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:  September 05, 2019

 

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

 

            -  Prior-Filed Application

            -  Amendment to Identification of Goods and Services Required

 

PRIOR-FILED APPLICATION

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 88416393 (DAWNLIGHT) 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.

 

AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification of goods and services identifies goods and services which are classified incorrectly.  Applicant must amend the application toclassify the goods and services as per the guidelines below.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). 

 

Further, the identification of goods and services contains indefinite and overly broad wording that must be clarified and properly classified. TMEP §1402.01. 

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

In numerous instances, the wording in the identification of goods and services does not meet the Office’s requirements for specificity and the nature of the goods and services is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.  Please see below for further explanation and underlined, italicized, and bolded suggested amendments.

 

Further, the identification of goods and services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and services.

 

Additionally, the applicant has included the term “or” in the identification of goods and services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether the applicant intends to use the mark on all of the identified goods and services.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Further, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

“Software” in International Class 9 must be specified as “downloadable” or “recorded” and must specify the function of the software and, if software is content-or field-specific, the content or field of use.

 

The services of “providing information” are properly classified based on the service-related subject matter or field of the information being provided.  

 

While medical instruments and apparatus for treating or diagnosing medical conditions are generally classified in International Class 10, merely being “medical grade” products does not change the classification of the underlying product.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 9 for “computer software for medical purposes, recorded” and services in International Class 42 for “development of and providing use of online non-downloadable software, cloud-based software, software as a service (SAAS) services and platform as a service (PAAS) services, for use in gathering, compiling, reporting and analyzing graphical, visual and audial information and data.”   See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods or services, but not to broaden or expand the goods or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods or services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant must clarify the wording “providing a website, software platform, recorded software and downloadable software for use in building and construction site supervision, monitoring, compliance tracking, safety reporting, detection and alert notification of anomalies,” “providing a website, software platform, recorded software and downloadable software for use in maintenance and repair services including monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances,” and “providing a website, software platform, recorded software and downloadable software for use in building supervision, construction site supervision, compliance tracking” because it is indefinite and overly broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the services being provided by the applicant.  Further, this wording identified goods and services in more than one international class.  For example, providing a website featuring temporary use of non-downloadable software is properly classified in International Class 42, providing downloadable software platforms is properly classified in International Class 9, providing platform as a services (PAAS) services featuring software platforms is properly classified in International Class 42, and downloadable and recorded software is properly classified in International Class 9.

 

Applicant must clarify the wording “video and audio sensors for use in remote monitoring, analysis and alert notification of patient health, safety and wellness” because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the specific nature of the sensors being produced by the applicant.  Further, medical patient monitoring sensors are properly classified in International Class 10.

 

Applicant must clarify the wording “medical services, namely, providing an internet site featuring software that allows users to remotely interact with patient monitoring and automated alert notification systems” because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the specific nature of the services being produced by the applicant.  Further, the services of providing a website featuring online non-downloadable software are properly classified in International Class 42.

 

“Consulting services in the field of medical practice management for others” are classified incorrectly.  Applicant must amend the application to classify the services in International Class 35.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Suggested Amendments

 

Applicant may adopt the following suggested amendments, if accurate:

 

