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: 10/27/2017

 

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 for References – No Conflicting 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).

 

Identification of the Goods and Services

 

The identification of goods and services uses wording that does not comport with office requirements and is indefinite in certain areas. It must be clarified to use the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If they have no common commercial or generic name, applicant must describe the product or services, the main purpose, and the intended uses.  See id.

 

The following language is too indefinite to provide a suggestion for:

 

Class 9:

portable LTE (Long Term Evolution) infrastructure to include portable broadband service, portable cellular site on wheels connected to infrastructure via microwave, satellite or fiber backhaul and aerial platforms to provide incident scene video streaming;

 

Applicant may adopt the following wording, if accurate: 

 

Class 9:           Mobile phones; cell phones; smartphones; smartwatches; tablet computers; wireless headphones; digital media streaming devices boxes; media streaming sticks; car speakerphones; wireless cellular phone headsets; earbuds; protective smartphone cases; computer cases; protective covers for smartphones; covers for mobile phones; covers for tablet computers; screen protectors comprised of {specify material composition, e.g., acrylic, tempered glass, plastic, etc.} adapted for use with portable electronic devices; batteries; battery chargers; battery power packs; power adapters; devices for hands-free use of mobile telephones in vehicles namely, microphones and headsets; cordless phones; baby monitors; baby scales; pet monitors; electronic collars to train animals; electronic pet bark control collars; electronic animal confinement unit comprising of transmitters, electronic transformers, electric wires and receiver collars; wireless electric fences for pet containment pet fencing system; LCD home monitors for home security; computer modems; computers; mobile computing computer  hardware devices combining the size and functionalities of smartphones and tablets; laptop computers; personal work stations; desktop computers; computer workstations comprising {specify major computer hardware components}; computer servers; smoke detectors; water leak sensors detecting device for water supplied home appliances consisting of water sensor, control unit with audible alarm and water valves; electric blind controllers; electric shade controllers; CO2 detectors electronic carbon dioxide monitors, other than for medical purposes; air quality measurement apparatus, namely, particle counters; digital door locks; electric lighting controllers; electric dimmers; thermostats; doorbell cameras; electric door and window sensors; motion sensors; audio equipment, namely, indoor and outdoor speakers; indoor and outdoor wireless speakers; DVD players; digital video recorders; TVs; audio-visual projectors; electric home intrusion alarms; home security systems home automation systems comprising wireless and wired controllers, controlled devices, and software for security, safety, temperature and other home monitoring applications; wireless cellphone charging mats; power strips; extension cords; audio-video (AV) cords, cables and connectors; universal remote controls for home electronic devices, namely, televisions, digital video recorders, and satellite receivers; temperature monitors and sensors (duplicative to home monitoring systems above) ; electric night lights; electronic home hub controller for (specify devices); network routers; portable and networked external computer hard drives; cable modems; wireless adapters for computers; internet gateways; gateway routers in the nature of computer control hardware; solar panels for the production of electricity; weather radios; digital thermometers not for medical purposes; portable electronic navigational instruments; digital directional compass; digital binoculars; personal electronic locator beacons; portable electronic wireless audio speakers; wearable cameras; digital photo frames; set-top boxes; barometers, hygrometers; electronic power supply adapters, cables and connectors including USB, HDMI, Ethernet and audio for use with portable electronic devices; surge protectors; personal storage devices, namely, blank USB flash drives, SD memory cards; virtual reality game software; 3D scanners; vehicle remote control starters; computerized vehicle engine analyzers; vehicle dashboard cameras; in-car video disc players; vehicle backup cameras; vehicle navigation apparatus systems; tire pressure sensors; wireless communication devices for transmitting voice, data or images; car radios; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images to a remote location; hover boards, electric move to Class 12; GPS navigation equipment; body worn cameras; body worn camera accessories namely VSM to APX cables, cables to connect video speaker microphones with a two-way radio (VSM to APX), vest mounts, shoulder straps, windshield mounts, micro-USB chargers, carry holsters, multi-unit chargers, batteries, battery charging trays, visor mounts, receive-only earpieces; remote speaker microphones; two-way radio base stations; two-way radio repeater; two-way radio accessories namely wireless