Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  December 08, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on November 13, 2020.

 

In a previous Office action dated May 15, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement: amend the identification of goods. Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

 

The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04. All previous arguments, objections, and evidence, where applicable, are incorporated by reference herein.

 

SUMMARY OF ISSUES MADE FINAL:

 

• Section 2(d) Refusal—Likelihood of Confusion—This Partial Refusal Applies to the Goods Specified Herein and
• Amendment to the Identification of Goods Required—This Partial Requirement Applies to the Goods Specified Herein

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION—THIS PARTIAL REFUSAL APPLIES TO THE GOODS SPECIFIED HEREIN

 

This refusal is continued and made FINAL.

 

Registration of the applied-for mark continues to be refused because of a likelihood of confusion with the mark in U.S. Registration No. 4401235.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Applicant’s applied-for mark is COYOTE in standard characters for the relevant goods “Downloadable mobile application software for presence detection and monitoring, security, safety, and other home monitoring and control applications; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of machines, devices, and things; downloadable software, firmware and software applications permitting users to remotely control electronic locks, alarm systems, video streaming devices, digital video recorders and receivers, wireless local area network enabled cameras, servers and other electronic devices; voice-activated and remotely-activated IP (Internet protocol) cameras, smoke detectors, carbon monoxide detectors, anti-intrusion alarms, burglar alarms, motion detectors, electronic glass break detectors, keypads and control panels for security systems and home automation devices, electronic door locks; Internet of things (IoT) enabled devices namely, emergency alarm signals, occupancy sensors, cameras, window and door open/close sensors, smoke and fire sensors and smoke and fire alarms; IoT (Internet of Things) and M2M (machine to machine) hardware, namely, electronic sensor devices for the remote electronic control, tracking, monitoring and management of machines, devices, people, pets and things; Indoor positioning and navigational systems, comprising electronic transmitters, receivers, circuitry, microprocessors, mobile telephone and computer software; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images and videos to remote locations; video cameras; smart home and smart building dashboard comprised of computer hardware and software used to control electronics in the home or business, monitor, control, and communicate with IoT (Internet of Things) cloud servers and devices, monitor power usage of IoT (Internet of Things) cloud servers and devices; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, electronic locks, security systems, cameras, video streaming devices, video recording and video receiving devices, digital video recorders and other electronic devices; electronic and wireless control panels for security and home automation systems; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; all of the foregoing for use in the field of home and building automation” in International Class 9.

 

The examining attorney maintains that there is a likelihood of confusion with the registered mark COYOTECASE in standard characters for “Personal security system imbedded in a smart phone case composed of an electronic personal security and burglar alarm that omits an audio alarm upon activation and also alerts pre-selected third parties that an alarm has been activated via text message from the smart phone” in International Class 9.

 

The examining attorney maintains that there is a likelihood of confusion between these marks based on the following relevant factors: similarity of the marks and similarity and nature of the goods. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.

 

As previously demonstrated, applicant’s mark is fully incorporated into registrant’s mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Further, while registrant’s mark contains the wording “CASE,” this wording is merely descriptive, if not generic, for registrant’s goods since registrant’s personal security system are imbedded in a smart phone case. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). Thus, the wording “CASE” is less significant in terms of affecting the mark’s commercial impression, and renders the wording “COYOTE” the more dominant element of the registered mark.

 

Based on the above analysis, applicant’s and registrant’s marks are confusingly similar.

 

As previously demonstrated, applicant’s and registrant’s goods are considered closely related because the goods are encompassing. In addition, the previously attached Internet evidence establishes that the same entity commonly provides applicant’s goods such as downloadable mobile application software for presence detection and monitoring, security, safety, and other home monitoring and control applications; downloadable software, firmware and software applications permitting users to remotely control alarm systems, digital video recorders and receivers, wireless local area network enabled cameras, and other electronic devices; keypads and control panels for security systems and home automation devices, electronic door locks; Internet of things (IoT) enabled devices namely, emergency alarm signals, occupancy sensors, cameras, window and door open/close sensors, smoke and fire sensors and smoke and fire alarms; IoT (Internet of Things) and M2M (machine to machine) hardware, namely, electronic sensor devices for the remote electronic control, tracking, monitoring and management of machines, devices, people, pets and things; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images and videos to remote locations; video cameras; smart home and smart building dashboard comprised of computer hardware and software used to control electronics in the home or business; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, electronic locks, security systems, cameras, video streaming devices, video recording and video receiving devices, digital video recorders and other electronic devices; electronic and wireless control panels for security and home automation systems; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; all of the foregoing for use in the field of home and building automation and provides goods similar to registrant’s such as personal security devices and markets the goods under the same mark. See Cove, Link Interactive, and Ascom, all attached; see also Fortress Security Store (attached to the May 15, 2020 Office action at 2-28), Sabre (attached to the May 15, 2020 Office action at 29-53), and Vigilant (attached to the May 15, 2020 Office action at 54-57). Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

