Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 09, 2019

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on April 12, 2019 in connection with this application.  Based on the August 3, 2019 implementation of the new U.S. Counsel Rules, applicant’s attorney must provide additional information detailed below. 37 C.F.R. §2.17(b)(3).

 

In a previous Office action(s) dated April 12, 2019, applicant was required to satisfy the following requirement(s):  amend the classification and identification of services.

 

On July 25, 2019, applicant submitted a response that was signed by an unauthorized attorney and the Trademark Examining Attorney issued a Notice of Incomplete Response.

 

On July 31, 2019, applicant responded by revoking the previous attorney of record and appointing a new attorney and provided a response amending the identification of services.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• CONTINUED AND MAINTAINED: Classification of Services – Amendment Required
• NEW ISSUE: Attorney Bar Information and Attestation Required 

 

Applicant must respond to all issues raised in this Office action and the previous April 12, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

CLASSIFICATION OF SERVICES – AMENDMENT REQUIRED

 

The services in International Class 41 are classified incorrectly.  Applicant must amend the services to classify the services in International Class 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Class 09:         Downloadable software, namely, user interface software for providing virtual personal voice assistant services controlled by voice commands and recognition via a smart audio speaker, mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders and making restaurant, travel, and hotel reservations, and providing general information at the request of the user in the field of connected rooms and devices; Downloadable software, namely, user interface software for controlling automation systems, namely, lighting, appliances, heating and air conditioning units, drapes, alarms and other safety equipment, and home monitoring equipment in the field of connected rooms and devices; Downloadable software, namely, user interface software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, gaming systems, DVD players, portable media players, and digital media streaming devices, using web based search engines in the field of connected rooms and devices; Downloadable software, namely, user interface software for communication, transmission and reception of data; Downloadable computer graphical user interface software; Downloadable computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface

 

Class 42:        Providing temporary use of non-downloadable software with cloud based web browser dashboards and which connects to voice controlled smart audio speakers, for providing virtual personal voice assistant services controlled by voice commands and recognition via a smart audio speaker, mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders and making restaurant, travel, and hotel reservations, and providing general information at the request of the user; Providing temporary use of non-downloadable software for controlling automation systems, namely, lighting, appliances, heating and air conditioning units, drapes, alarms and other safety equipment, and home monitoring equipment; Providing temporary use of non-downloadable software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, gaming systems, DVD players, portable media players, and digital media streaming devices, using web based search engines

 

SCOPE ADVISORY

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

ATTORNEY BAR INFORMATION AND ATTESTATION REQUIRED

 

Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

In addition, applicant’s attorney must provide the following statement:  “I attest that I am an 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).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

Applicant should note that the Attorney Bar Information and Attestation requirement is based on the primary appointed attorney.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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/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 nonfinal Office action  

 

 

/Geraldine Ingold/

Examining Attorney

Law Office 121

(571) 272-5076

geraldine.ingold@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 August 09, 2019 for

U.S. Trademark Application Serial No. 88281510

 

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. 

 

 

/Geraldine Ingold/

Examining Attorney

Law Office 121

(571) 272-5076

geraldine.ingold@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 August 09, 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.”