UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 9/9/2011

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on August 22, 2011.  Applicant’s amended identification is made of record, but certain items in International Class 9 remain indefinite.  Applicant did not address the claim of additional prior registrations.  Therefore, the requirements for a complete claim of prior registrations and for a definite identifications are continued and made FINAL.

 

Prior Registrations

In addition to the registration claimed in the initial application, U.S. Reg. No. 0948849, if applicant is the owner of U.S. Registration Nos. 1142284, 1626714, 1624490, and 2271954, which were sent with the initial Office Action, then applicant must submit a claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 0948849, 1142284, 1626714, and others.

 

 

 

Identification of Goods – International Class 9

The identification of goods in International Class 9 needs clarification in several respects.  First, the wording “control interfaces, namely RS 232 interfaces, contact closure interfaces, timeclock and programmer interfaces, infrared interfaces, telephone interfaces, and zero to ten volt interfaces, all for use to allow systems to communicate and interact,” in International Class 9 in the identification of goods is indefinite and must be clarified because it is unclear as to the type of “interfaces” and it is unclear as to the type of “systems” there are used with.  See TMEP §1402.01.  If these are electrical control interfaces, then applicant should so state.  Additionally, if these are used with lighting systems, this should also be made clear.

 

Second, applicant must clarify the wording “fluorescent ballast modules, namely, an interface that allows fluorescent ballasts on different protocols to communicate,” in International Class 9 in the identification of goods by indicating that the goods are for use with fluorescent lighting ballasts.  See TMEP §1402.01.

 

Third, applicant must clarify the identification of goods in International Class 9 by indicating that it’s “fan speed controls” are electrical in order for the goods to be properly classified in Class 9.  See id.

 

Finally, the wording “processors, namely, residential and commercial lighting systems” in the identification of goods is indefinite and must be amended to list the major parts or components of the system, as well as describe the nature, purpose and use of the system.  Applicant should use common generic terms when specifying the parts or components of the system.  See TMEP §§1401.02(a), 1402.01.

 

The identifications of goods and services in Classes 7, 11, 20, 24, 37, and 42 need not be amended.

 

Applicant may adopt the following identification in International Class 9, if accurate:

 

“Electric lighting controls, namely, dimmers, switches and accessories therefore, namely electrical wall switch plates, electrical receptacles, telephone wall jacks, coaxial cable wall jacks, replacement knobs, namely, electrical rotary and linear slide dimmer knobs; electrical connectors; lamp dimmers, remote controls for controlling lights and accessories therefore, namely, tethers, to hold a remote control for controlling lights and specialty holsters for carrying remote controls for controlling lights; master controls, namely, electronic controllers for electrical dimmers and window shades and screens; electronic transmitters for electrical dimmers and window shades and screens; electronic receivers transmitters for electrical dimmers and window shades and screens; interfaces, namely, electrical load switching interfaces, and electrical load dimming interfaces for incandescent, magnetic low voltage, electronic low voltage, fluorescent, window treatments, and projection screen motors; electrical control interfaces, namely RS 232 interfaces, contact closure interfaces, timeclock and programmer interfaces, infrared interfaces, telephone interfaces, and zero to ten volt interfaces, all for use to allow lighting systems to communicate and interact; occupancy sensors, namely, electronic devices which detect the presence of occupants and control the lighting system accordingly; daylight sensors, photosensors, infrared partition sensors, namely, remote sensors for use in measuring infrared radiation energy waves; light dimming controllers, power boosters, namely, power amplifier; electrical lamp debuzzing coils; transformers; low voltage electrical cables; repeaters for radio frequency signals; infrared repeating kits comprising connector block, namely, electric connectors, infrared receiver and transformer and an infrared emitter; processors, namely, residential and commercial lighting systems comprising [list major components, e.g., light sensors, dimmers, and switches]; computer keypads; power distribution panels; enclosures for lighting controls; power supplies; electrical dimming control panels; electrical switching control panels; electric switching relays; electrical keyswitches; electric control panels; theatrical stage board electrical receptacles; switching modules, namely, independent switching modules and modules within lighting control panels for turning entire circuits on and off; fluorescent dimming ballasts for gas discharge lamps; fluorescent lighting ballast modules, namely, an interface that allows fluorescent ballasts on different protocols to communicate; electrical fan speed controls, namely, to control ceiling fan speeds; electric window treatment and projection screen controls, namely, keypads, contact closure input boards, power supplies, remote controls, transformers, transformer panels, receivers, and integrators for communication between building systems; computer software for the design, integration, installation and management of lighting systems and window treatment systems,” in International Class 9.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Response Guidelines

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

/Matt Einstein/

Matt Einstein

Trademark Examining Attorney

Law Office 115

(571) 272-8251

matt.einstein@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 9/9/2011 FOR

SERIAL NO. 85186654

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 9/9/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.