UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 3/25/2019

 

 

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 OF OFFICE’S DATABASE OF MARKS

 

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).

 

SUMMARY OF ISSUES:

• Identification of Goods and Services
• Foreign Registration Required

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite and must be clarified to further specify the nature, use, or subject matter of certain items, as set out in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, the following entries are indefinite:

• “Control devices for machines, engines or motors” does not specify the types of control devices;
• “electric devices for operating doors, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable)” does not specify the function of the electric devices (opens and closers) and contains parentheses (see paragraphs below);
• “electric or electronic motors for operating doors, windows, tarpaulins, tarpaulins for swimming pools, blinds, screens, curtains, shutters, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable)” contains parentheses (see below);
• “motor-reducers for operating doors, windows, tarpaulins, tarpaulins for pools blinds, screens, curtains, shutters, ventilation hatches, locks, garage doors, gates, barriers, grills and bollards (retractable)” does not identify the nature of the motor-reducers (reduction gears) and contains parentheses;
• “interfaces for home automation applications” must describe the type of interface (electronic display interface);
• “software enabling the tuning, automation and control of these electric, electronic and/or computer applications” uses the word “these” to reference applications and must further specify this reference;
• “servers for home automation applications enabling the reception and transmission of remote control orders as well as the operation of data storage” does not reference the type of server (communications);
• “connectors to a computer or home automation network” does not reference the type of connectors (cable connectors);
• “telecommunication terminals for the management and automation of the home and home equipment” should specify that this is a type of computer terminal;
• “electronic docking stations and digital electronic tablets for the automation and management of the home and home equipment” should specify the goods are computer tablets;
• “digital terminals for tertiary and residential buildings” should specify that this is a type of computer terminal;
• “digital terminals for tertiary, agricultural and residential buildings for the purposes of transmission, reception and decoding” should specify that this is a type of computer terminal;
• “detectors” should state what is being detected;
• “sirens batteries, electric batteries, rechargeable batteries” appears to have a typo with the omission of a semicolon between “sirens” and “batteries;”
• “luminous signals (signs)” contains parentheses;
• “electronic keys” should further describe the electronic nature of the keys (key fobs);
• “Registration and data processing, namely, data entry, information, systemization relating to automation and management of the household and household equipment” contains a reference to “information”; the provision of information is classified by subject matter; if applicant intended the entry or organization of information, the phrase “systemization of information” is recommended;
• “Providing of business information and consultancy in the field of motorization of openings, automation and management of the household and household equipment” contains the term “consultancy” which is classified by subject matter; if applicant intended to identify “business consultancy,” the word business should be added;
• “Providing access to computer sites and portals for remote management enabling installation, configuration, control, management and surveillance, from a computer, a touch-screen tablet or a mobile telephone, of home automation functions and applications for automation and/or motorization of blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance, alarm and fire detection systems in the household and/or buildings, controllers of electric and/or gas consumption, electricity, heat or other kinds of energy” contains the indefinite phrase “computer sites and portals;” applicant should clarify the online nature of the sites and portals being accessed;
• “Facilitation of Internet chat for users” contains the indefinite language “facilitation of;” if applicant is providing chat rooms, language to clarify should be added;
• “Telecommunications in the field of automation and management of the household and household equipment” is indefinite because it is unclear what the offered “telecommunications” service is;
• “Providing access wireless networks (including the Internet) or private or restricted-access networks (including intranets) in the field of automation and management of the household, agricultural buildings and household equipment” is indefinite and applicant should clarify if it is providing access to telecommunications networks; the entry also contains parentheses;
• “Rental of telecommunications apparatus and digiboxes in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment” is indefinite because it is unclear what “digiboxes” are and if they are telecommunications equipment properly classified in Class 38;
• “Rental of modems, digital communication terminals digiboxes in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment” is indefinite for the same reasons as the previous entry;
• “Assistance in the event of a fault in telecommunications goods or services, namely, rental of telecommunications apparatus for automation and management of the household, agricultural buildings and household equipment” is indefinite because two distinct concepts (assistance and rental) are connected through the word “namely;” as it is unclear what Class 38 services are offered, no suggestion is made.

 

The identification of goods and services contains parenthesis. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.

 

Therefore, applicant must remove the parenthesis from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.

