TTAB Affirms Refusal of PARKAI Application for Failed Response to Rule 2.61(b) Request for Information

In this application to register the proposed mark PARKAI for parking meters, parking lot services, and monitoring of parking, the USPTO refused registration on the ground of mere descriptiveness and, as to some of the class 9 goods, indefiniteness of the identification. Examining Attorney Drew Ciurpita also requested information and documentation regarding the goods and services, under Rule 2.61(b). The Board affirmed the last refusal due to Applicant MPS's "failure to respond adequately" to that request. In re Municipal Parking Services, Inc., Serial No. 98187940 (November 5, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Under Rule 2.61(b), "[t]he Office may require the applicant to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the application."

The Board found that the Examining Attorney's requests for information were reasonably necessary to the proper examination of the application because (1) the information is directly relevant to whether the wording [PARK] in the proposed mark . . . is merely descriptive of the goods and services identified in the application," and (2) because "the Examining Attorney’s questions regarding the possible use of artificial intelligence properly sought information that is directly relevant to whether the initialism AI in the proposed mark . . . is merely descriptive of the goods and services identified in the application."

The question, then, was whether Applicant MPS complied with the requests “fully and in good faith.” DTI P’Ship, 2003 WL 22169270, at *3 n.3.

MPS argued that it filed the application based on intent to use and therefore did not possess the requested information. The Board pointed out, however, that "[i]ntent-to-use applicants are not exempted from responding to information requests simply because use of the proposed mark has not yet commenced." SICPA Holding, 2021 WL 2374679, at *1 n.1. "To the contrary . . . information requests are especially useful where, as here, an 'application is based on intent-to-use' and the identifications of goods and services are 'technical in nature.' DTI P’Ship, 2003 WL 22169270, at *3 n.3."

The Board took judicial notice of MPS's ownership of a registration for mark SENTRY for the same goods and services as identified in classes 9 and 39 here, in which it claimed a first use date in 2014.

Applicant cannot possibly have no “[f]actual information about the [Class 9] goods [including] how they operate, salient features, and prospective customers and channels of trade,” no “factual information [including] what the [Class 39] services are and how they are rendered, salient features, and prospective customers and channels of trade,” and no documents reflecting those goods and services.

As to MPS's "highly technical" class 42 and 45 services, all of which are described as "using computers or sensors," MPS stressed its bona fide intent regarding those services  The Board found it "simply impossible to believe that Applicant has no 'factual information [including] what the . . . services are and how they are rendered, salient features, and prospective customers and channels of trade,' and no documents reflecting those services."

Applicant’s suggestion that it does not understand what is meant by the letters “AI” is disingenuous at best in view of the current ubiquitous use of “AI” in American English. *** At a minimum, it is self-evident that Applicant itself knows what it means by the letters “AI” in its mark, but it did not provide even that information to the Examining Attorney.

And so, finding that MPS "failed to respond fully and in good faith to the Examining Attorney’s information requests," the Board affirmed the refusal under Rule 2.61(b) and declined to reach the other two refusals.

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TTABlogger comment: Was MPS's claim of lack of intelligence artificial?

Text Copyright John L. Welch 2025.