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: 11/5/2018

 

 

The Office has reassigned this application to the undersigned trademark examining attorney.  This Office action is in response to applicant’s communication filed on October 31, 2018.

 

Applicant’s amendments to its identification of goods and services is acceptable.  However, upon further review, an additional requirement is made with regard to International Class 9.  Also, it is noted that applicant failed to delete the duplicate entry of services in class 42 as noted below.

 

Applicant is encouraged to call or email the assigned attorney below to resolve the issues in this Office action.

 

REQUIREMENT – Identification of Goods and Services (Classes 9 and 42)

International Class 9:

The wording “accessories for smart watches, including watchbands, straps and covers” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a).  Moreover, for classification purposes, the identification should indicate that the goods are “accessories specially adapted for use with smart watches.”  The following amendment would be acceptable in class 9: “accessories specially adapted for use with smart watches, namely, watchbands, straps and covers.”

 

Applicant may adopt the following identification in class 9, if accurate: 

 

Software used for the control of voice controlled information and communication devices; software for providing a personal voice-enabled digital assistant; voice recognition software; software for accessing and searching online databases and websites; software for searching a user's mobile phone, computer, tablet, or other electronic communication device for documents, files, and other stored information on command; software for providing personal concierge services for others initiated by voice-controlled commands via a mobile phone, computer, tablet, or other electronic communication device, namely, adding and accessing calendar appointments, alarms, timers, reminders, and making restaurant, travel, and hotel reservations; downloadable software for mobile phones and mobile devices for detecting a user's location and displaying relevant local information of general interest; downloadable software for mobile phones and mobile devices that allows the user to search the phone or device's content for information, contacts, and applications; downloadable software for mobile phones and mobile devices that allows the user to search the Internet for information of general interest; Computer software for accessing and searching online databases and websites using image capture; character recognition software; image recognition software; software for searching a user's mobile phone, computer, tablet, or other electronic communication device, namely, wearable computer peripherals, for data, graphics, files and images; Downloadable computer software for providing geographic information, interactive geographic maps, satellite and aerial images of earth and space, and ocean bathymetry; downloadable computer software for accessing satellite imagery on global computer networks, mobile devices and applications; Electrical apparatus and instruments, namely, mobile telephones, smart card readers, and proximity payment processing devices all using near field communication technology for facilitating commercial transactions through electronic means via wireless networks, global computer networks and mobile telecommunication devices; Near Field Communication (NFC) technology-enabled devices, namely, mobile phones, computers, tablets, smart phones, credit card and transaction processing terminals and handheld computers; Near Field Communication (NFC) technology-enabled readers; computer software for facilitating commercial transactions through electronic means via wireless networks, global computer networks and mobile telecommunication devices; computer software, namely, electronic financial platform that accommodates multiple types of payment and debt transactions in an integrated mobile device and web based environment; computer software for use in connection with the electronic storage, transmission, presentation, verification, authentication, and redemption of coupons, rebates, discounts, incentives, and special offers; computer software for use in connection with consumer loyalty programs and loyalty cards used to access and use loyalty points; Data processing equipment, namely, computers; Routers, namely, wireless network routers and network routers; Loud Speakers; Wireless indoor and outdoor speakers; Loudspeaker systems; Voice controlled audio speakers; Audio Speakers controlled by mobile applications; Home automation control device; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for streaming and playing