push-to-talk (PTT) button, headsets, rechargeable batteries, ear receivers, faceplates, wall stands, desk stands, belt clips, carrying cases, remote speaker microphones, wall chargers; electronic interconnect gateway to allow a radio system to connect to Public Switched Telephone Network (PSTN) or PBX Private Branch Exchange (PBX) telephone system; handheld smartphone devices for use in the area of commercial and public safety; data encryption microchip for mobile devices; vehicle modems; USB modems; radio modems; mobile computer workstations comprising {specify major computer hardware components}; broadband Internet Protocol (IP) electronic encryption equipment units for use in mobile networks; pagers; two-way radio trunking systems; radio dispatch consoles for commercial or public safety use; wireless automated electronic fire station alerting systems comprised of {indicate major components}; computer aided dispatch (CAD) software for use in supporting emergency calls by managing map location and dispatching field resources; situational awareness software for use by public safety personnel relative to incident resolution; video streaming equipment device for use with situational awareness software used by public safety personnel; mobile phone base stations; wireless dispatch two-way radio system consoles; Voice-over-IP (VOIP) phone adaptor; deskset radio system hardware for use in public safety that can control all radio functions and frequencies; records management software for use in public safety; jail management software for use in public safety; portable LTE (Long Term Evolution) infrastructure to include portable broadband service, portable cellular site on wheels connected to infrastructure via microwave, satellite or fiber backhaul and aerial platforms to provide incident scene video streaming; Internet Protocol (IP) enabled group communication computer software for two-way communications systems that allows otherwise disparate communication devices to link to a community of users for emergency, special event, enterprise and security applications, all aforementioned goods for sale or transporting in commercial, governmental, manufacturing and other business enterprise channels and not for sale to consumers; Internet Protocol (IP)" enabled group communication computer software for peer-to-peer two-way conferencing systems that allows otherwise disparate communication devices to link to a community of users for emergency, special event, enterprise and security applications, all aforementioned goods for sale or transporting in commercial, governmental, manufacturing and other business enterprise channels and not for sale to consumers; group communication software, sold in packaged form, that is used as a web-based application to provide simultaneous access to multiple two-way communication systems for emergency, special event, enterprise and security applications, all aforementioned goods for sale or transporting in commercial, governmental, manufacturing and other business enterprise channels and not for sale to consumers; sensor application software for gun holsters to determine if gun is holstered or withdrawn; mobile VPN software that offers a continuous secure connection between an end user device and customer enterprise network while ensuring confidentiality for communications when roaming across multiple networks; asset management software for use in public safety, government or enterprise settings; process management software for use in public safety, government or enterprise settings; data collection software for use in public safety, government or enterprise settings; location mapping software that tracks incident responders in the area of public safety; group management software that allows for creation of ad-hoc groups, including smart phones and two-way radios, to communicate via push to talk or text messaging; telecommunications and data networking hardware, namely, supervisory control and data acquisition (SCADA) remote terminal equipment that connects a variety of communication media and data processing protocols for use in industrial settings; smart watches enabled for wireless communications with electronic terminals such as smart phones, tablet computers, PDAs and computers; wearable electronic device incorporating functions of watches, speed sensors, pace counters, measurements of calorie consumption, distances, momentum, heartbeat measuring monitors and built-in pedometers; electronic downloadable publications via computer networks, namely, books, pamphlets, brochures, newsletters, journals and magazines featuring information about computer hardware, computer software, mobile phones, smart phones, handheld and mobile electronic devices;

 

Class 10:         Blood pressure monitors; glucose monitors for medical purposes; thermometers for medical use; medical devices, namely, pulse oximeters and pulse rate monitors

 

Class 11:         Air purifiers; humidifiers; dehumidifiers; refrigerators, microwave ovens; light bulbs; electric and battery operated night lights; electric lanterns; flashlights; spot lights; outdoor portable lighting products, namely, headlamps; bicycle lights; portable barbecue grills; personal water purification bottles; portable electric coffee brewers (note: non-electric drip coffee brewers are in Class 21);

 

Class 12:        Electric hover boards for personal transportation;