While applicant disagrees that confusion is likely, applicant has not provided any additional arguments in support of its position. As such, applicant’s statement is not persuasive.

 

Applicant’s and registrant’s marks are confusingly similar. Further, the goods of applicant and registrant are considered closely related. Therefore, registration of the applied-for mark continues to be refused under Trademark Act Section 2(d).

 

ADVISORY REGARDING RESPONSE OPTIONS FOR A PARTIAL REFUSAL

 

The stated refusal refers to the following goods and does not bar registration for the other goods:  “Downloadable mobile application software for presence detection and monitoring, security, safety, and other home monitoring and control applications; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of machines, devices, and things; downloadable software, firmware and software applications permitting users to remotely control electronic locks, alarm systems, video streaming devices, digital video recorders and receivers, wireless local area network enabled cameras, servers and other electronic devices; voice-activated and remotely-activated IP (Internet protocol) cameras, smoke detectors, carbon monoxide detectors, anti-intrusion alarms, burglar alarms, motion detectors, electronic glass break detectors, keypads and control panels for security systems and home automation devices, electronic door locks; Internet of things (IoT) enabled devices namely, emergency alarm signals, occupancy sensors, cameras, window and door open/close sensors, smoke and fire sensors and smoke and fire alarms; IoT (Internet of Things) and M2M (machine to machine) hardware, namely, electronic sensor devices for the remote electronic control, tracking, monitoring and management of machines, devices, people, pets and things; Indoor positioning and navigational systems, comprising electronic transmitters, receivers, circuitry, microprocessors, mobile telephone and computer software; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images and videos to remote locations; video cameras; smart home and smart building dashboard comprised of computer hardware and software used to control electronics in the home or business, monitor, control, and communicate with IoT (Internet of Things) cloud servers and devices, monitor power usage of IoT (Internet of Things) cloud servers and devices; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, electronic locks, security systems, cameras, video streaming devices, video recording and video receiving devices, digital video recorders and other electronic devices; electronic and wireless control panels for security and home automation systems; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; all of the foregoing for use in the field of home and building automation” in International Class 9.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the goods to which the refusal pertains; or

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain once all other refusals/requirements have been obviated/satisfied/withdrawn.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

AMENDMENT TO THE IDENTIFICATION OF GOODS REQUIRED—THIS PARTIAL REQUIREMENT APPLIES TO THE GOODS SPECIFIED HEREIN

 

In its Response applicant acknowledged the request to amend the identification of goods, but declined to do so at this time. Therefore, this requirement is continued and made FINAL.

 

The wording “HVAC, … security, safety, and other home monitoring and control applications” in the identification of goods “Downloadable mobile application software for controlling electric and ambient lighting, HVAC, climate control, presence detection and monitoring, power control and monitoring, security, safety, and other home monitoring and control applications” is indefinite and must be clarified because it is not clear what function the software is performing in relation to HVAC, security, safety, home monitoring and control applications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the function of the software.

 

The wording “things” in the identification of goods “IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of machines, devices, people, pets and things,” “IoT (Internet of Things) and M2M (machine to machine) software for Cloud storage and mirroring of data for electronic control, monitoring and management of machines, devices, people, pets and things,” and “IoT (Internet of Things) and M2M (machine to machine) hardware, namely, electronic sensor devices for the remote electronic control, tracking, monitoring and management of machines, devices, people, pets and things” is indefinite and must be clarified because it is unclear what applicant is referring to with the word “things.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Artificial Intelligence” in the identification of goods “downloadable mobile applications, software and firmware for Artificial Intelligence, Machine Learning, Prediction, Analytics, Sound Detection, Scheduling, performance and Computer Vision for monitoring, managing and controlling internet of things (IoT) enabled devices and servers” is indefinite and must be clarified because it is unclear what function the applications, software and firmware is performing in relation to artificial intelligence.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify the function of the software. 

