Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Owner’s Trademark Registration

OFFICE ACTION

The USPTO must receive the owner’s response to this letter within the time period specified below.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears below.

Issue date:  February 18, 2020

Status

Your response to the outstanding Office action regarding the Sections 8 & 15 Combined Affidavit was timely received on January 15, 2020.

Upon review of your response, the following issues remain:

·       Requirements for Audit Not Satisfied

Requirements for Audit Not Satisfied

As part of the audit to assess and promote the accuracy and integrity of the trademark register as to the actual use of the mark with the goods identified in the registration, the owner/holder of the registration was required to submit proof of use for two additional goods per class.  37 C.F.R. §§2.161(h), 7.37(h).  Although the owner/holder submitted a response to the Office action, the owner/holder included a request to delete some or all of the goods inquired about as part of the audit.

Specifically, you have established acceptable proof of use for: “electrical controllers, electronic controllers; electrical controls and remote controls for the management of fire, smoke, burglar, intrusion, access control and gas detection systems, building environmental control management, lighting, appliance, and home entertainment equipment; and video players.” 

However, acceptable proof has not been established for the other audited goods.

As the owner/holder has not satisfied the requirements of the audit, the owner/holder must verify the accuracy of the claim of use in the affidavit of use by providing proof of use for all the remaining goods in the registration without acceptable proof of use.  Id.

Therefore, the owner/holder must submit the following:

(1)   Proof of current use of the registered mark in commerce for the following goods:

“Burglar and security alarms;

fire, smoke and gas detecting alarms;

fire, smoke, and gas detectors;

intrusion detectors, namely, gate, door and window position sensors, gate, door and window contact sensors, motion sensors, door and window glass break sensors, and panic buttons;

electronic apparatus namely, motion detectors;

electric switches, electric relays, magnetic contacts;

glass break detectors in the nature of electric sensors;

electric and electronic, wired and wireless sensors, switches, scanners, transmitters for the processing of electrical and digital signals and data to audio and video receivers for use in monitoring and controlling security system equipment, access controls, and environmental conditions;

battery chargers;

fire, smoke, burglar, intrusion, access control, and gas detection system control panels;

remote control transmitters for radio-controlled devices and radio receivers for remote controls;

video surveillance equipment namely, cameras, digital cameras, network cameras and web cameras, combination video recorders, and network video products in the nature of network video computer servers, network video recorders, network video decoders, network video encoders;

IP-cameras, namely, cameras capable of transmitting data and video via Internet Protocols;

audio recorders, video recorders, video monitors, video management systems comprised of IP cameras, integrated pan-tilt-zoom cameras, camera positioning units especially adapted for fitting cameras in the nature of pan and tilt devices for cameras to allow for positioning by a remote operator, remote video controllers, video recorders, keyboards, electronic switchers for video signals, receivers, and video transmission devices sold as part of a system for operating closed circuit cameras;

component parts of cameras, namely, camera enclosures, housings, assemblies, and mounts;

camera lenses, namely, auto iris lenses, optical zoom lenses, digital zoom lenses;

camera displays being video screens;

digital audio players; electronic visitor management system comprising computer hardware, scanner, camera, printer and software which creates identification badges, records entry and exit of visitors, employees and packages, specifies whether visitors require escort, records who picks up packages, and identifies who is allowed access to a building;

access control security systems comprising computer hardware and software for use in controlling access to facilities and areas by control of gates, doors and windows;

computer keypads;

radio frequency proximity readers being readers radio frequency identification credentials for electronic access control systems;

biometric identification apparatus;

radio frequency identification tags;

electronic door openers;

electronic card readers, magnetic encoded card readers, and smart card readers;

computer software for use in video surveillance or close circuit television systems, namely, cameras and sensors which capture, receive, store, manage and distribute data for the purpose of analysis, reporting and retrieval;

computer software for use in sending alarm notification to on-site and remote management facilities;

computer software for the control of alarms and security, fire, and gas detection systems;

computer management software for use in security and surveillance systems;

computer hardware, communications hardware and computer software, for management, automation and monitoring of electronic sensors of physical activity, physical premises security systems, video cameras, environmental sensors, HVAC systems, home entertainment devices and home electronic devices;

electronic visitor management software which creates identification badges, records entry and exit of visitors, employees and packages, specifies whether visitors require escort, records who picks up packages, identifies who is allowed access to a building; audio amplifiers, receivers, tuners, equalizers, audio compressors, audio mixing consoles;

audio speakers;

electrical volume controls;

attenuators;

warning devices, namely, bells, gongs, electric warning lights, sirens and voice sirens;

emergency position-indicating sound radio beacons and safety beacon lights for use as a directional guide along stairways and escape routes in fire and emergency situations“ in International Class 9; and

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The owner/holder was using the mark in commerce on or in connection with the goods identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.”  37 C.F.R. §§2.161(h), 7.37(h).

Additionally, you must identify the corresponding goods supported by each item submitted as proof of use.  See id. 

Examples of proof of use.  Electronic proof of use may be an actual image, such as a photograph, scanned copy, or screen capture, of the physical item. Acceptable proof of use for goods includes the mark shown on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Tags or labels must be shown affixed to the goods or must consist of actual tags or labels that identify the specific goods on which they are used and include informational matter that typically appears on a tag or label in use in commerce for these types of goods.  Similarly, a package must show or identify the goods therein.  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.    

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).

Form Declaration

Please note that the below statement verifying proof of use is slightly different than the standard substitute specimen statement.

The following statement and declaration under 37 C.F.R. §2.20 can be used to verify the use of the mark as evidenced by the submitted item(s) showing proof of use, if properly signed and dated:

The owner/holder was using the mark in commerce on or in connection with the goods identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use and specimen(s), during the relevant period for filing the affidavit of use.

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

__________________________

Signature of Authorized Person

__________________________

Type or Print Name

__________________________

Date

WARNING:  If the owner/holder responds with unacceptable proof of use for any goods queried, the Office will delete these goods from the registration.

Detailed information regarding the audit program is provided on the following webpage – http://www.gov.uspto.report/trademarks-maintaining-trademark-registration/post-registration-audit-program.

RESPONSE TIME DEADLINE:  A complete response must be received within 6 months from the issuance date of this Office action.  The owner must respond to all inquiries set forth in this Office action to avoid cancellation of the registration.  If a response is not received, the registration will be cancelled in its entirety.  37 C.F.R. §2.163(b)-(c); TMEP §1604.16.

How to respond.  Click to file a Response to Post-Registration Office action. 

Direct questions about this Office action to the Post Registration staff member below.

Cameron McBride

/Cameron McBride/

Examining Attorney - Trademarks

Law Office 106

(571) 272-0542

Cameron.McBride@uspto.gov

RESPONSE GUIDANCE

• Response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an owner’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted or processed.  If the owner does not have an attorney, the response must be signed by the individual owner, all joint owners, or someone with legal authority to bind a juristic owner.  If the owner has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.