminary refusal (See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)); and
allowing appeals to be reviewed by a human examiner for edge cases (See at least TMEP 1501, Appeal to Trademark Trial and Appeal Board, “An appeal from an examining attorney’s action is taken to the Trademark Trial and Appeal Board ("Board"), not to a court. An appeal is taken by filing a notice of appeal and paying the appeal fee within six months of the date of issuance of the action from which the appeal is taken. 15 U.S.C. §1070; 37 C.F.R. §2.142(a). See Trademark Trial and Appeal Board Manual of Procedure ("TBMP") §1202.03. The Trademark Act gives applicants a right to appeal to the Board after a final action by an examining attorney. 15 U.S.C. §1070.”).
While USPTO does describe automated tools for applying/ classifying/ and searching trademarks, USPTO fails to expressly disclose using automated analysis based artificial intelligence tools/ engines/ modules (natural language processing (NLP) model, large language model, design recognition algorithm) to automated the completion of required steps in the trademark examination process.
However, the analogous art of Epstein discloses how the USPTO has implemented Artificial Intelligence tools (DesignVision) for automating steps in the examination process (See at least Pgs. 1-3, “DesignVision is integrated into the USPTO’s Patents End-to-End (PE2E) search suite. It enables design patent examiners to conduct prior art searches using images as queries, rather than relying solely on text-based searches. The tool supports searching across more than 80 global design databases, including those maintained by the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO) and other international IP offices. Key features of DesignVision include: Uploading up to seven images in a single search query, Focused searching on specific image elements, Text and classification filters to refine results, Automated search history reporting for transparency. When an examiner uses DesignVision, the tool compares uploaded images against global design databases and returns results based on image similarity. This is somewhat similar to reverse image searching which is commonly done on Google or other online platforms. The examiner’s use of DesignVision is recorded in the design patent application’s file wrapper, including the number of images uploaded, filters applied, and a summary of the search results.” … “This development follows the USPTO’s broader initiative to incorporate AI into patent examination, building on earlier AI tools such as ‘More Like This’ and ‘Similarity Search’ that assists patent examiners in conducting a prior art searches.” )
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have included using automated analysis based artificial intelligence tools/ engines/ modules (natural language processing (NLP) model, large language model, design recognition algorithm) to automated the completion of required steps in the trademark examination process, as disclosed by Epstein in the system disclosed by USPT, for the advantage of providing a method/ system of examining intellectual property, with the ability to increase the speed, efficiency, and accuracy by incorporated automated tools, to include Machine Learning (ML) and Artificial Intelligence (AI) (See KSR [127 S Ct. at 1739] “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
As per Claim 11, USPTO and Epstein disclose presenting conflicting mark data to an AI model; autonomously evaluating confusion, prior use, and class overlap based on learned precedent; issuing at least one of a binding and advisory decision; and offering a streamlined human-appealable path when specific statutory criteria are met (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See at least TMEP 1501; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)) (Epstein: Pgs. 1-3).
As per Claim 12, USPTO and Epstein disclose analyzing specimen images for signs of digital manipulation using pixel pattern analysis and forgery detection models using a computer vision module, configured to: cross-reference time, metadata, and commerce signals to validate authenticity, and flag potentially fraudulent filings for at least one manual review and automatic rejection (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1202.17(b)(ii), Marks Displaying an Unusual Depiction of a Universal Symbol; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)) (Epstein: Pgs. 1-3).
As per Claim 13, USPTO and Epstein disclose continuously updating the natural language processing (NLP) model and the image recognition model for decision-making criteria based on at least one outcome from court, TTAB ruling, and public feedback to improve performance and fairness (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1202.17(b)(ii), Marks Displaying an Unusual Depiction of a Universal Symbol; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)) (Epstein: Pgs. 1-3)..
As per Claim 14, USPTO and Epstein disclose in case of refusal, generating an editable template argument for reconsideration to cite relevant precedents and propose modifications comprising disclaimer and class narrowing (USPTO: See at least TMEP 707, Examiner’s Amendment)..
