UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

SUPPLEMENTAL 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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 2/8/2017

 

This office action supplements the previously issued office action to address issues with the identification of goods. 

 

Please note that the reference to “solar panels for the storage of solar energy” is unclear.  Please clarify if the solar panels actually store energy and if a battery is used in connection with the panels to storage energy.  Further, “Watches with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Jewelry, namely, wrist bands with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Bracelets with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Rings with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Earrings with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Necklaces with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Precious metals with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users” are unclear and therefore considered indefinite.  As stated in the original office action the function of the goods should be clearly identified.  For instance, the applicant may consider “with the functions to measure, analyze, store, and transmit data relating to physiology, body, and activity of the users”.  Moreover, the function of the goods appears to be akin to a wearable activity tracker in class 009.  In addition, it is uncertain how a “precious metal” can operate as a wearable activity tracker.  It appears that this is claimed incorrectly.  The applicant appears to have intentionally classified the goods in class 014.  If the undersigned analysis requires supplementation, please provide your rationale for classification in class 014.  Also, the applicant’s claim of “Watches that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks” appears to be akin to a “smart watch” in class 009.  Finally, “wearable digital electronic devices” are considered indefinite and replaced with smartwatches and wearable trackable devices. 

 

Summary of Issues Below:

(1)  Amend the identification of goods/services

(2)  Dual filing basis;  foreign registration required

Identification of Goods/Services

 

Applicant’s description of goods/services is unacceptable because it is indefinite.  §1402.1. 

 

Applicant’s Original Identification Of Goods/Services

 

Class 009:  Solar cells; Solar panels for production of electricity; Solar modules; Solar cell plates; Solar cell panels; Batteries; Solar energy storage devices; Electric control devices for energy management; Apparatus for measuring electric energy consumption; Electricity controller for managing electricity energy; Energy storage apparatus comprised of batteries; Energy storage system for domestic use; Measuring and control devices for air conditioning technology; Automatic heat control apparatus, namely, thermostats; Electronic control apparatus for managing and optimizing energy loads within a building; Optical film for display; Optical film for lighting regulators; Computer software used to protect and back up computer files, and to recover and restore deleted and overwritten files; Cameras for personal computer (PC); Voice recorders; TV cable for mobile phone; Stereo ear mike for mobile phone; LED diode cluster lamps; Wafer level package; Remote controllers for washing machines; Wireless cameras; Computer software for virtual reality game; Wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; Head-mounted video display apparatus

 

Class 011:  Electric fan; Electric pressure cooker, Electric rice cooker; Electric massage chair for household purposes; Electric massage apparatus for household use; Electric clothing management machines having the functions of deodorizing, sterilizing and steaming garments for household purposes.

 

 

Class 014:  Smart watches; Watches; Wristwatches; Watches with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Jewelry, namely, wrist bands with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Bracelets with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Rings with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Earrings with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Necklaces with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Precious metals with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Watches that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; Watch chains; Watch bands; Electronic clocks and watches; Parts for watches; Necklaces; Bracelets; key rings of precious metal; Rings.

Applicant’s Current Identification Of Goods/Services

Class 009:  (Based on 44(d) Priority Application) (Based on Intent to Use) Solar cells; Solar panels for production of electricity; Photovoltaic solar modules for production of electricity; Solar cell plates; Solar cell panels; Batteries; Solar energy storage devices, namely, solar panels for the storage of solar energy; Electric control devices for energy management; Apparatus for measuring electric energy consumption, namely, watt-hour meters; Electricity controller for managing electricity energy; Energy storage apparatus comprised of batteries; Energy storage system for domestic use comprised primarily of batteries and ultra capacitor, and photovoltaic modules; Measuring and control devices for air conditioning technology; Automatic heat control apparatus, namely, thermostats; Electronic control apparatus, namely, electronic controllers for use with power converters and power controllers for managing and optimizing energy loads within a building; Optical film for display, namely, polarizing film and retardation film; Optical film for lighting regulators; Computer software used to protect and back up computer files, and to recover and restore deleted and overwritten files; Cameras for personal computer (PC); Digital voice recorders; TV cable for mobile phone; Stereo ear mike for mobile phone; Wafer level package comprising solar wafers; Remote controllers for washing machines; Wireless cameras; Computer software for virtual reality game; Wearable telecommunication devices in the nature of smartphones, smart watches, and tablet computers for the wireless receipt, storage and/or transmission of data and messages; Head-mounted video display apparatus; Smart watches; Smart watches with the functions to measure, analyze, store and transmit data relating to physiology/body/activity of the users; Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information

Class 010:  Electric massage chair for household purposes; Electric massage apparatus for household use

 

Class 011:  Electric massage chair for household purposes; Electric massage apparatus for household use

 

Class 014:  Watches; Wristwatches; Watches with the functions to measure, analyze, store and transmit data relating to physiology/body/activity of the users; Jewelry, namely, wrist bands with the functions to measure, analyze, store and transmit data relating to physiology/body/activity of the users; Bracelets with the functions to measure, analyze, store and transmit data relating to physiology/body/activity of the users; Rings with the functions to measure, analyze, store and transmit data relating to physiology/body/activity of the users; Earrings with the functions to measure, analyze, store and transmit data relating to physiology/body/activity of the users; Necklaces with the functions to measure, analyze, store and transmit data relating to physiology/body/activity of the users; Precious metals with the functions to measure, analyze, store and transmit data relating to physiology/body/activity of the users; Watches that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; Watch chains; Watch bands; Electronic clocks and watches; Parts for watches; Necklaces; Bracelets; key rings of precious metal; Rings

 

Applicant must clarify the identification of goods/services as follows:  See TMEP §1402.01.