 

Class 14:         Watches; watch straps; watch bands; chronoscopes; clocks; parts for watches, clocks and horological and chronometric instruments namely, display, crown, hands, strap, bezel, buckle; watches enabled for wireless communications with electronic terminals such as smart phones, tablet computers, PDAs and computers  (moved to Class 9); cases for watches, clocks and horological and chronometric instruments; bracelets incorporating functions of watches, including speed sensors, pace counters, measurements of calorie consumption, distances, momentum, heartbeat measuring monitors and built-in pedometers (moved to Class 9); watch cases (duplicative); watch glasses; parts and fittings for all the aforesaid goods

 

Class 21:        Non-electric drip coffee brewers;

 

Class 35:         Online retail services provided via a global computer network featuring computer hardware, computer software, computer peripherals, consumer electronics, telecommunication apparatus, mobile phones, handheld and mobile digital electronic devices, accessories, peripherals and carrying cases for such devices and demonstration of such products; retail services featuring computer hardware, computer software, computer peripherals, consumer electronics, telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices, accessories, peripherals and carrying cases for such devices and demonstration of such products; computerized data storage and retrieval services for digital text, data, images, audio and video works (moved to Class 42); providing a buyback credit program for technological equipment such as computers and consumer electronics; negotiating real estate lease or purchase agreements; telecommunications billing services; arranging and conducting of commercial, trade and business conferences; professional business consulting services for Government, Public Safety and Enterprise Solutions applications;

 

Class 36:         Financial services, namely, credit and loan services related to the acquisition of goods; extension of retail credit services for the purchase of computers, consumer electronics and related accessories (note: indefinite: could be buyback program in Class 35 or credit and loan services in Class 36); lease-purchase financing services; payment services; providing and underwriting warranty and extended warranty contracts; site acquisition support services including but not limited to site selection, acquisition, accessing radio system coverage, negotiating lease or purchase agreements, obtaining permits and securing regulatory approval (language covers multiple classes); land acquisition services; extended warranty services, namely, radio maintenance plan protection services for repair or replacement of two-way radios;

 

Class 37:         Maintenance, installation and repair of computer hardware, computer peripherals, consumer electronic devices electric appliances, office machines as well as telephonic and photographic equipment and apparatus; radio network and hardware repair services; radio maintenance plan protection services for repair or replacement of two-way radios (classified in Class 36); real estate site selection; installation and maintenance of computer hardware;

 

Class 38:         Communication and telecommunication services; Telecommunications services, namely, personal communication services; communication by computer terminals; computer aided transmission of messages and images; providing telecommunication connections to a global computer network; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; provision of telecommunications connectivity services and access to electronic communications networks, for transmission or reception of audio, video or multimedia content; provision of telecommunications connections to electronic communication networks for transmission or reception of audio, video or multimedia content; provision of telecommunications access and links to computer databases and the Internet; electronic transmission of computer software for smart phones, mobile phones and handheld electronic devices via the Internet and other computer and electronic communication networks; information, advisory and consultancy services relating to all the aforesaid telecommunications services; wireless communications services, namely, MVNO (mobile virtual network operator) services for providing group communications over a cellular network; Mobile Virtual Network Operator services, namely, managed billing services, (classified in Class 35) provisioning access to and activating software services, software distribution services, all for providing group communications over a cellular network; wireless communications services, namely, managed PTT (push-to-talk) services to enable users to connect and collaborate on their devices;

 

Class 41:         Education services, providing of training classes (must indicate method of instruction) and instruction and entertainment relating to in the field of the use of computers, computer software, multimedia products, interactive products and online services, telecommunication apparatus, mobile phones, handheld and mobile digital electronic devices; workshops, conferences and seminars in the field of utilizing mobile phones, computers, computer software, online services, information technology, website design and consumer electronics; arranging professional workshops and training courses in the field of (indicate subject matter); computer education training services; arranging and conducting of commercial, trade and business conferences seminars (conferences are in Class 35); arranging and conducting of exhibitions, workshops, seminars and video conferences in the field of (indicate subject matter, please avoid duplicative services); providing electronic publications for browsing and downloading via computer networks, namely, in the nature of books, pamphlets, brochures, newsletters, journals and magazines relating to in the field of computer hardware, computer software, mobile phones, smart phones, handheld and mobile electronic devices; descriptive analytics training classes for Government, Public Safety and Enterprise Solutions applications; two-way radio and cellular communication equipment rental services; radio management software and program training services classes for provisioning, programming and maintaining radio systems; radio programming and configuration services; product training services, namely, classes on the subject of needs analysis, consultancy services, customization, delivery and logistics for communication equipment;

