| To: | Amazon Technologies, Inc. (tmadmin@kilpatricktownsend.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88125044 - ECHO AUTO - 1105831 |
| Sent: | 1/15/2019 4:18:46 PM |
| Sent As: | ECOM103@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88125044
MARK: ECHO AUTO
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CORRESPONDENT ADDRESS: KILPATRICK TOWNSEND & STOCKTON LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Amazon Technologies, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 1/15/2019
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.
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Prior Pending Application
Information regarding pending Application Serial No. 88114650 is enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
Applicant must respond to the following requirements.
DISCLAIMER REQUIREMENT
The applicant must insert a disclaimer of "AUTO" in the application because presumably AUTO merely describes the field and subject matter of applicant's goods and services, namely, goods and services for use with and for automobiles. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). The term AUTO is defined as an "automobile." Please see attached dictionary evidence. Furthermore, applicant’s goods and services specify use for and with motor vehicles which is a synonym for an automobile.
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a).
A "disclaimer" is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP §1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP §1213.10.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10.
The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int'l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).
Applicant should submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “AUTO” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
IDENTIFICATION OF GOODS/SERVICES
GENERAL GUIDELINES
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" or "products," such words must be followed by "namely," followed by a list of the specific goods identified by their common commercial or generic names. See TMEP §§1402.01, 1402.03(a).
In the identification of services, applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a). If applicant uses indefinite words and phrases such as "services in connection with," "such as," "including," "and like services," "concepts," or "not limited to," such wording must be followed by "namely," and a list of the specific services identified by their common commercial or generic names. See id.
Applicant may amend the identification to list only those items that are within the scope of the goods/services set forth in the application or within the scope of a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.
Unacceptable identification
PLEASE NOTE: Recommended changes and suggestions to applicant’s identification have been highlighted in bold. If the recommended changes and suggestions contain brackets, applicant must remove any brackets from the identification and incorporate the bracketed information into the amended description.
Class 009
Applicant filed the following identification:
“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; computer hardware consisting of stand-alone voice controlled information devices, namely, cloud-connected and voice-controlled smart audio speakers with virtual personal assistant capabilities; computer software used for controlling stand-alone voice controlled information devices, namely, cloud-connected and voice-controlled smart audio speakers with virtual personal assistant capabilities; accessories, namely, power adapters and remote controls for the same foregoing smart audio speakers; voice command and recognition software, speech to text conversion software; voice-enabled software applications for personal information management; personal assistant software; home automation and home device integration software; personal vehicle integration software; wireless communication software for voice, audio, video, and data transmission; search engine software; computer software used for controlling stand-alone voice controlled information and personal assistant devices; computer software for personal information management; computer software for accessing, browsing, and searching online databases, audio, video, and multimedia content, games, and software applications, software application marketplaces; computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics of general interest; computer software for use in providing retail and ordering services for a wide variety of consumer goods; computer software for use to connect and control internet of things (IoT) electronic devices; computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home climate devices and lighting products via wireless networks; computer software for others to use for the development of software to manage, connect, and operate internet of things (IoT) electronic devices; computer software for use as an application programming interface (API); software development kits (SDKs) consisting of computer software development tools for the development of voice service delivery and nature language understanding technology across global computer networks, wireless networks, and electronic communications networks; software development kits (SDKs) consisting of computer software for the development, use, and interoperability of APIs that are used by electronic