Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88260911 GOOGLE HOME HUB(Standard Characters, see http://uspto.report/TM/88260911/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Applicant has filed a cancellation action (cancellation no. 92072767) against the cited mark (reg. no. 4876206). The Applicant respectfully requests that the application be suspended pending the outcome of the cancellation action.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 038 for Telecommunication services, namely, transmission of data, graphics, images, audio and video clips by means of telecommunications networks, wireless communication networks, and the Internet

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Providing temporary use of online non-downloadable software for providing a personal voice-enabled digital assistant; Providing temporary use of online non-downloadable voice recognition software; Computer services, namely, providing a voice-controlled search engine for obtaining data, images, audio and video via a global computer network; Providing temporary use of online non-downloadable software used to provide voice-controlled information and communications; Providing temporary use of online non-downloadable software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors,and digital media streaming devices; Providing temporary use of online non-downloadable software for use in providing personal concierge services for others namely, adding and accessing calendar appointments, alarms, timers, and reminders; Providing temporary use of online non-downloadable software for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, locks, cameras, and home monitoring equipment; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Data processing equipment, computers; Computer hardware; Audio speakers; Wireless indoor speakers; Voice controlled audio speakers; Audio Speakers controlled by mobile applications; Home automation control device; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for streaming and playing audio, video, and multimedia content, for controlling televisions, monitors, and digital media streaming devices; Computer hardware for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, locks, cameras, and home monitoring equipment; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for accessing and searching online databases and websites for files and other stored information on command; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for providing personal concierge services for others initiated by voice-controlled commands namely, adding and accessing calendar appointments, alarms, timers, and reminders; Software used for the control of voice controlled information and communication devices; Software for providing a personal voice-enabled digital assistant; Voice recognition software; Software for accessing and searching online databases and websites; Software for searching a user's files and other stored information on command; Software for providing personal concierge services for others initiated by voice-controlled commands namely, adding and accessing calendar appointments, alarms, timers, and reminders; Software for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, locks, cameras, and home monitoring equipment; Software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, and digital media streaming devices
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/22/2018 and first used in commerce at least as early as 10/22/2018 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Tonga application number TOM201803624 filed 07/24/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Data processing equipment, computers; Data processing equipment, namely, computers; Computer hardware; Audio speakers; Wireless indoor speakers; Voice controlled audio speakers; Audio Speakers controlled by mobile applications; Home automation control device; Home automation control device, namely, home automation hubs comprised of voice-activated speakers, computer hardware, and downloadable software for controlling networked devices in the internet of things (IoT); Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for streaming and playing audio, video, and multimedia content, for controlling televisions, monitors, and digital media streaming devices; Computer hardware for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, locks, cameras, and home monitoring equipment; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for accessing and searching online databases and websites for files and other stored information on command; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for providing personal concierge services for others initiated by voice-controlled commands namely, adding and accessing calendar appointments, alarms, timers, and reminders; Software used for the control of voice controlled information and communication devices; downloadable computer software used for the control of voice controlled information and communication devices; Software for providing a personal voice-enabled digital assistant; downloadable computer software for providing a personal voice-enabled digital assistant; Voice recognition software; . downloadable intelligent personal assistant software for Voice recognition; Software for accessing and searching online databases and websites; downloadable computer software for accessing and searching online databases and websites; Software for searching a user's files and other stored information on command; downloadable computer software for searching a user's files and other stored information on command; Software for providing personal concierge services for others initiated by voice-controlled commands namely, adding and accessing calendar appointments, alarms, timers, and reminders; downloadable computer software for providing personal concierge services for others initiated by voice-controlled commands namely, adding and accessing calendar appointments, alarms, timers, and reminders; Software for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, locks, cameras, and home monitoring equipment; downloadable computer software for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, locks, cameras, and home monitoring equipment; Software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, and digital media streaming devices; downloadable computer software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, and digital media streaming devicesClass 009 for Data processing equipment, namely, computers; Computer hardware; Audio speakers; Wireless indoor speakers; Voice controlled audio speakers; Audio Speakers controlled by mobile applications; Home automation control device, namely, home automation hubs comprised of voice-activated speakers, computer hardware, and downloadable software for controlling networked devices in the internet of things (IoT); Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for streaming and playing audio, video, and multimedia content, for controlling televisions, monitors, and digital media streaming devices; Computer hardware for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, locks, cameras, and home monitoring equipment; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for accessing and searching online databases and websites for files and other stored information on command; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for providing personal concierge services for others initiated by voice-controlled commands namely, adding and accessing calendar appointments, alarms, timers, and reminders; downloadable computer software used for the control of voice controlled information and communication devices; downloadable computer software for providing a personal voice-enabled digital assistant;. downloadable intelligent personal assistant software for Voice recognition; downloadable computer software for accessing and searching online databases and websites; downloadable computer software for searching a user's files and other stored information on command; downloadable computer software for providing personal concierge services for others initiated by voice-controlled commands namely, adding and accessing calendar appointments, alarms, timers, and reminders; downloadable computer software for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, locks, cameras, and home monitoring equipment; downloadable computer software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, and digital media streaming devices
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/22/2018 and first used in commerce at least as early as 10/22/2018 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Tonga application number TOM201803624 filed 07/24/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use HOME HUB apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Emily Burns/     Date: 12/17/2019
Signatory's Name: Emily Burns
Signatory's Position: Senior Trademark Counsel, CA Bar member

Signatory's Phone Number: N/A

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88260911
Internet Transmission Date: Tue Dec 17 18:38:43 EST 2019
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXX:X:XXXX:XXXX:XXXX:
XXXX-20191217183843206100-88260911-70055
db9eefd9c37c671369f7bce6f9e33bf9a127f5ae
9ba7479bf21a2c0bb9bdc-N/A-N/A-2019121718
2607687820