As per Claim 15, USPTO and Epstein disclose publishing performance metrics comprising approval and refusal rates, time-to-registration, and audit results in real-time to ensure public trust and institutional transparency (USPTO: See at least TMEP 301, Electronic Filing, “The Trademark Electronic Application System ("TEAS") makes electronic filing available on the United States Patent and Trademark Office ("USPTO") website, at http://www.uspto.gov.”); TMEP 106, The Official Gazette).
As per independent Claim 16, USPTO discloses a method of generating a trademark registration comprising:
associating a first keyword [the trademark] formed with an alphanumeric string of characters in a first written script with a semantic meaning based on a secondary data comprising at least one of:
an image [specimen] allegedly of a photograph of the first keyword affixed on an article of manufacture [the product or its direct packaging] of an applicant for the trademark registration, and a contextual credibility of the image as a true and correct representation of the photograph (See at least TMEP 904.07(a), Whether the Specimen Shows the Mark Used in Commerce),
a textual description of goods and services on which the first keyword the applicant for the trademark registration represents as at least one of the goods and services on which the first keyword is at least one desired to be affixed (See at least TMEP 808, Description of Mark; See also 808.03(a), Accurate and Complete Descriptions; See also 808.01-808.03), and
a web page that the applicant for the trademark registration represents as marketing at least one of the goods and services associated with the first keyword, and a contextual relevancy of the web page as actually marketing at least one of the goods and services (See at least TMEP 904.03(i), Electronic Displays);
generate a trademark registration number (examining attorney grants/ allows trademark - Issuance Trigger: computer system automatically generates and locks the permanent registration number when the examining attorney clears the mark and the USPTO issues the official electronic Certificate of Registration) for the first keyword associated with the semantic meaning when there is insufficient basis to conclude a confusingly similar trademark in a trademark registry based on any of the DuPont factors and the first keyword is unlikely to dilute a famous trademark (See at least 704, Initial Examination);
reject the first keyword associated with the semantic meaning from trademark registration when the artificial intelligence model determines at least one of the conditions below is true:
the confusingly similar trademark in the trademark registry based on the DuPont factors; and
the first keyword with the semantic meaning to dilute the famous trademark (See at least TMEP 104, Trademark Searching; TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)).
While USPTO does describe automated tools for applying/ classifying/ and searching trademarks, USPTO fails to expressly disclose using automated analysis based artificial intelligence tools (artificial intelligence model, natural language processing (NLP) model, large language model, design recognition algorithm) to automated the completion of required steps in the trademark examination process.
However, the analogous art of Epstein discloses how the USPTO has implemented Artificial Intelligence tools (DesignVision) for automating steps in the examination process (See at least Pgs. 1-3, “DesignVision is integrated into the USPTO’s Patents End-to-End (PE2E) search suite. It enables design patent examiners to conduct prior art searches using images as queries, rather than relying solely on text-based searches. The tool supports searching across more than 80 global design databases, including those maintained by the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO) and other international IP offices. Key features of DesignVision include: Uploading up to seven images in a single search query, Focused searching on specific image elements, Text and classification filters to refine results, Automated search history reporting for transparency. When an examiner uses DesignVision, the tool compares uploaded images against global design databases and returns results based on image similarity. This is somewhat similar to reverse image searching which is commonly done on Google or other online platforms. The examiner’s use of DesignVision is recorded in the design patent application’s file wrapper, including the number of images uploaded, filters applied, and a summary of the search results.” … “This development follows the USPTO’s broader initiative to incorporate AI into patent examination, building on earlier AI tools such as ‘More Like This’ and ‘Similarity Search’ that assists patent examiners in conducting a prior art searches.” )
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have included using Artificial Intelligence tools/ engines (natural language processing (NLP) model, large language model, design recognition algorithm) to automated the completion of required steps in the trademark examination process, as disclosed by Epstein in the system disclosed by USPT, for the advantage of providing a method/ system of examining intellectual property, with the ability to increase the speed, efficiency, and accuracy by incorporated automated tools, to include Machine Learning (ML) and Artificial Intelligence (AI) (See KSR [127 S Ct. at 1739] “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).