devices, systems, and interchanges that exchange data via communications networks and the internet and that connect with cloud-based data storage and exchange services; software development kits (SDKs) comprising of software development tools and software for use as an application programming interface (API) for creating software and applications related to internet connected consumer electronic devices; application programming interface (API), namely, software facilitating the development of voice service delivery and personal assistant capability tools in connection with consumer electronic devices; computer application software for handheld wireless devices, namely, software for controlling, integrating, operating, connecting, and managing voice controlled information devices, namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices; computer software development tools; voice-enabled software that provides users the ability to control features of their motor vehicle, namely, locking and unlocking vehicle doors, and starting and turning off the vehicle; voice-enabled software that provides users the ability to check statuses of motor vehicle systems, namely, engine oil life, fuel level, tire pressure and battery charge; voice-enabled software that provides users the ability to access and control vehicle HVAC, media, communication, infotainment and navigation systems; in-vehicle, voice-enabled software that provides users the ability to connect and control smart home connected and internet of things (IoT) electronic devices; software for transmitting vehicle diagnostic and status information via computer and communications networks; software for receiving traffic status information and providing responsive directional guidance information to vehicle operators; software that enables communication between vehicles and connected devices; navigation system, computer software application for use in connecting entertainment multimedia interface in motor vehicles; navigation systems and system component design and manufacturing services; vehicle accessories, namely, infotainment systems integrated to handle communications, entertainment and navigation; motor vehicle automation equipment, namely, computer software for operating and controlling cruise controls for motor vehicles, navigation apparatus for vehicles in the nature of on-board computers, navigational instruments for vehicles, computer software and sensors for monitoring and recording vehicle wear and fuel efficiency”
Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear. See TMEP §§1402.01, 1402.03. Applicant must specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as well as its main purpose, channels of trade and intended uses.
Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.
The following substitute identification with amended wording is suggested, if appropriate:
“Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, supervision, life-saving and teaching apparatus and instruments, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; BLANK magnetic data carriers; computer hardware consisting of stand-alone voice controlled information devices, namely, cloud-connected and voice-controlled smart audio speakers with virtual personal assistant capabilities; computer software used for controlling stand-alone voice controlled information devices, namely, cloud-connected and voice-controlled smart audio speakers with virtual personal assistant capabilities; accessories, namely, power adapters and remote controls for the same foregoing smart audio speakers; voice command and recognition software, speech to text conversion software; voice-enabled software applications for personal information management; personal assistant software; home automation and home device integration software; personal vehicle integration software, NAMELY, SPECIFY USE OR FUNCETION OF SOFTWARE; wireless communication software for voice, audio, video, and data transmission; search engine software; computer software used for controlling stand-alone voice controlled information and personal assistant devices; computer software for personal information management; computer software for accessing, browsing, and searching online databases, audio, video, and multimedia content, games, and software applications, software application marketplaces; computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics of general interest; computer software for use in providing retail and ordering services for a wide variety of consumer goods; computer software for use to connect and control internet of things (IoT) electronic devices; computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home climate devices and lighting products via wireless networks; computer software for others to use for the development of software to manage, connect, and operate internet of things (IoT) electronic devices; computer software for use as an application programming interface (API); software development kits (SDKs) consisting of computer software development tools for the development of voice service delivery and nature language understanding technology across global computer networks, wireless networks, and electronic communications networks; software development kits (SDKs) consisting of computer software for the development, use, and interoperability of APIs that are used by electronic devices, systems, and interchanges that exchange data via communications networks and