audio, video, and multimedia content, for controlling televisions, monitors, gaming systems, DVD Players, portable media players, and digital media streaming devices; Computer hardware for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, home monitoring equipment; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for accessing and searching online databases, websites, mobile phones, computers, tablets, smart phones, handheld computers, portable computers for documents, files, and other stored information on command; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for providing personal concierge services for others initiated by voice-controlled commands via a mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders and making restaurant, travel, and hotel reservations; electronic devices for providing access to the Internet, viewing information on global computer networks, voice command and recognition, speech-to-text conversion, personal information management, voice and data transmission, and hands-free use and remote control of electronic devices; Computer software for accessing and transmitting data and content among consumer electronics devices and displays; computer peripherals for accessing and transmitting data and content among consumer electronics devices and displays; Audio speakers; earbuds; earphones; headphones; accessory ear cushions for earbuds, earphones, and headphones; accessory ear pads for earbuds, earphones, and headphones; microphones; remote controls devices for televisions, stereos, computers, tablets, cameras, and gaming systems; remote controls for controlling mobile phones and tablet computers; remote controls for mobile phones and tablet computers for controlling volume, music, phone calls, and transmitting data; apparatus for recording, transmitting, recognizing, processing, and reproduction of sound; power adapters for earphones, earbuds, and charging case; computer software for facial and object recognition; computer software for automating capturing of photos and videos; cameras; wireless cameras; digital cameras; video cameras; wearable cameras; cameras for automatically capturing, selecting, and transferring photos and videos; cameras for recording and transmitting videos and photos to mobile phones, portable media players, and handheld computers; accessories for cameras, namely, fasteners, charging cables, and cases; computer software for transferring, recording, capturing, storing, viewing, editing, processing, automatically selecting, and sharing videos and photos; cases and protective covers for mobile phones, smartphones, cameras, earphones, earbuds, headphones, tablets, headsets for virtual and augmented reality, and laptops; carrying cases and sleeves for mobile phones, smartphones, cameras, earphones, earbuds, headphones, tablets, headsets for virtual and augmented reality, and laptops; carrying cases and protective cases featuring battery charging devices, specially adapted for use with earbuds, earphones, and headphones; specially adapted carrying and charging cases featuring power supply connectors and battery charging devices for charging earphones and earbuds; protective covers for mobile phones, smartphones, and tablets; bumpers for mobile phones, smartphones, and tablets; camera accessories for mobile phones, smartphones, and tablets, namely, lenses, tripods, cases with built-in lenses, mounting plates, flash, and remotes; accessories for virtual reality devices, namely, padding replacements; hands-free devices for mobile-phones; headsets for virtual and augmented reality; accessories specially adapted for use with smart watches, namely, watchbands, straps and covers; keyboards; chargers for laptops, tablets, mobile phones, speakers, streaming devices, routers, headphones, earphones, and earbuds; car chargers; cases for chargers; battery chargers for earbuds, earphones, and headphones; charging cases; batteries; power cables and adapters; cables, namely, computer cables; electric charging cables for earphones, earbuds, headphones, and charging cases; screen protectors comprised of tempered glass and plastic adapted for use with portable electronic devices; interchangeable metal and fabric bases for voice activated speakers and wireless routers; computer software for transmission and display of digital content, audio works, visual works, audiovisual works, electronic publications, books, movies, and music; computer software for browsing and accessing digital content, computer software, computer games, audio works, visual works, audiovisual works, electronic publications, books, movies, and music; Downloadable computer software for managing, networking, collaborating within and providing remote access to databases

