Suspension Letter

United States Patent and Trademark Office (USPTO)

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

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  July 10, 2019

 

INTRODUCTION

 

This Suspension Notice is in response to applicant’s communication filed on June 18, 2019.

 

In a previous Office action dated December 19, 2019, the trademark examining attorney refused registration based on Trademark Act Section 2(d) for a likelihood of confusion with registered marks. Applicant was also required to amend the identification of goods and comply with any multiple-class application requirements. Two prior-filed applications were also noted in the Office action. While prior-filed application Serial No. 79228196 (COYOTE LAB) has registered, the trademark examining attorney is reserving the right to issue any subsequent Trademark Act Section 2(d) refusals until all prior-filed applications have either abandoned or registered. See TMEP § 716.02(c).

 

The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

PRIOR-FILED APPLICATION: The pending application below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark.  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is suspended until the prior-filed application below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application below was sent previously.

 

            - U.S. Application Serial No. 87628871

 

Refusal(s) and/or requirement(s) resolved and maintained and continued.  The following refusal(s) and/or requirement(s) is/are obviated: requirement to comply with any multiple-class application requirements. See TMEP §713.02.

 

The following refusal(s) and/or requirement(s) is/are maintained and continued: 

 

• Section 2(d) Refusal—Likelihood of Confusion;
• Amendment to Identification of Goods Required.

 

See id.  These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises.  See TMEP §716.01.

 

In its Response, applicant contends that the amendment to its identification of goods obviates the Section 2(d) refusal. The trademark examining attorney disagrees. While applicant amended its goods to the field of home and building automation, not all of registrants’ goods are limited. Therefore, this argument is not persuasive and the refusal is continued and maintained.

 

In its Response, applicant also amended its identification. However, not all of these amendments are acceptable.

 

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 amendment to the identification “electrical and electronic circuits, computers, wireless devices and equipment, 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, Internet of Things (IoT) devices” in which applicant changed the location of “Internet of Things (IoT) devices” as written now makes the language “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 amendment adding “emergency alarm signals” 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.

 

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.

 

These amendments are not accepted and thus the requirement to amend the identification is continued and maintained.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Danythe Johnson/

Examining Attorney

Law Office 120

571-272-4391

danythe.johnson@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 10, 2019 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.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

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

 

/Danythe Johnson/

Examining Attorney

Law Office 120

571-272-4391

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).

 

 

 

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.”