 

The following substitute wording is suggested, if accurate:

 

Class 7: Control devices for machines, engines or motors, namely, hydraulic and pneumatic controls for machines, motors and engines; electric openers and closers, namely, electric devices for operating doors, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards (retractable); electric or electronic motors for operating doors, windows, tarpaulins, tarpaulins for swimming pools, blinds, screens, curtains, shutters, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards (retractable); reduction gears being parts of machines, namely, motor-reducers for operating doors, windows, tarpaulins, tarpaulins for pools blinds, screens, curtains, shutters, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards (retractable)

 

Class 9: Electric or electronic apparatus and instruments for processing, storing, transmitting, broadcasting, receiving data regarding the automation and management of the home and home equipment; electronic display interfaces for home automation applications; electric or electronic apparatus for remote control of home automation systems for the equipment in the home and/or buildings, in particular via the Internet communication network, telecommunication networks, including mobile telephones, for the installation, configuration, control, management, monitoring, in particular from a computer or a mobile telephone, of home automation features and applications and/or shutter drives, tarpaulins, tarpaulins for swimming pools, blinds, window openers, locks, doors, gates and other access systems, lighting, ventilation, air-conditioning, heating, the control and, management of security systems, access control, monitoring, alarm, fire detection; software to enable the tuning, automation and control of these {specify the applications tuned, automated, and controlled} electric, electronic and/or computer applications; communications servers for home automation applications enabling the reception and transmission of remote control orders as well as the operation of data storage; modems for home automation systems; cable connectors to a computer or home automation network; telecommunication computer terminals for the management and automation of the home and home equipment; computer and communication transmitter and receiver apparatus for home automation; electronic docking stations and digital electronic tablet computers for the automation and management of the home and home equipment; digital computer terminals for tertiary and residential buildings; digital computer terminals for tertiary, agricultural and residential buildings for the purposes of transmission, reception and decoding; electronic handheld devices for the wireless receipt and/or transmission of data for the remote management and automation of the home and home equipment; presence sensors, wind sensors, interior light sensors, sunshine sensors, temperature sensors, rain sensors, snow sensors for electrical equipment for controlling lighting or alarms or blinds or shutters or heating; smoke detectors; {specify what is being detected, e.g., motion} detectors; video telephones; thermostats; video surveillance cameras; sirens; batteries, electric batteries, rechargeable batteries; luminous beacons for safety or warning; luminous signals being signs; electric or electronic apparatus and installations for security and access control; electronic key fobs being remote control apparatus; electric or electronic locks; remote-controlled electric locks

 

Class 35: Arranging subscriptions to home automation databases; Arranging subscriptions to database servers relating to automation and management of the household and household equipment; Arranging subscriptions to assistance in the implementation of home automation goods; Registration and data processing, namely, data entry, information, and systemization of information into computer databases relating to automation and management of the household and household equipment; Computerized file management, in particular of image and sound files relating to automation and management of the household and household equipment; Compilation of data in computer databases relating to automation and management of the household and household equipment; Providing of business information and business consultancy in the field of motorization of openings, automation and management of the household and household equipment

 

Class 38: Providing access to computer websites and online portals for remote management enabling installation, configuration, control, management and surveillance, from a computer, a touch-screen tablet or a mobile telephone, of home automation functions and applications for automation and/or motorization of blinds, shutters, window openings, locks, doors, gates and other access systems, lighting, ventilation, air conditioning, heating, control and management of security, access control, surveillance, alarm and fire detection systems in the household and/or buildings, controllers of electric and/or gas consumption, electricity, heat or other kinds of energy; Transmission of information, messages and images with the aid of computers, via satellite, via telecommunications networks, including mobile telephones, via telematic networks and via internet communications networks, using radio communication gateways including 3G keys or gateways between communication protocols and/or other communication interfaces for apparatus and installations for the remote control of the automation and/or motorisation of shutters, blinds, windows, locks, doors, gates and other systems for access, lighting, ventilation, air conditioning, heating, control and management of systems for security, access control, surveillance, alarms and/or fire detection, and devices for managing electric standby and/or consumption of gas, electricity, heat or other kinds of energy; Facilitation of providing Internet chat rooms for users; Rental of telecommunications equipment in the field of automation and management of the household and household equipment; Providing access to telecommunication networks, namely, providing access wireless networks including the Internet or private or restricted-access networks including intranets in the field of automation and management of the household, agricultural buildings and household equipment; Providing of communication between computer terminals for automation and management of the household, agricultural buildings and household equipment; Rental of telecommunications apparatus and digiboxes set-top boxes for use with televisions in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Rental of modems, digital communication terminals, digiboxes set-top boxes for use with televisions in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Assistance in the event of a fault in telecommunications goods or services, namely, rental of telecommunications apparatus for automation and management of the household, agricultural buildings and household equipment [Indefinite, but no recommendation provided]

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and services identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided. See 15 U.S.C. §1126(d), (e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

RESPONSE

 

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

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and 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.  

 

 

 

/Scott Kumis/

Scott Kumis

Trademark Examining Attorney

Law Office 125

(571)272-2693

Scott.Kumis@uspto.gov

 

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/25/2019 FOR U.S. APPLICATION SERIAL NO. 88238958

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/25/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.