 

For the identification “wired and wireless control system, connected to wired and wireless networks in buildings for controlling electric and electronic devices,” applicant must specify the type of Class 9 devices that are being controlled or that the wired and wireless control systems are electronic.

 

Applicant’s prior amendment “electrical and electronic circuits, computers, wireless devices and equipment, and Internet of Things (IoT) enabled devices, namely, mobile hotspot devices, PC tablets, audio devices, namely, speaker, microphone, video devices, namely, video camera, computer network devices, namely, wireless router, headsets for use with telephones, mobile telephones, audio speakers, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition software; semiconductor devices” has changed the location of “Internet of Things (IoT) enabled devices” from the original identification and now makes the wording “wireless devices and equipment” indefinite and overbroad since it is no longer clear that applicant is identifying “mobile hotspot devices, PC tablets, audio devices, namely, speaker, microphone, video devices, namely, video camera, computer network devices, namely, wireless router, headsets for use with telephones, mobile telephones, audio speakers” as both wireless devices and equipment and Internet of Things (IoT) devices.

 

The prior amendment adding “emergency alarm” to the wording “signals” in the amended identification “Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, emergency alarm signals, occupancy sensors, smoke detecting and inspection mirrors, cameras, window and door open/close sensors, computer modules, smoke and fire sensors and smoke and fire alarms” is indefinite and must be clarified to specify the type of Class 9 emergency alarm signals such as emergency LED signaling flares and emergency signal transmitters.

 

The wording “electrical wiring devices in the nature of sockets, receptacles, switches, controllers, and wire management systems for transmission, distribution, substation, OEM and telecommunications products, namely, energy savings products, namely, load analysis and control, battery systems, solar panels for the production of electricity” in the identification of goods is indefinite and must be clarified because it is unclear if “wire management systems for transmission, distribution, substation, OEM and telecommunications products, namely, energy savings products, namely, load analysis and control, battery systems, solar panels for the production of electricity” are a type of electrical wiring device or separate identifications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Further, applicant did not amend the identification “energy savings products, namely, load analysis and control.” As stated in the initial Office action, the wording “load analysis and control” in the identification “electrical wiring devices in the nature of sockets, receptacles, switches, controllers, and wire management systems for transmission, distribution, substation, OEM and telecommunications products, namely, energy savings products, namely, load analysis and control, battery systems, solar panels for the production of electricity” is indefinite and must be clarified to specify what goods are “load analysis and control.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. This wording could include energy submeters for tracking and monitoring energy usage and electronic control devices for energy management in Class 9.

 

Applicant may substitute the following wording, if accurate. Please note that bolding, italics, and the like are used only to highlight suggested changes to the original language:

 

