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: 5/22/2019

 

 

INTRODUCTION

 

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.

 

SUMMARY OF ISSUES:

 

1.                Advisory:  Potential Section 2(d) Refusal – One Prior Pending Application

2.                Identification Of Goods And Services Overly Broad, Indefinite, And Misclassified- Clarification And Amendment Required

 

ADVISORY:  POTENTIAL SECTION 2(d) REFUSAL – ONE PRIOR PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 88217377 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

While applicant is not required to respond to the issue of the pending application, applicant must respond to this Office Action within six months of the mailing date to avoid abandonment.

However, applicant must respond to the following requirements.

IDENTIFICATION OF GOODS AND SERVICES OVERLY BROAD, INDEFINITE, AND MISCLASSIFIED- CLARIFICATION AND AMENDMENT REQUIRED

 

Class 9

 

The underlined wording “Electronic devices and computer software that allows the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation” must be clarified because wording is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Under Nice 11-2019, computer software in Class 9 must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Therefore, the applicant must specify if the software is downloadable and/or recorded in Class 9 or if the applicant is providing their temporary, online non-downloadable use which would be a computer service in

Class 42.  Alternatively, if the computer software is embedded in the specified electronic devices, then applicant should amend the identification to clarify so as suggested below.

 

Similarly, the identifications “Software for controlling home automation systems, namely, lighting, appliances, HVAC systems, thermostats, air quality monitors and sensors, alarms and other safety equipment, locks, doorbells, cameras, and home monitoring equipment; 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” are overly broad and must specify whether the software is “downloadable” and/or “recorded” in Class 9 or  provided on a temporary online non-downloadable basis in Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

The identification “programmable locking systems” in the identification of goods is indefinite because it does not identify the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Therefore, applicant must amend the identification to specify the components of the system, and classify the identification in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

Class 37

 

The wording “Installation of security and surveillance products” is too broad because it could include services in other international classes, such as the installation of security software, in Class 42 for computer services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Therefore, applicant must amend the identification to clarify the nature of the services offered and classify the services accordingly.

 

Applicant has classified “certification services, namely, for the professional installation of electronic devices, computer hardware, and security and surveillance products, HVAC systems, lighting, and appliances” in International Class 37 for repair, maintenance, and installation of physical goods and structures; however, the proper classification is International Class 42 for technical services, including certification services.  Therefore, applicant may respond by reclassifying these services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  Additionally, applicant must amend the identification to clarify the services are to ensure the conformity with certification standards.

 

Class 42

 

The identification “Computer services, namely, providing a voice-controlled search engine for obtaining data, images, audio and video via a global computer network” is overly broad and must specify whether the software is “downloadable” and/or “recorded” in Class 9 or  provided on a temporary online non-downloadable basis in Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Applicant may adopt the following identification of goods and services, if accurate:

 

Class 9 –	“Computer hardware 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; Audio speakers; Loud Speakers; Wireless indoor and outdoor speakers; Voice controlled audio speakers; Electronic devices embedded with computer software that allows the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; Climate control system consisting of a digital thermostat; Wireless cameras; digital cameras; motion activated cameras; video cameras; Electronic monitors and sensors for monitoring water, humidity levels, heat, temperature, air quality, light, movement, motion, sound, and the presence of people, animals and objects; Light switches; lighting control panels; light systems comprising light sensors and switches; Electronic locks; programmable locking systems comprised of _____________[applicant to specify the components of the system, identifying the primary components first, e.g., electronic door locks and keypads]; digital door locks; Electronic doorbells; electronic wirelessly enabled doorbells; electronic doorbells featuring a camera; intercoms; Smoke alarms, carbon monoxide alarms, fire alarms; access control and alarm monitoring systems; security alarm hubs; sound alarms; alarm sensors; security alarm controllers; keypads for use with security alarm devices; electronic key fobs being remote control apparatus; 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, gaming systems, DVD Players, portable media players, and digital media streaming devices; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for accessing and searching online databases, websites, mobile phones, computers, tablets, smart phones, handheld computers, portable computers for documents, 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 via a mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders, making restaurant, travel, and hotel reservations, and making professional services appointments; ___________[applicant to specify if the goods are Downloadable, Pre-recorded, or Downloadable and Prerecorded] Software for controlling home automation systems, namely, lighting, appliances, HVAC systems, thermostats, air quality monitors and sensors, alarms and other safety equipment, locks, doorbells, cameras, and home monitoring equipment; ___________[applicant to specify if the goods are Downloadable, Pre-recorded, or Downloadable and Prerecorded] 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; Downloadable voice-controlled search engine software for obtaining data, images, audio and video via a global computer network”
Class 37 –	“Installation of electronic devices, computer hardware, security systems, HVAC systems, lighting, and appliances.”
Class 42 –	“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 non-downloadable voice-controlled search engine for obtaining data, images, audio and video via a global computer network; Provision of Internet search engines; Providing temporary use of online non-downloadable software used to provide voice-controlled information and communications; Electronic storage of electronic media, namely, images, text, audio, and video data; providing online non-downloadable software for recording, viewing, storing, sharing and analyzing online audio and video; Providing temporary use of online 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; Providing temporary use of online non-downloadable software for use in providing personal concierge services for others by voice-controlled commands via a mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders, making restaurant, travel, hotel reservations, and making professional services appointments; Providing temporary use of online non-downloadable software for controlling home automation systems, namely, lighting, appliances, HVAC systems, thermostats, air quality monitors and sensors, alarms and other safety equipment, locks, doorbells, cameras, and home monitoring equipment; Providing non-downloadable computer software that allows the sharing and transmission of data and information between electronic devices for the purposes of facilitating environmental monitoring, control, and automation in homes;  Installation of security and surveillance software; Certification services, namely, ensuring the professional installation of electronic devices, computer hardware, and security and surveillance products, HVAC systems, lighting, and appliances conforms with certification standards.”

 

Additions to the Identification Not Permitted

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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 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.

Applicant should file a response online using the Response to Examining Attorney Office Action Form available at http://www.gov.uspto.report/trademarks-application-process/filing-online/response-forms. 

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.  

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

 

 

 

/Tiffany Y. Chiang/

Trademark Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@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 5/22/2019 FOR U.S. APPLICATION SERIAL NO. 88372168

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 5/22/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Tiffany Y. Chiang/

Trademark Examining Attorney

Law Office 113

(571) 272-7681

tiffany.chiang@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.