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.  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: 2/16/2017

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, applicant must respond to the requirement below.

 

IDENTIFICATION OF SERVICES AMENDMENT REQUIRED

 

The wording “on-line downloadable software or computer applications for remotely activating and checking the operative status of electrical and electronic controllers and monitors that control and monitor home electric powered devices, namely, baby monitors, AV media systems, HVAC systems, lighting, water systems, security systems, notification systems, alarms, intrusion alarms, motion sensors, electrically activated door locks, automatic sprinkler systems, motorized window treatments, electric pet doors, home and kitchen appliances, switches and devices” and “on-line downloadable software or computer applications for recording, viewing, storing, sharing, organizing and analyzing metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data” is too broad and could include goods and services in classes other than International Class 42. See TMEP §§1402.01, 1402.03. Downloadable software is considered a good classified in International Class 9. The wording “on-line downloadable software” may also refer to the fact that applicant offers online retail store services featuring downloadable software, which is a service classified in International Class 35.

 

Applicant may adopt the following identification of services, if accurate:

 

Class 42: Providing a website for electronic storage of metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; providing a website featuring technology that enables users to remotely view, monitor, program, operate, maintain, manage, review and control large and small appliances, electrical systems, automation systems, monitoring systems, security sensors and systems and camera systems in homes; providing a website featuring technology that enables users to record, view, share, organize and analyze metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; hosting an online website for others featuring digital content and images, namely, metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; hosting of digital content and digital images, namely, metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data on the Internet; providing online non-downloadable software for recording, viewing, storing, sharing, organizing and analyzing metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; peer-to-browser video, audio, text, images, messages, documents, e-mail, photo, environmental data and other electronic data sharing services, namely, providing a website featuring technology enabling users to upload, view, and download video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; peer-to-peer video, audio, text, images, messages, documents, e-mail, photo, environmental data and other electronic data sharing services, namely, providing a website featuring technology enabling users to upload, view, and download video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; computer services, namely, cloud hosting provider services; electronic monitoring and reporting of residential home security and environmental conditions using computers or sensors; providing temporary use of on-line non-downloadable cloud computing software for recording, viewing, storing, sharing, organizing and analyzing metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; providing temporary use of on-line non-downloadable cloud computing software that enables users to remotely view, monitor, program, operate, maintain, manage, review and control large and small appliances, electrical systems, automation systems, monitoring systems, security sensors and systems and camera systems in homes; providing on-line non-downloadable software or computer applications for remotely activating and checking the operative status of electrical and electronic controllers and monitors that control and monitor home electric powered devices, namely, baby monitors, AV media systems, HVAC systems, lighting, water systems, security systems, notification systems, alarms, intrusion alarms, motion sensors, electrically activated door locks, automatic sprinkler systems, motorized window treatments, electric pet doors, home and kitchen appliances, switches and devices; providing on-line non-downloadable software or computer applications for recording, viewing, storing, sharing, organizing and analyzing metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; design and development of computer software for cloud storage of metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data; design and development of computer software for cloud based remote viewing, monitoring, programming, operation, maintenance, management, review and control of large and small appliances, electrical systems, automation systems, monitoring systems, security sensors and systems and camera systems in homes; cloud computing featuring software for use in remotely viewing, monitoring, programming, operating, maintaining, managing, reviewing and controlling large and small appliances, electrical systems, automation systems, monitoring systems, security sensors and systems and camera systems in homes; cloud computing featuring software for use in recording, viewing, storing, sharing, organizing and analyzing metadata, video, audio, text, images, messages, documents, e-mail, photographs, environmental data and other electronic data

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

Applicant submitted a fee with the application sufficient for only one international class of services; however, since some of the wording in applicant’s identification is too broad, the application may include goods and services classified in more than one international class. Therefore, in response to the requirement that applicant amend its identification of services, applicant must either (1) restrict the amended identification to one class (i.e., the number of classes covered by the fee already paid), or, if classes must be added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (applicant may confirm the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

RESPONSE REQUIRED

 

For this application to proceed further, applicant must explicitly address the requirement raised in this Office action by setting forth in writing the required changes. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

TO RESPOND TO THIS LETTER: Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. Instead, go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to file a formal response. 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. All informal communications relevant to this application will be placed in the official application record.

 

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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. 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), 2.23(c); TMEP §820.04. However, in certain situations, 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.  

 

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 2/16/2017 FOR U.S. APPLICATION SERIAL NO. 87268685

 

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 2/16/2017 (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.