| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85809359 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK FILE NAME | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85809359 |
| LITERAL ELEMENT | IROBOT |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the stylized word IROBOT. |
| ARGUMENT(S) | |
|
AMENDMENT AND RESPONSE TO OFFICE ACTION In response to the communication from the Examining Attorney dated April 9, 2013, (the "Office Action"), regarding the referenced matter, Applicant submits this Amendment and Response. Identification of Goods The Examining Attorney has objected to portions of the identification of goods as indefinite. Applicant respectfully disagrees, and addresses each issue, in turn, below. (1) First, the Examining Attorney has requested further specificity for the wording "machines utilizing paper, fabric or cloth wipes and pads," requesting that applicant indicate the purpose or function of these machines. In response, Applicant notes that such wording is one of the clauses after "automatic machines for use in the field of interior maintenance of households and commercial buildings, namely…" Therefore, anything that comes after "namely" is further defining the types of machines being used in interior maintenance of households and commercial buildings. Accordingly, Applicant respectfully submits that the purpose or function of the "machines utilizing paper…" is already specified. (2) Second, the Examining Attorney has requested further specificity for "replacement parts and accessories for automatic swimming pool cleaning devices, namely, storage carts, filter bags, and roller brushes" in the identification of goods. Applicant respectfully disagrees, however. As demonstrated in the Acceptable Identification of Goods and Services Manual (the "ID Manual"), there are numerous examples of replacement parts and accessories being classified in the same class as the items (usually the type of machine) they are used with. Also, these examples in the ID Manual show that such replacement parts do not need to be "sold as a unit" with the machines they are for. Pages from the ID Manual are attached hereto as evidence. Accordingly, Applicant respectfully submits that it does not need to include "sold as a unit" language in its identification of goods. In addition, Applicant submits that it has previously registered a mark, using this exact wording that the Examining Attorney is objecting to in this case. Specifically, in connection with Applicant’s VERRO mark (Reg. No. 3540912), Applicant’s identification of goods is "automatic swimming pool cleaning devices, namely, pool cleaning robots; replacement parts and accessories for automatic swimming pool cleaning devices, namely, storage carts, filter bags, and roller brushes." See page from USPTO TESS database attached hereto as evidence. Applicant would like to maintain consistency among the identifications of goods in its registrations. (3) The Examining Attorney also has asked for further specificity for certain references to computer hardware and software in the application. For example, she has suggested the following amendment: "computer hardware and software for (applicant must indicate the specific function of the software, i.e. for use in viewing and controlling a guidance system) for use in connection with remote controlled land vehicles, namely, automatic guided vehicles, remote controlled all-terrain vehicles, and armored vehicles." Applicant respectfully submits that the purpose or function of the software is sufficiently stated, and in support, notes that the identification "[c]omputer hardware and software for use in connection with remote controlled land vehicles, namely, automatic guided vehicles, remote controlled all-terrain vehicles, and armored vehicles," was registered in Applicant’s prior registration for the mark AWAREHEAD (Reg. No. 4161784). Pages from USPTO TESS database are attached hereto as evidence. (4) In addition, the Examining Attorney has asked for further specificity for portions of the wording "mobile robotic system comprised primarily of robots, operating software, cameras, communication systems, sensors, computers for personal human use; computer hardware and software for use in connection with a robot; mobile computers and communication devices for use with robots." Applicant respectfully disagrees, believing this wording to be sufficiently definite. For example, as demonstrated in the ID Manual, "robots for personal use" is acceptable on its own. Therefore, certainly a "mobile robotic system" with all of the primary components fully specified and further indicated to be "for personal human use" is also acceptable. Applicant submits that its identification is more specific than what is found in the ID Manual. In addition, Applicant submits that this same identification has already been approved and "Allowed" in its application for the mark AVA (Serial No. 85200480). See pages from USPTO TESS database attached hereto as evidence. Applicant would like to maintain consistency among its registrations. In sum, Applicant submits that no amendments are necessary, as the ID Manual and Applicant’s prior registrations and allowed application demonstrate that the current identification is sufficiently definite. Accordingly, Applicant requests that the Examining Attorney reconsider her request. Claims of Prior Registrations Applicant is the owner of U.S. Registration Nos. 1070405, 3078786, 3738754 and others. CONCLUSION Having responded fully to the Office Action, Applicant respectfully submits that the application is in condition for publication and registration, and hereby requests such actions. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_38979799-205214766_._ID_Manual_replacment_parts.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\858\093\85809359\xml5\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\858\093\85809359\xml5\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_38979799-205214766_._VERRO_TESS_Record.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\858\093\85809359\xml5\ROA0004.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\858\093\85809359\xml5\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_38979799-205214766_._AWAREHEAD_TESS_record.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\858\093\85809359\xml5\ROA0006.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\858\093\85809359\xml5\ROA0007.JPG | |
| ORIGINAL PDF FILE | evi_38979799-205214766_._AVA_TESS_record.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\858\093\85809359\xml5\ROA0008.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\858\093\85809359\xml5\ROA0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Pages from USPTO ID Manual; pages from USPTO TESS database |
| ADDITIONAL STATEMENTS SECTION | |
| ACTIVE PRIOR REGISTRATION(S) | The applicant claims ownership of U.S. Registration Number(s) 1070405, 3078786, 3738754, and others. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Elizabeth A. Walker/ |
| SIGNATORY'S NAME | Elizabeth A. Walker |
| SIGNATORY'S POSITION | Attorney of record, Massachusetts bar member |
| SIGNATORY'S PHONE NUMBER | 617-248-5000 |
| DATE SIGNED | 10/09/2013 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Oct 09 21:03:27 EDT 2013 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XX-201 31009210327451096-8580935 9-500127687a7f0a133e7cda9 5ebd24965a923cc86bcba32a5 530d018bc332385-N/A-N/A-2 0131009205214766910 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
AMENDMENT AND RESPONSE TO OFFICE ACTION
In response to the communication from the Examining Attorney dated April 9, 2013, (the "Office Action"), regarding the referenced matter, Applicant submits this Amendment and Response.