 

International Class 42:

Applicant is advised to delete or modify the duplicate entry in the identification of services in International Class 42 for “provision of Internet search engines.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may adopt the following identification in class 42, if accurate: 

 

Computer services, namely, providing a search engine for obtaining data, graphics, files and images using non-downloadable image recognition software; providing online non-downloadable character recognition software; providing online non-downloadable image recognition software; providing online non-downloadable software for extracting and retrieving information and data for others by means of global computer networks; providing online non-downloadable software for searching a user's mobile phone, computer, tablet, or other electronic communication device, namely, wearable computer peripherals, for data, graphics, files and images; Providing on-line non-downloadable software for providing a personal voice-enabled digital assistant; Providing on-line non-downloadable voice recognition software; computer services, namely, providing a voice-controlled search engine for obtaining data, images, audio and video via a global computer network; provision of Internet search engines; Providing on-line non-downloadable software used to provide voice-controlled information and communications; providing a website that provides technology that enables users to sign up for job alerts online and apply for jobs; providing a website that provides technology that enables employers to select which candidates best meet their job vacancy criteria based on resumes and word searches; Providing temporary use of non-downloadable computer software for providing geographic information, interactive geographic maps, non-downloadable software for accessing satellite and aerial images of earth and space, and ocean bathymetry, via a website; providing online non-downloadable computer software for displaying geographic information, interactive geographic maps, satellite and aerial images of earth and space, and ocean bathymetry; Design and development of computer hardware and software; Providing temporary use of online non-downloadable software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, gaming systems, DVD players, portable media players, and digital media streaming devices; Providing temporary use of online non-downloadable software for use in providing personal concierge services for others by voice-controlled commands via a mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders, and making restaurant, travel, and hotel reservations; Providing temporary use of online non-downloadable software for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, home monitoring equipment; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; Computer technology support services, namely, help desk services; Technical support services, namely, troubleshooting of computer software problems; Computer services, namely, cloud hosting provider services; Computer services, namely, integration of private and public cloud computing environments; Consulting services in the field of cloud computing technology, infrastructure-as-a-service (IAAS) cloud computing technology, software-as-a-service (SAAS) cloud computing technology, and platform-as-a-service (PAAS) cloud computing technology; Providing virtual computer systems and virtual computer environments through cloud computing; Technical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; Application service provider (ASP), namely, hosting computer software applications of others; Cloud computing featuring software for use in creating web applications, syncing, storing, archiving and backing-up data to cloud servers; Non-downloadable computer software for managing, networking, collaborating within and providing remote access to databases; Cloud computing featuring software for use in deploying virtual machines to a cloud computing platform; Cloud computing featuring software for use in sharing data, creating data visualizations, data processing, and analyzing data; Cloud computing featuring software for use in administration of computer local area networks management of computer applications and computer hardware, and computer application distribution; Cloud computing featuring software for use in managing online projects, developing predictive digital marketing models, managing and facilitating online conferences, meetings, demonstrations, tours, presentations and interactive discussions; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for creating web applications syncing, storing, archiving and backing-up data to cloud servers; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for managing, networking, collaborating within and providing remote access to databases; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for deploying virtual machines to a cloud computing platform; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for sharing data, creating data visualizations, data processing, and analyzing data; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for administration of computer local area networks management of computer applications and computer hardware, and computer application distribution; Platform-as-a-service (PAAS), Infrastructure-as-a-service (IAAS) and Software-as-a-service (SAAS) services featuring computer software platforms for managing online projects, developing predictive digital marketing models, managing and facilitating online conferences, meetings, demonstrations, tours, presentations and interactive discussions; Computer services, namely, creating cloud-based indexes of information; Providing non-downloadable computer software for use as an application programming interface (API) for use in the fields of artificial intelligence, natural language processing, image content analysis, speech recognition, deep learning, high performance computing, distributed computing, virtualization, machine learning, cluster computing, internet of things, and container management; Electronic data storage, namely, storage and archival of data, electronic media, and digital content; Cloud computing and data center services for data backup and disaster recovery purposes, namely, electronic storage of data and storage services for archiving electronic data; Electronic data storage services, namely, providing websites for the storage of digital content; Electronic data storage services, namely, providing remote cloud-based server storage to others; Technical consulting services in the field of electronic data storage and archiving of electronic data for others; Infrastructure as a service (IAAS), namely, providing remotely accessible electronic data storage; Electronic data storage services in the nature of technical management of virtual infrastructure storage services; providing temporary use of non-downloadable computer software for browsing and accessing digital content, computer software programs, audio works, visual works, audiovisual works, electronic publications, books, movies, and music; providing temporary use of non-downloadable computer software for transmission and display of digital content, audio works, visual works, audiovisual works, electronic publications, books, movies, and music

 

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).

 

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.

 

Advisory – Failure to Respond

If applicant does not respond to this Office action within the six-month period for response, “accessories for smart watches, including watchbands, straps and covers” in International Class 9 and the duplicate entry of “provision of Internet search engines” in International Class 42 will be deleted from the application. 

 

The application will then proceed with the remaining goods and services only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

 

 

/Daniel Brody/

Managing Attorney

Law Office 115

(571) 272-9724

Daniel.Brody@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 11/5/2018 FOR U.S. APPLICATION SERIAL NO. 87786172

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 11/5/2018, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Daniel Brody/

Managing Attorney

Law Office 115

(571) 272-9724

Daniel.Brody@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.