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: November 19, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 24, 2019.

 

In a previous Office action dated March 25, 2019, applicant was required to satisfy the following requirement(s): amend the identification of goods and services, submit proof of foreign registration.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: foreign registration provided. See TMEP §§713.02, 714.04.

 

The trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL THAT APPLICANT MUST ADDRESS:

• Identification of Goods

 

IDENTIFICATION OF GOODS

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The identification of goods and/or 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 remain indefinite:

• “Control devices for machines, engines or motors for operating doors, garage doors, gates, barriers, grills, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings” in Class 7 is indefinite and overbroad because it could include electronic garage door openers in Class 9; and
• “connectors to a computer or home automation network” in Class 9 is indefinite because it does not adequately describe the nature of the connector.

 

The following substitute wording is suggested, if accurate:

 

Class 7:

 

Control devices being parts of machines, engines or motors for operating doors, garage doors, gates, barriers, grills, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings; Electric openers and closers, namely, electric devices for operating doors, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills, and retractable bollards; Electric or electronic motors for operating doors, windows, tarpaulins, tarpaulins for swimming pools, blinds, screens, curtains, shutters, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards; Reduction gears being parts of machines, namely, motor-reducers for operating doors, windows, tarpaulins, tarpaulins for pools blinds, screens, curtains, shutters, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards

 

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 and 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 electric, electronic and/or computer applications, namely, 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; communication 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; electrical connectors for connecting to a computer or home automation network; telecommunication 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; 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 keys being remote control; electric or electronic locks; remote-controlled electric locks

 

Class 35 (no changes):

 

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, 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 (no changes):

 

Providing access to 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; 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 and assistance to telecommunication networks, namely, providing access to 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 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, set-top boxes for use with televisions, computer, touch-screen tablet, mobile telephone in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Rental of modems, digital communication terminals, set-top boxes for use with televisions, computer, touch-screen tablet, mobile telephone in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or 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/or 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.

 

RESPONSE

 

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: “Control devices for machines, engines or motors for operating doors, garage doors, gates, barriers, grills, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings” in Class 7 and “connectors to a computer or home automation network” in Class 9. 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 and services only:

 

Class 7:

 

Electric openers and closers, namely, electric devices for operating doors, windows, tarpaulins, tarpaulins for swimming pools, shutters, blinds, curtains, screens, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills, and retractable bollards; Electric or electronic motors for operating doors, windows, tarpaulins, tarpaulins for swimming pools, blinds, screens, curtains, shutters, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards; Reduction gears being parts of machines, namely, motor-reducers for operating doors, windows, tarpaulins, tarpaulins for pools blinds, screens, curtains, shutters, awnings, ventilation hatches, locks, garage doors, gates, barriers, grills and retractable bollards

 

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 and 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 electric, electronic and/or computer applications, namely, 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; communication 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; telecommunication 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; 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 keys being remote control; 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, 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 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; 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 and assistance to telecommunication networks, namely, providing access to 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 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, set-top boxes for use with televisions, computer, touch-screen tablet, mobile telephone in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment; Rental of modems, digital communication terminals, set-top boxes for use with televisions, computer, touch-screen tablet, mobile telephone in the field of motorization of openings, automation and management of the household agricultural buildings and household equipment.

 

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.  

 

How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Scott Kumis/

Scott Kumis

Trademark Examining Attorney

Law Office 125

Phone: 571-272-2693

Email: scott.kumis@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 November 19, 2019 for

U.S. Trademark Application Serial No. 88238958

 

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. 

 

 

/Scott Kumis/

Scott Kumis

Trademark Examining Attorney

Law Office 125

Phone: 571-272-2693

Email: scott.kumis@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 November 19, 2019, 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.”