Notation to File

NOTE TO THE FILE

SERIAL NUMBER:            88380137

DATE:                                06/21/2019

NAME:                               gswift

NOTE:         

 

 

From: Swift, Gilbert M.
Sent: Thursday, June 20, 2019 8:59 PM
To: Robert Fish <rfish@fishiplaw.com>
Cc: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>
Subject: RE: Response Requested: Trademark Application Serial No. 88380137--G2

 

Hello Bob!

I’m in Dallas; there’s still quite a bit more sun out here.  

It’s end of quarter bonus time, so don’t worry about my working late.  

Tomorrow or whenever is convenient for you is fine with me.  Respond at your convenience. 

I wish you a pleasant evening.

Gilbert

 

From: Robert Fish [mailto:rfish@fishiplaw.com]
Sent: Thursday, June 20, 2019 8:54 PM
To: Swift, Gilbert M. <Gilbert.Swift@USPTO.GOV>; Sara Geer <sgeer@fishiplaw.com>
Subject: RE: Response Requested: Trademark Application Serial No. 88380137--G2

 

Gilbert, I should be able to get back to you tomorrow.

(You are working really late.  Are you in DC?)

 

Bob

 

 

Robert D. Fish, Esq. Founding Partner | Fish IP Law LLP 2603 Main Street, Suite 1000 Irvine, CA 92614-4271 Direct: 949-943-8302 | Main: 949-943-8300 | Fax: 949-943-8358 RFish@FishIPlaw.com  | www.FishIPLaw.com | www.PatentBeast.com

Fish IP Law LLP, exclusive providers of fishiplaw.com™, Green Fields Patenting® and Blue Sky Patenting® patent portfolio development services.

 

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From: Swift, Gilbert M. [mailto:Gilbert.Swift@USPTO.GOV]
Sent: Thursday, June 20, 2019 5:50 PM
To: Trademarks Group; Sara Geer
Cc: Swift, Gilbert M.
Subject: Response Requested: Trademark Application Serial No. 88380137--G2

 

Response Requested: Trademark Application Serial No. 88380137—G2

 

Dear Robert D. Fish, Esq.:

 

I am the Trademark examining attorney assigned to the above-captioned application.  I can approve it for publication immediately if you authorize me to enter an Examiner Amendment that resolves the issues described below.  To provide authorization, you simply need to give it in a reply to this email. 

 

Alternatively, if you require more time to resolve the issues presented, please let me know, and I will issue a Priority Action or combination Priority Action / Examiner’s Amendment instead. In any event, I hope you will let me know which course of action you prefer.

 

Requirement: Identification of Goods

 

The goods are: “Smart thermostats, connected smart bulbs and fixtures,” in Class 011.  

 

The identification of goods needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes.  See TMEP §§1402.01, 1402.03. 

 

If accurate, applicant may adopt the following formulation for drafting an acceptable identification. The suggested language has been bolded for applicant’s convenience.

 

Class 009:            Smart thermostats, connected smart flash bulbs and structural parts therefor

 

Class 011:             Connected smart light bulbs and structural parts therefor

See TMEP §1402.01.

 

Advisories

 

Applicant’s goods and/or 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/or services or add goods and/or 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/or 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/or services will further limit scope, and once goods and/or 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.

 

Multiclass Advisories

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)          List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)          Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Requirement: Mark Description Amendment 

 

Applicant must clarify whether color is being claimed as a feature of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq.  The drawing shows the mark only in black and white and the application includes a statement that color is not claimed as a feature of the mark; however, the mark description uses the colors black and white to describe the mark. 

 

To clarify whether color is claimed as a feature of the mark, applicant may satisfy one of the following:

 

(1)          If color is not a feature of the mark, applicant must submit a statement describing the literal and design elements in the mark that omits any reference to color.  See 37 C.F.R. §2.37; TMEP §§808.01, 808.02.  Other amendments will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(e), 807.14 et seq.

 

The following description is suggested, if accurate: 

 

The mark consists of the letter “G” and the number “2” inside a solid oval.

 

(2)          If color is a feature of the mark, applicant must submit a (a) color drawing that matches the colors in the color claim, (b) list all the colors that are claimed as a feature of the mark, if the current color claim is not complete, and (c) describe the literal and design elements in the mark that specifies where the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d). 

 

The following color claim and description are suggested, if accurate: 

 

Color claim:  “The colors white and black are claimed as a feature of the mark.”

 

Description:  “The mark consists of the letter G and the number 2 in white, both inside a solid black oval.”

 

TMEP §807.07(e).

 

For more information about drawings and instructions on how to submit a new drawing and a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.

 

Please let me know how you wish to proceed. I thank you in advance for your prompt response.

 

Gilbert M. Swift | Trademark Examining Attorney | Law Office 109 | United States Patent and Trademark Office | Gilbert.Swift@USPTO.gov | Tel: 1+ 571.272.9028