the internet and that connect with cloud-based data storage and exchange services; software development kits (SDKs) comprising of software development tools and software for use as an application programming interface (API) for creating software and applications related to internet connected consumer electronic devices; application programming interface (API), namely, software facilitating the development of voice service delivery and personal assistant capability tools in connection with consumer electronic devices; computer application software for handheld wireless devices, namely, software for controlling, integrating, operating, connecting, and managing voice controlled information devices, namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices; Recorded computer software development tools; voice-enabled software that provides users the ability to control features of their motor vehicle, namely, locking and unlocking vehicle doors, and starting and turning off the vehicle; voice-enabled software that provides users the ability to check statuses of motor vehicle systems, namely, engine oil life, fuel level, tire pressure and battery charge; voice-enabled software that provides users the ability to access and control vehicle HVAC, media, communication, infotainment and navigation systems; in-vehicle, voice-enabled software that provides users the ability to connect and control smart home connected and internet of things (IoT) electronic devices; software for transmitting vehicle diagnostic and status information via computer and communications networks; software for receiving traffic status information and providing responsive directional guidance information to vehicle operators; software that enables communication between vehicles and connected devices; computer software application for use in connecting entertainment multimedia interface in motor vehicles; vehicle accessories, namely, infotainment systems integrated to handle communications, entertainment and navigation; motor vehicle automation equipment, namely, computer software for operating and controlling cruise controls for motor vehicles, navigation apparatus for vehicles in the nature of on-board computers, navigational instruments for vehicles, computer software and sensors for monitoring and recording vehicle wear and fuel efficiency” in Class 009
“COMPUTER navigation systems and system component design and manufacturing services” in class 042
Class 038
Applicant filed the following identification:
“Telecommunications; telecommunications, namely, communication via portable electronic devices, portable media players, portable digital devices, for transmitting, accessing, receiving, uploading, downloading, encoding, decoding, streaming, displaying, storing, caching, and transferring voice, audio, visual images, data, books, photos, videos, text, content, audiovisual works, multimedia works, literary works, files, and other electronic works; streaming of audio, visual and audiovisual material via the internet or other computer or communications network; communications services, namely, transmission of voice, audio, visual images via global communications networks; interactive broadcasting and webcasting services over the internet and telecommunications networks; telecommunication access services; telecommunications services, namely, electronic transmission of streamed and downloadable audio files via computer and communications networks; web casting services; telecommunications services, namely, electronic transmission of streamed and downloaded audio, video and multimedia content files via computer and communications networks; audio broadcasting of spoken word, music, concerts, and radio programs; electronic transmission of information and data; providing access to databases; providing telecommunication connectivity services for the transfer of images, messages, audio, visual, audiovisual, data, media and content to in-vehicle media, communication, infotainment and navigation systems; telecommunications services, namely, transmission of podcasts; telecommunications services, namely, transmission of webcasts; transmission of vehicle diagnostic information via computer and communications networks; transmission of motor vehicle status information via computer and communications networks; communication services, namely, transmission of voice, audio, visual images and data by computers, digital transmission, satellites, telecommunications networks, wireless communication networks, the Internet, for providing the driver of a vehicle with information, namely, traffic and weather conditions, travel destination information and parking information, as well as safety and convenience services; Satellite transmission of messages and data for navigation by air; Transmission of data, sound and images by satellite; telematic sending of information in the field of in-vehicle communication service for wireless vehicle navigation and tracking; wireless communications services, namely, wireless electronic transmission of data regarding points of interest for vehicles; telecommunication services, namely, electronic transmission of voice messages and data”
Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear. See TMEP §§1402.01, 1402.03. Applicant must specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as well as its main purpose, channels of trade and intended uses.
Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.
