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: 7/21/2017

 

 

 

 

 

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.  

 

 

 

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

 

 

SEARCH OF OFFICE RECORDS (Advisory)

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).

 

 

 

Applicant should note the issue(s) and requirement(s) set forth below.

 

 

 

IDENTIFICATION AND CLASSIFICATION

Applicant has provided the following identification and classification of goods and/ or services in its application:

 

Class 9:           Smart home dashboard comprised of computer hardware and software used to control electronics in the home; home environment monitor, namely, electric, electronic, or electrochemical oxygen monitors and sensors for environmental use; electronic devices, namely, proactive monitoring system comprising computer software and hardware for actuarial computation; electronic controllers for operating automation devices connected via the internet; home automation and home device integration software; home climate devices and lighting products via wireless networks; home automation control device; software for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, and home monitoring equipment

 

Class 42:          Providing temporary use of online non-downloadable software for controlling home automation systems

 

The wording shown above in bolded text in the identification of goods is unacceptable as indefinite because it is too broad and could include goods in other international classes, specifically, "home climate devices and lighting products via wireless networks; home automation control device"  must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.   

 

Applicant is advised that the class 42 identification is acceptable as written.

 

Applicant may adopt the following identification, if accurate: 

 

Class 9:         

Smart home dashboard comprised of computer hardware and software used to control electronics in the home; home environment monitor, namely, electric, electronic, or electrochemical oxygen monitors and sensors for environmental use; electronic devices, namely, proactive monitoring system comprising computer software and hardware for actuarial computation; electronic controllers for operating automation devices connected via the internet; home automation and home device integration software; home climate devices comprised of [indicate by common commercial name, e.g., digital thermostats] accessible by wireless networks; lighting products, namely, lighting controls and lighting control software accessible by wireless networks; Home automation control device comprised of computer hardware and software for controlling lighting, appliances, heating and air conditioning units, alarms and other safety equipment, and home monitoring equipment; software for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, and home monitoring equipment

 

Class 11:       

Lighting products, namely, electric lighting fixtures

 

Class 42:       

(no change)

 

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to International Class 11.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  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 goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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

 

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must 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(s) already paid (view the USPTO’s current fee schedule at http://www.uspto.gov/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

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

 

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

 

  

CLOSING

If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.

 

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.

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101

United States Patent and Trademark Office

Direct Dial: (571) 272-1658

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.