 

Class 42:         Computer technology consultancy services; computer hardware and software design, editing, updating, testing, research and advisory services; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; computer software design; computer system design; computer system analysis; planning, designing, implementing and developing computer networks for others; design, installation, interconnection, testing and maintenance of computer hardware and computer software for use in network computing; computer system and computer network integration; development of a server architecture consisting of computer hardware, computer software, semiconductors and electronic devices and creating framework conditions for designing, developing, managing and providing computer hardware, computer software, semiconductors and electronic devices; installation and maintenance of computer software; development and maintenance of computing network software for others; recovery of computer data; updating computer software for others; computer and consumer electronic diagnostic services; computer programming services; scientific and technological services, namely, scientific research and analysis in the fields of computer hardware, computer software, computer peripherals, portable and/or electronic devices, communications and information technology and research and design relating thereto; providing consulting services and technical support services, namely, troubleshooting support for of problems with computers, computer hardware, computer peripherals, servers, network equipment, computer software and consumer electronic devices, including handheld mobile digital electronic devices; computer consultation services for determining the compatibility of computer hardware and computer software; computer technology consultation services for computer hardware and computer software for use in the field of heat exchangers and thermal management; technological consultation services in the field of design, selection, implementation and use of heat exchangers and thermal management systems; computer services, namely, creating an online community for registered users to participate in discussions, share recommendations, get feedback from their peers, from virtual communities and engage in social networking; design, development, maintenance and management of application software for mobile phones, computers, TVs and consumer audio and video electronics; maintenance, repair and updating of computer operating system software for the communications industry; consulting professional services for Government, Public Safety and Enterprise Solutions applications; (moved to Class 35); cloud based software as a service (SAAS) which allows featuring software to allow Government, Public Safety, and Enterprise entities to access to data, namely, name records, incident reports, crime and incident analytics on any device with an internet connection; web based software as a service (SAAS) featuring security software designed to provide Government, Public Safety and Enterprise organizations with effective, mobile, security software for incident management and dispatch; cyber security services, namely, providing security patch installations security monitoring (monitoring services was deemed too broad and physical security was moved to Class 45; and technological security remained in Class 42) and computer security services for protecting data and information from unauthorized access;  on-premise security operations equipment and cyber security risk management;  radio and wireless device data management and cloud storage services; providing temporary use of on-line non-downloadable cloud computing software for database management and cloud storage of data for radio and wireless devices; managed network services, namely, computer network configuration and management for others in the field of Land Mobile Radio (LMR) and Government, Public Safety or Emergency broadband networks; computerized data storage and retrieval services for digital text, data, images, audio and video works;

 

Class 45:        Permitting and regulatory compliance consulting, namely, obtaining environmental, zoning and other governmental permits for development projects.

 

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.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Insufficient Fee -- Additional Class(es) Identified

 

The application identifies goods and services that are classified in at least 13 classes; however, applicant submitted fees sufficient for only 10 classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class. The fee for adding classes to a regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS).  See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).

 

Information on How to Respond to this Office Action

 

An applicant may check the status of or view documents filed in his or her trademark and/or service mark application or registration 24 hours a day, 7 days a week using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/.  To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”

 

For assistance addressing the legal issues raised in this action, please contact the undersigned attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at 1-800-786-9199 or 571-272-1000.

 

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.  

 

 

 

/Susan Leslie DuBois/

Susan Leslie DuBois

Examining Attorney

Law Office 111

susan.dubois@uspto.gov

571-272-9154

 

 

 

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 10/27/2017 FOR U.S. APPLICATION SERIAL NO. 87536169

 

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 10/27/2017 (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.