The following substitute identification with amended wording is suggested, if appropriate:
“Telecommunications, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME}; telecommunications, namely, communication via portable electronic devices, portable media players, portable digital devices, for transmitting, accessing, receiving, uploading, downloading, encoding, decoding, streaming, displaying, storing, caching, and transferring voice, audio, visual images, data, books, photos, videos, text, content, audiovisual works, multimedia works, literary works, files, and other electronic works; streaming of audio, visual and audiovisual material via the internet or other computer or communications network; communications services, namely, transmission of voice, audio, visual images via global communications networks; interactive broadcasting and webcasting services over the internet and telecommunications networks; telecommunication access services; telecommunications services, namely, electronic transmission of streamed and downloadable audio files via computer and communications networks; web casting services; telecommunications services, namely, electronic transmission of streamed and downloaded audio, video and multimedia content files via computer and communications networks; audio broadcasting of spoken word, music, concerts, and radio programs; electronic transmission of information and data; providing access to databases; providing telecommunication connectivity services for the transfer of images, messages, audio, visual, audiovisual, data, media and content to in-vehicle media, communication, infotainment and navigation systems; telecommunications services, namely, transmission of podcasts; telecommunications services, namely, transmission of webcasts; transmission of vehicle diagnostic information via computer and communications networks; transmission of motor vehicle status information via computer and communications networks; communication services, namely, transmission of voice, audio, visual images and data by computers, digital transmission, satellites, telecommunications networks, wireless communication networks, the Internet, for providing the driver of a vehicle with information, namely, traffic and weather conditions, travel destination information and parking information, as well as safety and convenience services; Satellite transmission of messages and data for navigation by air; Transmission of data, sound and images by satellite; telematic sending of information in the field of in-vehicle communication service for wireless vehicle navigation and tracking; wireless communications services, namely, wireless electronic transmission of data regarding points of interest for vehicles; telecommunication services, namely, electronic transmission of voice messages and data” in Class 038
Class 039
Applicant filed the following identification:
“Travel arrangement; providing information, news, and commentary in the field of travel, available vehicle parking, current vehicle traffic, and transportation; providing traffic status information and responsive directional guidance information to vehicle operators; electronic storage of digital data, light files, sound, data, information and image signals, all in particular for navigation systems, route planners and the use of electronic maps; providing navigation and information services, namely, information regarding traffic and traffic congestion; provision of information regarding travel; provision of information to travelers regarding fares, time tables and means of public transport; services of a travel agency, namely, the booking of rental services of cars, boats and other vehicles; all of the aforesaid services also provided via a communications network or a mobile telephone or a wireless navigation device; services of a travel agency, namely, booking of rental cars, boats and other vehicles; all of the aforesaid services also provided via a communications network or a mobile telephone or a wireless navigation device; providing vehicle location and direction information; GPS navigation services, namely, transmitting points of interest to vehicles”
Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear. See TMEP §§1402.01, 1402.03. Applicant must specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as well as its main purpose, channels of trade and intended uses.
Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.
The following substitute identification with amended wording is suggested, if appropriate:
“Arranging of transportation for travel tours; providing information, news, and commentary in the field of travel, available vehicle parking, current vehicle traffic, and transportation; providing traffic status information and responsive directional guidance information to vehicle operators; providing navigation and information services, namely, information regarding traffic and traffic congestion; provision of information regarding travel; provision of information to travelers regarding fares, time tables and means of public transport; services of a travel agency, namely, the booking of rental services of cars, boats and other vehicles; all of the aforesaid services also provided via a communications network or a mobile telephone or a wireless navigation device; providing vehicle location and direction information; GPS navigation services, namely, transmitting points of interest to vehicles” in Class 039
“electronic storage of digital data, light files, sound, data, information and image signals, all in particular for navigation systems, route planners and the use of electronic maps” in class 042
Note:
1. Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names. http://tess2.gov.uspto.report/netahtml/tidm.html.