            International Class 9: Downloadable mobile application software for controlling electric and ambient lighting, controlling HVAC systems, climate control, presence detection and monitoring, power control and monitoring, {specify function of software in relation to security, e.g., automating security systems} security, {specify function of software in relation to safety, e.g., automating safety systems} safety, and controlling other home monitoring and control applications; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of machines, devices, people, pets and things in the nature of {specify things, e.g., electronic devices}; IoT (Internet of Things) and M2M (machine to machine) software for Cloud storage and mirroring of data for electronic control, monitoring and management of machines, devices, people, pets and things in the nature of {specify things, e.g., electronic devices}; downloadable mobile applications software and firmware for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable mobile applications, software and firmware for Artificial Intelligence in the nature of {specify function of application, software, and firmware related to artificial intelligence, e.g., applications, software, and firmware using artificial intelligence for home and building automation}, Machine Learning, Prediction, Analytics, Sound Detection, Scheduling, performance and Computer Vision for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable software, firmware and software applications permitting users to remotely control electronic locks, alarm systems, lights, garage door openers, electric gates, wireless local area network enabled plug outlets, televisions, video streaming devices, digital video recorders and receivers, wireless local area network enabled cameras, servers and other electronic devices; thermostats that incorporate wireless connectivity; computer software for mobile devices, namely, software for programming and controlling the aforementioned thermostats; electronic devices, namely, kitchen thermometers, cooking thermometers, electrical switches, digital audio players, and wireless transmitters and receivers; electronic wired and wireless control system, connected to wired and wireless networks in buildings for controlling electric and electronic devices, software applications to control wired and wireless networks in buildings including lighting components and electrical devices; wall switches and dimmers for electric lights, electrical receptacles, occupancy sensors, motion sensors, vacancy sensors, daylight sensors, lighting control panels, room controllers for controlling light dimmers, thermostats, control interface, and network modules; voice-activated and remotely-activated IP (Internet protocol) cameras, smoke detectors, carbon monoxide detectors, anti-intrusion alarms, burglar alarms, motion detectors, electronic glass break detectors, remote control units for radios, televisions and stereos, fans, HVAC, lights, appliances, keypads and control panels for security systems and home automation devices, electronic door locks, light systems comprising light sensors and switches, lighting systems, namely, lighting controls; electrical and electronic circuits; computers; wireless devices and wireless equipment and Internet of Things (IoT) enabled devices, namely, mobile hotspot devices, PC tablets, audio devices, namely, speaker, microphone, video devices, namely, video camera, computer network devices, namely, wireless router, headsets for use with telephones, mobile telephones, audio speakers, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition software; semiconductor devices; chip carriers, namely, semiconductor chip housings; Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, emergency alarm signals in the nature of {specify Class 9 goods, e.g., emergency signal transmitters}, occupancy sensors, smoke detecting and inspection mirrors, cameras, window and door open/close sensors, computer modules, smoke and fire sensors and smoke and fire alarms; IoT (Internet of Things) and M2M (machine to machine) hardware, namely, electronic sensor devices for the remote electronic control, tracking, monitoring and management of machines, devices, people, pets and things in the nature of {specify things, e.g., electronic devices}; Indoor positioning and navigational systems comprising electronic transmitters, receivers, circuitry, microprocessors, mobile telephone and computer software; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images and videos to remote locations; video cameras; electric and electronic sensors for motion, humidity, temperature, and light; smart home and smart building dashboard comprised of computer hardware and software used to control electronics in the home or business, monitor, control, and communicate with IoT (Internet of Things) cloud servers and devices, monitor power usage of IoT (Internet of Things) cloud servers and devices, monitor sales and project future sales of IoT (Internet of Things) enabled devices, and compile reports on IoT (Internet of Things) cloud server and device usage and status; dual independent electric socket control receptacle, namely, multimedia outlets with dual USB ports and backlight/nightlight; wireless enabled electrical plug outlets; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, electronic locks, security systems, lighting systems, garage door openers, electric gates, televisions, cameras, video streaming devices, video recording and video receiving devices, digital video recorders and other electronic devices; electronic and wireless control panels for security and home automation systems; electrical wiring devices in the nature of sockets, receptacles, switches, controllers, and wire management systems for transmission, distribution, substation, OEM; telecommunications products, namely, energy savings products, namely, load analysis and control in the nature of {specify Class 9 goods, e.g., electronic control devices for energy management}, battery systems, solar panels for the production of electricity; downloadable software for use in the data communication, oil and gas, power and utilities, security, electrical, electronic and lighting fields for providing information and resources in the data communication, oil and gas, power and utilities, security, electrical, and electronic fields; lighting controls; smart ceiling fan controllers; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; all of the foregoing for use in the field of home and building automation

 

Applicant’s goods 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 or add goods 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 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 will further limit scope, and once goods 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.

 