 

 

(1)  Please note that the reference to “solar panels for the storage of solar energy” is unclear.  Please clarify if the solar panels actually store energy and if a battery is used in connection with the panels to storage energy. 

(2)  Further, “Watches with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Jewelry, namely, wrist bands with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Bracelets with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Rings with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Earrings with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Necklaces with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users; Precious metals with the functions to measure/analyze/storage/transmit data relating to physiology/body/activity of the users” are unclear and therefore considered indefinite.  As stated in the original office action the function of the goods should be clearly identified.  For instance, the applicant may consider “with the functions to measure, analyze, store, and transmit data relating to physiology, body, and activity of the users”. 

(3)  Moreover, the function of the goods appears to be akin to a wearable activity tracker in class 009.  Finally, it is uncertain how a “precious metal” can operate as a wearable activity tracker.  It appears that this is claimed incorrectly.  The applicant appears to have intentionally classified the goods in class 014.  If the undersigned analysis requires supplementation, please provide your rationale for classification in class 014. 

(4)  The applicant’s claim of “Watches that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks” appears to be akin to a “smart watch” in class 009

(5)  “Wearable digital electronic devices” recently have been deemed indefinite by the amendment to the Nice Classification.  Please note that smartwatches was added as well as wearable activity trackers; both in class 009

 

Suggested Acceptable Identification Of Goods/Services

 

Applicant is encouraged to adopt the suggested language, if accurate. 

 

Class 009:  (Based on 44(d) Priority Application) (Based on Intent to Use) Solar cells; Solar panels for production of electricity; Photovoltaic solar modules for production of electricity; Solar cell plates; Solar cell panels; Batteries; Solar energy storage devices, namely, solar panels comprised of solar panels for the production of electricity and a solar battery used for the storage of solar energy; Electric control devices for energy management; Apparatus for measuring electric energy consumption, namely, watt-hour meters; Electricity controller for managing electricity energy; Energy storage apparatus comprised of batteries; Energy storage system for domestic use comprised primarily of batteries and ultra capacitor, and photovoltaic modules; Measuring and control devices for air conditioning technology; Automatic heat control apparatus, namely, thermostats; Electronic control apparatus, namely, electronic controllers for use with power converters and power controllers for managing and optimizing energy loads within a building; Optical film for display, namely, polarizing film and retardation film; Optical film for lighting regulators; Computer software used to protect and back up computer files, and to recover and restore deleted and overwritten files; Cameras for personal computer (PC); Digital voice recorders; TV cable for mobile phone; Stereo ear mike for mobile phone; Wafer level package comprising solar wafers; Remote controllers for washing machines; Wireless cameras; Computer software for virtual reality game; Wearable telecommunication devices in the nature of smartphones, smart watches, and tablet computers for the wireless receipt, storage and/or transmission of data and messages; Head-mounted video display apparatus; Smart watches; Smart watches that function to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information; Watches that function to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Jewelry, namely, wrist bands that function to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Bracelets that function to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Rings that function to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Earrings that function to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Necklaces that function to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Wearable activity tracker that includes precious metals that function to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; SmartwatchesWatches that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers;  smartwatch comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers

Class 010:  Electric massage chair for household purposes; Electric massage apparatus for household use

 

Class 011:  Electric massage chair for household purposes; Electric massage apparatus for household use

 

Class 014:  Watches; Wristwatches; Watches with the functions to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Jewelry, namely, wrist bands with the functions to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Bracelets with the functions to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Rings with the functions to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Earrings with the functions to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Necklaces with the functions to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Precious metals with the functions to measure, analyze, store and transmit data relating to the physiology, body, and activity of the users; Watches that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; Watch chains; Watch bands; Electronic clocks and watches; Parts for watches; Necklaces; Bracelets; key rings of precious metal; Rings

 

Please Review The ID Manual For Guidance

 

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.

 

Scope Advisory

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

Applicant Has Applied With A 1(b) and 44(d) Filing Basis

 

It is noted that the applicant currently intends to rely on the 44d priority and the 1b filing bases, but reserves the right to perfect the filing if the foreign registration matures. 

 

 

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

/Nakia D. Henry/

Trademark Attorney | Law Office 117

P:  (571) 272-7208

F:  (571) 273-7208

E-mail:  nakia.henry@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/8/2017 FOR U.S. APPLICATION SERIAL NO. 86953560

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 2/8/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.