To: | Phoenix Peach, LLC (dan@brew.law) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88233108 - SMARTPHONE THERMOSTAT - 125-TM-29-2 |
Sent: | 3/19/2019 1:22:36 PM |
Sent As: | ECOM108@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88233108
MARK: SMARTPHONE THERMOSTAT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Phoenix Peach, LLC
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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: 3/19/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Search Results
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Trademark Act Section 2(e)(1) – Merely Descriptive Refusal
Here, the applicant seeks to register SMARTPHONE THERMOSTAT for “Thermostats; Climate control systems consisting of digital thermostats, air conditioning, heating, ventilation and drying control devices” in Class 009.
As defined by the attached dictionary evidence from http://www.merriam-webster.com/dictionary/smartphone, the term “smartphone” means “a cell phone that includes additional software functions (such as email or an Internet browser)” and the evidence from http://www.merriam-webster.com/dictionary/thermostat shows that the term “thermostat” refers “an automatic device for regulating temperature (as by controlling the supply of gas or electricity to a heating apparatus). Please see attached definitions.
As evidenced by the attached Internet evidence from third-party websites, it is common for HVAC systems and thermostats to comprise smartphone technology and/or made to be used with smartphones. See for example, www.hvacclasses.org (describing how the rise of mobile technology has opened up possibilities for heating and air conditioning technicians to get an accurate reading, find the right fit or automatically measure airflow velocity and calculate airflow volume with help from a smartphone); www.serviceexperts.com (promoting HONEYWELL® Wi-Fi thermostats which alert the user by smartphone when it is time to change the air filter or request heating or cooling repair service); www.directenergy.com (describing new HVAC systems that connect directly to the Internet, giving homeowners a level of control to remotely micro-manage home climate control to save money via a smartphone); and www.allknightac.com (describing how to use and control your HVAC system with your smartphone.)
Thus, in relation to the goods, the wording in the mark merely describes a feature, function, quality or use, viz. thermostats, HVAC control systems and control devices to be used/controlled by a smartphone.
Finally, although the applicant provided a disclaimer for the term THERMOSTATS, for the reasons explained above, the entire mark is merely descriptive of the goods. If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable. TMEP §1213.06.
Thus, the proposed mark merely describes a feature, function, quality or use of applicant’s goods. Therefore, registration on the Principal Register must be refused under Section 2(e)(1) of the Trademark Act.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Requirement for Information
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(3) Applicant must respond to the following questions: Do applicant’s goods utilize a smartphone or are the applicant’s HVAC control systems/devices made for use with a smartphone? Do applicant’s competitors use “smartphone” to advertise similar goods and/or services? Who is the typical consumer of applicant’s goods and/or services? Where are applicant’s goods and/or services typically purchased (provide examples of online and brick-and-mortar store venues)?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Significance of Wording
To permit proper examination of the application, applicant must explain whether the wording in the mark “smartphone” has any significance in the HVAC trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
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.
/Natalie Polzer/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4103
natalie.polzer@uspto.gov (not for formal responses)
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.