RESPONSE GUIDELINES

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: Downloadable mobile application software for HVAC, for presence detection and monitoring, security, safety, and other home monitoring and control applications; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of machines, devices, and things; IoT (Internet of Things) and M2M (machine to machine) software for Cloud storage and mirroring of data for electronic control, monitoring and management of things; downloadable mobile applications, software and firmware for Artificial Intelligence; downloadable software, firmware and software applications permitting users to remotely control electronic locks, alarm systems, video streaming devices, digital video recorders and receivers, wireless local area network enabled cameras, servers and other electronic devices; wired and wireless control system, connected to wired and wireless networks in buildings for controlling electric and electronic devices; voice-activated and remotely-activated IP (Internet protocol) cameras, smoke detectors, carbon monoxide detectors, anti-intrusion alarms, burglar alarms, motion detectors, electronic glass break detectors, keypads and control panels for security systems and home automation devices, electronic door locks; wireless devices and equipment, and Internet of Things (IoT) enabled devices, namely, mobile hotspot devices, PC tablets, audio devices, namely, speaker, microphone, video devices, namely, video camera, computer network devices, namely, wireless router, headsets for use with telephones, mobile telephones, audio speakers, wearable electrical and electronic devices, namely, smartwatches, microphones, speech recognition software; Internet of things (IoT) enabled devices namely, emergency alarm signals, occupancy sensors, cameras, window and door open/close sensors, smoke and fire sensors and smoke and fire alarms; IoT (Internet of Things) and M2M (machine to machine) hardware, namely, electronic sensor devices for the remote electronic control, tracking, monitoring and management of machines, devices, people, pets and things; Indoor positioning and navigational systems, comprising electronic transmitters, receivers, circuitry, microprocessors, mobile telephone and computer software; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images and videos to remote locations; video cameras; smart home and smart building dashboard comprised of computer hardware and software used to control electronics in the home or business, monitor, control, and communicate with IoT (Internet of Things) cloud servers and devices, monitor power usage of IoT (Internet of Things) cloud servers and devices; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, electronic locks, security systems, cameras, video streaming devices, video recording and video receiving devices, digital video recorders and other electronic devices; electronic and wireless control panels for security and home automation systems; electrical wiring devices in the nature of wire management systems for transmission, distribution, substation, OEM and telecommunications products, namely, energy savings products, namely, load analysis and control, battery systems, solar panels for the production of electricity; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; all of the foregoing for use in the field of home and building automation.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods only: Downloadable mobile application software for controlling electric and ambient lighting, climate control, power control and monitoring; IoT (Internet of Things) and M2M (machine to machine) software for the remote electronic control, monitoring and management of people, pets; IoT (Internet of Things) and M2M (machine to machine) software for Cloud storage and mirroring of data for electronic control, monitoring and management of machines, devices, people, pets; downloadable mobile applications software and firmware for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable mobile applications, software and firmware for Machine Learning, Prediction, Analytics, Sound Detection, Scheduling, performance and Computer Vision for monitoring, managing and controlling internet of things (IoT) enabled devices and servers; downloadable software, firmware and software applications permitting users to remotely control lights, garage door openers, electric gates, wireless local area network enabled plug outlets, televisions; thermostats that incorporate wireless connectivity; computer software for mobile devices, namely, software for programming and controlling the aforementioned thermostats; electronic devices, namely, kitchen thermometers, cooking thermometers, electrical switches, digital audio players, and wireless transmitters and receivers; software applications to control wired and wireless networks in buildings including lighting components and electrical devices; wall switches and dimmers for electric lights, electrical receptacles, occupancy sensors, motion sensors, vacancy sensors, daylight sensors, lighting control panels, room controllers for controlling light dimmers, thermostats, control interface, and network modules; remote control units for radios, televisions and stereos, fans, HVAC, lights, appliances, light systems comprising light sensors and switches, lighting systems, namely, lighting controls; electrical and electronic circuits, computers; semiconductor devices; chip carriers, namely, semiconductor chip housings; Internet of things (IoT) enabled devices namely, electrical outlets, sprinkler controllers, water leak sensors, smoke detecting and inspection mirrors, computer modules; electric and electronic sensors for motion, humidity, temperature, and light; smart home and smart building dashboard comprised of computer hardware and software used to monitor sales and project future sales of IoT (Internet of Things) enabled devices, and compile reports on IoT (Internet of Things) cloud server and device usage and status; dual independent electric socket control receptacle, namely, multimedia outlets with dual USB ports and backlight/nightlight; wireless enabled electrical plug outlets; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, and mechanical devices or systems, namely, lighting systems, garage door openers, electric gates, televisions; electrical wiring devices in the nature of sockets, receptacles, switches, controllers; downloadable software for use in the data communication, oil and gas, power and utilities, security, electrical, electronic and lighting fields for providing information and resources in the data communication, oil and gas, power and utilities, security, electrical, and electronic fields; lighting controls; smart ceiling fan controllers; all of the foregoing excluding freight transportation-related, logistics-related, or shipping-related devices, hardware and software; all of the foregoing for use in the field of home and building automation. 

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Danythe Johnson/

Trademark Examining Attorney

Law Office 120

Phone: 571-272-4391

Email: danythe.johnson@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 08, 2020 for

U.S. Trademark Application Serial No. 88099744

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Danythe Johnson/

Trademark Examining Attorney

Law Office 120

Phone: 571-272-4391

Email: danythe.johnson@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 08, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”