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. 88391721 8 EIGHT SLEEP (Stylized and/or with Design, see http://uspto.report/TM/88391721/mark.png) has been amended as follows:

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

Applicant declines to state arguments at this time with respect to the cited prior pending application in Ser. No. 88084313.  Applicant notes, however, that it is the owner of prior Reg. No. 5024068 for the mark EIGHT, which contains Class 9 software-based claims for, among other things, tracking “sleep and health patterns.”  Applicant’s ownership of this prior registration should foreclose the possibility of a Section 2(d) refusal against this Application based on Ser. No. 88084313, which was filed well after the prior registration

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for electric or electronic sensors for motion, humidity, biometrics, sleep and temperature; computer software for home automation and home device integration; computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home devices and temperature control products via wireless networks; computer hardware and software for monitoring sleep and managing sleeping environments; computer software for wireless data communication for receiving, processing, analyzing, transmitting and displaying information relating to sleep and health data, including but not limited to motion, position, breathing, heart rate, respiration, quality of sleep, hours slept, and heart and respiration issues; computer software for managing information regarding tracking, compliance and motivation with a sleep and health schedule; multifunctional electronic devices for displaying, measuring, and uploading to the Internet information relating to sleep and health data, including but not limited to motion, position, breathing, respiration, heart rate, quality of sleep, hours slept, and heart and respiration issues; downloadable mobile applications for sleep and health management, namely, software for monitoring and recording sleep and health patterns and events that affect sleep and health quality, generating sounds to aid in sleep, regulating the temperature of sleeping and bed environments, and providing alarm clock functions; computer hardware, namely, electronic devices comprised primarily of sensors and software for monitoring sleep and health activity, recording data relating to sleep and health patterns, regulating bed and environment temperature, and integrating with networked consumer electronic devices; optical glasses
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: electric or electronic sensors for motion, humidity, biometrics, sleep and temperature; computer software for home automation and home device integration; downloadable computer software for home automation and home device integration; computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home devices and temperature control products via wireless networks; downloadable computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home devices and temperature control products via wireless networks; computer hardware and software for monitoring sleep and managing sleeping environments; downloadable computer hardware and software for monitoring sleep and managing sleeping environments; computer software for wireless data communication for receiving, processing, analyzing, transmitting and displaying information relating to sleep and health data, including but not limited to motion, position, breathing, heart rate, respiration, quality of sleep, hours slept, and heart and respiration issues; downloadable computer software for wireless data communication for receiving, processing, analyzing, transmitting and displaying information relating to sleep and health data, including but not limited to motion, position, breathing, heart rate, respiration, quality of sleep, hours slept, and heart and respiration issues; computer software for managing information regarding tracking, compliance and motivation with a sleep and health schedule; downloadable computer software for managing information regarding tracking, compliance and motivation with a sleep and health schedule; multifunctional electronic devices for displaying, measuring, and uploading to the Internet information relating to sleep and health data, including but not limited to motion, position, breathing, respiration, heart rate, quality of sleep, hours slept, and heart and respiration issues; downloadable mobile applications for sleep and health management, namely, software for monitoring and recording sleep and health patterns and events that affect sleep and health quality, generating sounds to aid in sleep, regulating the temperature of sleeping and bed environments, and providing alarm clock functions; computer hardware, namely, electronic devices comprised primarily of sensors and software for monitoring sleep and health activity, recording data relating to sleep and health patterns, regulating bed and environment temperature, and integrating with networked consumer electronic devices; computer hardware, namely, electronic devices comprised primarily of sensors and downloadable software for monitoring sleep and health activity, recording data relating to sleep and health patterns, regulating bed and environment temperature, and integrating with networked consumer electronic devices; optical glassesClass 009 for electric or electronic sensors for motion, humidity, biometrics, sleep and temperature; downloadable computer software for home automation and home device integration; downloadable computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home devices and temperature control products via wireless networks; downloadable computer hardware and software for monitoring sleep and managing sleeping environments; downloadable computer software for wireless data communication for receiving, processing, analyzing, transmitting and displaying information relating to sleep and health data, including but not limited to motion, position, breathing, heart rate, respiration, quality of sleep, hours slept, and heart and respiration issues; downloadable computer software for managing information regarding tracking, compliance and motivation with a sleep and health schedule; multifunctional electronic devices for displaying, measuring, and uploading to the Internet information relating to sleep and health data, including but not limited to motion, position, breathing, respiration, heart rate, quality of sleep, hours slept, and heart and respiration issues; downloadable mobile applications for sleep and health management, namely, software for monitoring and recording sleep and health patterns and events that affect sleep and health quality, generating sounds to aid in sleep, regulating the temperature of sleeping and bed environments, and providing alarm clock functions; computer hardware, namely, electronic devices comprised primarily of sensors and downloadable software for monitoring sleep and health activity, recording data relating to sleep and health patterns, regulating bed and environment temperature, and integrating with networked consumer electronic devices; optical glasses
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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/services that meet the certification standards of the applicant.

The applicant's current attorney information: Brandon P. Leahy. Brandon P. Leahy of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      US
The docket/reference number is 53643-TM1007.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

The applicants proposed attorney information: Brandon P. Leahy. Other appointed attorneys are John L. Slafsky, Aaron D. Hendelman, Christine K. Au-Yeung, Alyssa M. Worsham, Chelsea E. Carbone, Susanna P. Lichter, Chidera N. Anyanwu, Ava R. Miller. Brandon P. Leahy of WILSON SONSINI GOODRICH & ROSATI, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      United States
The docket/reference number is 53643-TM1007.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

Brandon P. Leahy submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: BRANDON P. LEAHY. BRANDON P. LEAHY of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      US
The docket/reference number is 53643-TM1007.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com; trademarks@wsgr.com

The applicants proposed correspondence information: Brandon P. Leahy. Brandon P. Leahy of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      United States
The docket/reference number is 53643-TM1007.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com; trademarks@wsgr.com

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


SIGNATURE(S)
Response Signature
Signature: /Brandon P. Leahy/     Date: 12/06/2019
Signatory's Name: Brandon P. Leahy
Signatory's Position: Attorney of record, California state bar member

Signatory's Phone Number: 650.849.3204

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.

Mailing Address:    BRANDON P. LEAHY
   WILSON SONSINI GOODRICH & ROSATI
   
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
Mailing Address:    Brandon P. Leahy
   WILSON SONSINI GOODRICH & ROSATI
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
        
Serial Number: 88391721
Internet Transmission Date: Fri Dec 06 18:50:52 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2019120618505275
7257-88391721-7008cbda91325f5746ca9ace23
94c11cb86fa941966380f1f680eebc1a42d089c6
-N/A-N/A-20191206183321461763