Class 042
Applicant filed the following identification:
“Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; software as a service (SaaS) featuring software for use in connection with digital content subscription service providing search platforms to allow users to request and receive digital media content; software as a service (SaaS) featuring software for distributing, downloading, transmitting, receiving, playing and displaying, storing and organizing text, graphics, images, audio, video, and multimedia content; service provider (asp) services featuring hosting computer software applications of others, application service provider (asp) services featuring computer software and providing online non-downloadable software, namely, computer software for distributing, downloading, transmitting, receiving, playing and displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, voice recognition software, speech to text conversion software, and voice-enabled software applications, and research and design relating thereto; software as a service (SaaS) for controlling voice controlled information devices, namely, cloud-connected and voice-controlled smart audio speakers with virtual personal assistant capabilities; platform as a service (PaaS) featuring computer software platforms for voice command and recognition software, speech to text conversion software, voice-enabled software applications for personal information management; platform as a service (PaaS) featuring computer software platforms for personal assistant software; platform as a service (PaaS) featuring computer software platforms for home automation and home device integration software; platform as a service (PaaS) featuring computer software platforms for wireless communication software for voice, audio, video, and data transmission; software as a service (SaaS) featuring computer software used for controlling stand-alone voice controlled information and personal assistant devices; software as a service (SaaS) featuring computer software for personal information management; software as a service (SaaS) featuring computer software for accessing, browsing, and searching online databases, audio, video and multimedia content, games, and software applications, software application marketplaces; software as a service (SaaS) featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics of general interest; online non-downloadable computer software for use in providing retail and ordering services for a wide variety of consumer goods; software as a service (SaaS) featuring computer software for use to connect and control internet of things (IoT) electronic devices; software as a service (SaaS) featuring computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home climate devices and lighting products via wireless networks; software as a service (SaaS) featuring computer software for others to use for the development of software to manage, connect, and operate internet of things (IoT) electronic devices; software as a service (SaaS) featuring computer software for use as an application programming interface (API); design, development and maintenance of proprietary computer software for others in the field of natural language, speech, language, and voice recognition; technical support and consultation services for developing applications; application service provider (asp) services featuring software for controlling, integrating, operating, connecting, and managing voice controlled information devices, namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices; providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the internet; computer services, namely, providing remote management of devices via computer networks, wireless networks or the internet; provision of internet search engine services; information, advisory and consultancy services relating to voice command and recognition software, speech to text conversion software, and voice-enabled software applications, home automation, and internet-of-things software; providing information, news, and commentary in the field of science and technology, home decorating, weather; cloud-based, voice-enabled software that provides users the ability to control features of their motor vehicle, namely, locking and unlocking vehicle doors, and starting and turning off the vehicle; cloud-based, voice-enabled software that provides users the ability to check statuses of motor vehicle systems, namely, engine oil life, fuel level, tire pressure and battery charge; cloud-based, voice-enabled software that provides users the ability to access and control vehicle HVAC, media, communication, infotainment and navigation systems; cloud-based, in-vehicle, voice-enabled software that provides users the ability to connect and control smart home connected and internet of things (IoT) electronic devices; cloud-based software for transmitting vehicle diagnostic and status information via computer and communications networks; cloud-based software for receiving traffic status information and providing responsive directional guidance information to vehicle operators; cloud-based software that enables communication between vehicles and connected devices; development and design of information databases and computer hardware for use with navigation systems, route planners, electronic maps and digital dictionaries; computer software and hardware design; development and design of software for use with navigation systems, route planners, electronic maps and digital dictionaries; remote monitoring of the functioning and use of electrical equipment, namely, HVAC units; remote monitoring of the functioning and use of electrical equipment, namely, heating and cooling accessories in the nature of heaters and air conditioners; home and business automation services, namely, scheduling to turn on HVAC units; home and business automation services, namely, scheduling to turn on heating and cooling accessories in the nature of heaters and air conditioners”
Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear. See TMEP §§1402.01, 1402.03. Applicant must specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as well as its main purpose, channels of trade and intended uses.
Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.