As per Claim 17, USPTO and Epstein disclose wherein rejecting the first keyword associated with the semantic meaning from the trademark registration: applying the artificial intelligence model to compare the semantic meaning of the first keyword with the semantic meanings of reference marks in a trusted authority database using the DuPont factors, and selecting the confusingly similar mark from the reference marks as likely to be confused with the first keyword based on the DuPont factors (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1202.17(b)(ii), Marks Displaying an Unusual Depiction of a Universal Symbol; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)) (Epstein: Pgs. 1-3).
As per Claim 18, USPTO and Epstein disclose wherein a backend examination engine to: continually refine examination and adjudication capabilities by ingesting new trademark registrations, TTAB decisions, and federal court rulings; and periodically retrains using active learning loops, feedback from a human examiner, and aggregated user behavior data to enhance future decision quality (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)) (Epstein: Pgs. 1-3).
As per Claim 19, USPTO and Epstein disclose wherein a computer vision and a machine learning subsystem to authenticate submitted trademark specimens, using: an image processing engine to receive, parse, and inspect photographic and graphical evidence submitted with trademark filings, a manipulation detection algorithm trained to identify artifacts of digital alteration comprising layering, lassoing, pixel duplication, and AI- generated text and graphics indicative of forgery, an intent inference model to evaluate contextual metadata and semantic alignment between the specimen and the goods and services claimed, and an automated classification output to flag suspicious filings for review, provide automated rejection with explanation, and clear authentic submissions for continued processing (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1202.17(b)(ii), Marks Displaying an Unusual Depiction of a Universal Symbol; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)) (Epstein: Pgs. 1-3).
As per Claim 20, USPTO and Epstein disclose automatically drafting a proposed legal argument in issue, rule, application, and conclusion format to support a position on rejection of the first keyword with at least one of the confusingly similar trademarks in the trademark registry based on the DuPont factors, and the dilution of the famous trademark (USPTO: See at least TMEP 704, Initial Examination; TMEP 705, The Examining Attorney’s Letter or Action; TMEP 1207.01, Likelihood of Confusion; TMEP 1207.01(b)(iii), Comparing Marks That Contain Additional Matter; See also TMEP 1207.01(b)(x), and TMEP 1207.01(d)(x)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the PTO-892 Notice of References Cited. The Examiner suggests the applicant review all of these documents before submitting any amendments, especially the following:
Adibowo (US 2019/0279073 A1) – Discloses a system, method, and computer program product embodiments for generating a patentability metric and training a patentability model. In an embodiment, a patent analysis system generates and updates a patentability model. The patentability model utilizes vectorized patent publication data and public corpus data to generate a function for predicting the likelihood of patent grant (See at least Abstract; Para 0016, “The patent analysis system may allow for an objective evaluation of new idea disclosures as well as increasing the breadth of review of published information. In this manner, the patent analysis system may generate an analysis without human search or analysis of existing publications. The particular processes described may yield a faster evaluation of new idea disclosures due to fewer processing steps needed to evaluate existing public information. The utilization of a patentability may provide increased processing speeds when evaluating new ideas and may utilize fewer computer resources during the evaluation.”; Para 0024, “After the generation of a patentability model, patent analysis system 110 may utilize the patentability model to evaluate received idea disclosures. In an embodiment, submission client 180 may submit an idea disclosure to idea disclosure database 170. Submission client 180 may be a computing device, such as, for example, a desktop computer, a laptop computer, a mobile phone, a tablet device, and/or other computing devices capable of word processing and/or image generation. In an embodiment, submission client 180 may be an Internet browser and/or a graphical user interface capable of receiving text and/or image data. Using submission client 180, users may formulate idea disclosures and/or submit files containing idea disclosures to idea disclosure database 170 and/or patent analysis system 110.”)
Marciano (Marciano, Jonathan, "Automating The Law: A Landscape of Legal AI Solutions," TOPBOTS, 20170610.) – See at least Pgs.2-4, Intellectual Property, TrademarkNow, “According to lawyers for IBM, using AI has cut the total time their lawyers spent analyzing trademark search results by at least 50%. This includes algorithms which try to model the outcome of trademark litigation by analyzing a wide variety of factors.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN P OUELLETTE whose telephone number is (571)272-6807. The examiner can normally be reached on M-F 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynda C Jasmin, can be reached at telephone number (571) 272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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September 17, 2026
/JONATHAN P OUELLETTE/Primary Examiner, Art Unit 3629