Identification of Goods
The Examining Attorney has objected to portions of the identification of goods as indefinite. Applicant respectfully disagrees, and addresses each issue, in turn, below.
(1) First, the Examining Attorney has requested further specificity for the wording "machines utilizing paper, fabric or cloth wipes and pads," requesting that applicant indicate the purpose or function of these machines.
In response, Applicant notes that such wording is one of the clauses after "automatic machines for use in the field of interior maintenance of households and commercial buildings, namely…" Therefore, anything that comes after "namely" is further defining the types of machines being used in interior maintenance of households and commercial buildings. Accordingly, Applicant respectfully submits that the purpose or function of the "machines utilizing paper…" is already specified.
(2) Second, the Examining Attorney has requested further specificity for "replacement parts and accessories for automatic swimming pool cleaning devices, namely, storage carts, filter bags, and roller brushes" in the identification of goods.
Applicant respectfully disagrees, however. As demonstrated in the Acceptable Identification of Goods and Services Manual (the "ID Manual"), there are numerous examples of replacement parts and accessories being classified in the same class as the items (usually the type of machine) they are used with. Also, these examples in the ID Manual show that such replacement parts do not need to be "sold as a unit" with the machines they are for. Pages from the ID Manual are attached hereto as evidence. Accordingly, Applicant respectfully submits that it does not need to include "sold as a unit" language in its identification of goods. In addition, Applicant submits that it has previously registered a mark, using this exact wording that the Examining Attorney is objecting to in this case. Specifically, in connection with Applicant’s VERRO mark (Reg. No. 3540912), Applicant’s identification of goods is "automatic swimming pool cleaning devices, namely, pool cleaning robots; replacement parts and accessories for automatic swimming pool cleaning devices, namely, storage carts, filter bags, and roller brushes." See page from USPTO TESS database attached hereto as evidence. Applicant would like to maintain consistency among the identifications of goods in its registrations.
(3) The Examining Attorney also has asked for further specificity for certain references to computer hardware and software in the application. For example, she has suggested the following amendment: "computer hardware and software for (applicant must indicate the specific function of the software, i.e. for use in viewing and controlling a guidance system) for use in connection with remote controlled land vehicles, namely, automatic guided vehicles, remote controlled all-terrain vehicles, and armored vehicles." Applicant respectfully submits that the purpose or function of the software is sufficiently stated, and in support, notes that the identification "[c]omputer hardware and software for use in connection with remote controlled land vehicles, namely, automatic guided vehicles, remote controlled all-terrain vehicles, and armored vehicles," was registered in Applicant’s prior registration for the mark AWAREHEAD (Reg. No. 4161784). Pages from USPTO TESS database are attached hereto as evidence.
(4) In addition, the Examining Attorney has asked for further specificity for portions of the wording "mobile robotic system comprised primarily of robots, operating software, cameras, communication systems, sensors, computers for personal human use; computer hardware and software for use in connection with a robot; mobile computers and communication devices for use with robots." Applicant respectfully disagrees, believing this wording to be sufficiently definite. For example, as demonstrated in the ID Manual, "robots for personal use" is acceptable on its own. Therefore, certainly a "mobile robotic system" with all of the primary components fully specified and further indicated to be "for personal human use" is also acceptable. Applicant submits that its identification is more specific than what is found in the ID Manual.
In addition, Applicant submits that this same identification has already been approved and "Allowed" in its application for the mark AVA (Serial No. 85200480). See pages from USPTO TESS database attached hereto as evidence. Applicant would like to maintain consistency among its registrations.
In sum, Applicant submits that no amendments are necessary, as the ID Manual and Applicant’s prior registrations and allowed application demonstrate that the current identification is sufficiently definite. Accordingly, Applicant requests that the Examining Attorney reconsider her request.
Claims of Prior Registrations
Applicant is the owner of U.S. Registration Nos. 1070405, 3078786, 3738754 and others.
CONCLUSION
Having responded fully to the Office Action, Applicant respectfully submits that the application is in condition for publication and registration, and hereby requests such actions.