The following substitute identification with amended wording is suggested, if appropriate:
“Scientific and technological services and research and design relating thereto, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME, i.e., specify field or use}; industrial analysis and research services, NAMELY, {FURTHER SPECIFY WITHIN THIS CLASS BY COMMON COMMERCIAL NAME, i.e., specify field or use}; design and development of computer hardware and software; software as a service (SaaS) featuring software for use in connection with digital content subscription service providing search platforms to allow users to request and receive digital media content; software as a service (SaaS) featuring software for distributing, downloading, transmitting, receiving, playing and displaying, storing and organizing text, graphics, images, audio, video, and multimedia content; service provider (asp) services featuring hosting computer software applications of others, application service provider (asp) services featuring computer software and providing online non-downloadable software, namely, computer software for distributing, downloading, transmitting, receiving, playing and displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, voice recognition software, speech to text conversion software, and voice-enabled software applications, and research and design relating thereto; software as a service (SaaS) for controlling voice controlled information devices, namely, cloud-connected and voice-controlled smart audio speakers with virtual personal assistant capabilities; platform as a service (PaaS) featuring computer software platforms for voice command and recognition software, speech to text conversion software, voice-enabled software applications for personal information management; platform as a service (PaaS) featuring computer software platforms for personal assistant software; platform as a service (PaaS) featuring computer software platforms for home automation and home device integration software; platform as a service (PaaS) featuring computer software platforms for wireless communication software for voice, audio, video, and data transmission; software as a service (SaaS) featuring computer software used for controlling stand-alone voice controlled information and personal assistant devices; software as a service (SaaS) featuring computer software for personal information management; software as a service (SaaS) featuring computer software for accessing, browsing, and searching online databases, audio, video and multimedia content, games, and software applications, software application marketplaces; software as a service (SaaS) featuring computer software for accessing, monitoring, tracking, searching, saving, and sharing information on topics of general interest; online non-downloadable computer software for use in providing retail and ordering services for a wide variety of consumer goods; software as a service (SaaS) featuring computer software for use to connect and control internet of things (IoT) electronic devices; software as a service (SaaS) featuring computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home climate devices and lighting products via wireless networks; software as a service (SaaS) featuring computer software for others to use for the development of software to manage, connect, and operate internet of things (IoT) electronic devices; software as a service (SaaS) featuring computer software for use as an application programming interface (API); design, development and maintenance of proprietary computer software for others in the field of natural language, speech, language, and voice recognition; technical support and consultation services for developing computer applications; application service provider (asp) services featuring software for controlling, integrating, operating, connecting, and managing voice controlled information devices, namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices; providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the internet; computer services, namely, providing remote management of devices via computer networks, wireless networks or the internet; provision of internet search engine services; information, advisory and consultancy services relating to voice command and recognition software, speech to text conversion software, and voice-enabled software applications, home automation, and internet-of-things software; Providing technology information in the field of science and technology, home decorating and weather; Providing temporary use of non-downloadable cloud-based, voice-enabled software that provides users the ability to control features of their motor vehicle, namely, locking and unlocking vehicle doors, and starting and turning off the vehicle; Providing temporary use of non-downloadable cloud-based, voice-enabled software that provides users the ability to check statuses of motor vehicle systems, namely, engine oil life, fuel level, tire pressure and battery charge; Providing temporary use of non-downloadable cloud-based, voice-enabled software that provides users the ability to access and control vehicle HVAC, media, communication, infotainment and navigation systems; Providing temporary use of non-downloadable cloud-based, in-vehicle, voice-enabled software that provides users the ability to connect and control smart home connected and internet of things (IoT) electronic devices; Providing temporary use of non-downloadable cloud-based software for transmitting vehicle diagnostic and status information via computer and communications networks; Providing temporary use of non-downloadable cloud-based software for receiving traffic status information and providing responsive directional guidance information to vehicle operators; Providing temporary use of non-downloadable cloud-based software that enables communication between vehicles and connected devices; development and design of information databases and computer hardware for use with navigation systems, route planners, electronic maps and digital dictionaries; computer software and hardware design; development and design of software for use with navigation systems, route planners, electronic maps and digital dictionaries; remote monitoring of the functioning and use of electrical equipment, namely, HVAC units; remote monitoring of the functioning and use of electrical equipment, namely, heating and cooling accessories in the nature of heaters and air conditioners; home and business automation services, namely, scheduling to turn on HVAC units; home and business automation services, namely, scheduling to turn on heating and cooling accessories in the nature of heaters and air conditioners” in Class 042
Note:
1. Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names. http://tess2.gov.uspto.report/netahtml/tidm.html.
RESPONSE
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.
/Paul A. Moreno/
United States Patent and Trademark Office
Attorney
Law Office 103
571-272-2651
paul.moreno@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.