Class 9:  Electronic devices used to track, analyze and report health, wellness, fitness, stress, activity and sleep metrics; Electronic devices used to track, analyze and report vital signs and motion data including heart rate, activity levels, sleep quality and respiratory activity; Electronic devices for environmental, health, safety, security and equipment monitoring, control, automation and notification systems; downloadable and recorded computer software for use in environmental, health, safety, security and equipment monitoring, control, automation and notification systems; Electronic devices and downloadable and recorded computer software that allow users to remotely interact with environmental, health, safety, security and equipment monitoring, control, automation and notification systems; Electronic devices and downloadable and recorded computer software that allow the sharing and transmission of data and information between devices for the purposes of facilitating environmental, health, safety, security, equipment monitoring, control, automation and notification; electronic radar sensors; electronic video and audio sensors; Electronic sensors and downloadable and recorded computer software for motion, humidity, temperature, and light for use in monitoring, tracking, control, automation of building, facility, factory and manufacturing environments; Electronic sensors and downloadable and recorded computer software for use in monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances; Electronic sensors and downloadable and recorded computer software for use in building supervision, construction site supervision, compliance tracking, detection of anomalies; Electronic sensors and downloadable and recorded software programs for image detection, text recognition, optical character recognition, body orientation recognition, motion detection, object detection, video object detection, sound recognition, voice recognition, image recognition, remote image sensing, scene analysis, scene recognition, character detection and recognition, vehicle type recognition, vehicle recognition, vehicle detection, garment attributes recognition, pedestrian detection, pedestrian attributes detection, people detection, people counting, density estimation, commercial invoicing recognition, image processing, video stabilization, modifying the appearance of photographs and videos, taking and editing photographs and recording and editing videos, security systems, and authentication of electronic payment processing; Downloadable and recorded software for use in recording, viewing, storing, sharing and analyzing online audio and video; downloadable and recorded computer software for use as an application programming interface (API); Downloadable and recorded data analytic software programs for gathering, compiling, reporting and analyzing graphical, visual and audial information and data; Downloadable and recorded computer software for processing data; Downloadable and recorded software programs for artificial intelligence (AI) based image, text, object, optical character, body orientation, motion, sound detection and recognition; Electronic sensors and downloadable and recorded computer software for use in analyzing, tracking and reporting image, text, object, optical character, motion, sound, voice, gesture, body motion, body orientation and other data for use in healthcare, home monitoring, patient monitoring, medical, veterinary, repair, vehicle, home, building and construction site supervision, monitoring, safety and security services; Data processing apparatus; Apparatus for image recognition and processing; Apparatus for object identification; Apparatus for gesture recognition and analysis; Apparatus for body orientation detection; Apparatus for body motion detection; Apparatus for object motion detection; Apparatus for sound recognition; Apparatus for voice recognition; Apparatus for optical character identification; Fingerprint scanner; Downloadable software, namely, computer programs for editing images, sound and video; Computer software applications, downloadable, for word and images processing; Downloadable mobile applications for editing photos; Downloadable and recorded software for processing images, graphics and text; Downloadable and recorded computer software for organizing and viewing digital images and photographs; Downloadable and recorded computer software for processing digital images; Downloadable and recorded computer programs in the field of health care; Downloadable and recorded computer programs for medical purposes; Monitoring apparatus being electric wireless controllers to remotely monitor and diagnose function and status of other electrical, electronic, and mechanical devices or systems, namely, {indicate type of devices or systems, e.g., remote metering systems, vehicle tracking devices, etc.}; Computer software platforms, recorded and downloadable, for {indicate purpose of the platforms, e.g., application development, web hosting, database management, etc.}; Mobile software applications, downloadable, for {indicate function of software, e.g., monitoring bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}; Computer software applications, downloadable, for {indicate function of software, e.g., monitoring bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}; Computer programs, recorded, for {indicate function of software, e.g., monitoring bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}; Computer software, recorded, for {indicate function of software, e.g., monitoring bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field-specific, the content or field of use}; downloadable and recorded computer software for image, object, motion, gesture and sound detection for use in education and entertainment; downloadable and recorded gesture and motion detection software for use in education and entertainment; Attendance machines being counting machines for counting how many people are in attendance at an event; Optical character readers; Encoded identification bracelets, magnetic; Pattern recognition systems composed of computer chips, computer hardware and software; Data processing equipment; Object recognition device, namely, cameras, video cameras and computer hardware used for object scanning and recognition; Attendance machines in the nature of electronic readers and controllers for controlling access to a premises; Wearable activity trackers; Monitoring devices being security alarms for security and safety of buildings, construction sites and facilities; Anti-theft alarms for buildings, construction sites and facilities; Theft prevention installations being theft alarms, electric; Wearable and contactless wearable activity trackers; Monitoring apparatus not for medical purposes, namely, {indicate specific type of monitoring apparatus not for medical purposes}; Computer software for medical purposes, recorded, namely, medical software for {indicate function or purpose of the medical software}; Wearable computers in the nature of {indicate specific type of wearable computers, e.g., Smartglasses, smartwatches, etc.}; Downloadable graphics for mobile phones; Electronic cards for processing images; Baby monitors; Video baby monitors; Integrated circuit chips; Electronic chips for the manufacture of integrated circuits; Remote control apparatus, namely, remote control for {indicate specific devices, e.g., radios, televisions, stereos}; Protection devices for personal use against accidents, namely, {indicate specific protection devices, e.g., shoes for protection against accidents, asbestos gloves for protection against accidents, etc.}; Anti-theft warning apparatus; Downloadable and recorded virtual reality software for medical teaching; Downloadable and recorded chatting robot software for analog dialogue; Computer software for medical research, recorded; humanoid robots with artificial intelligence; selfie lenses for mobile phone cameras; selfie lenses for cameras; cameras for photography; teaching robots; blank electronic chip cards for computers; blank electronic chip cards for mobile phones; Computer hardware; Smartglasses; Smartwatches; Interactive touch screen terminals; Data processing equipment, namely, couplers; electronic data recorders, namely, black boxes; Hologram apparatus; Electronic notice boards; luminous light-emitting electronic pointers; Smartphones; Telecommunications transmitters; Infrared detectors; Teaching apparatus, namely, manipulative blocks used as teaching aids for the visualization of math concepts; 3D spectacles; Photography, namely, photographic slides; Downloadable mobile applications for monitoring a user's smart phone and online activities for the purposes of analyzing cognitive ability, health and general well-being, and featuring healthcare recommendations, diagnosis and wellness information; Downloadable software for analyzing and reporting on Internet traffic, for analyzing the effectiveness of web site marketing, and for tracking web site activity and managing, monitoring, tracking and optimizing the performance and effectiveness of web sites and online marketing campaigns; Downloadable video recordings and written articles in the fields of science, technology, healthcare, artificial intelligence, artificial intelligence (AI) based monitoring, data collection, data analysis and data management; Connected electronic devices and smart electronic devices for collecting, processing, analyzing, and responding to electronic sensor data and communicating back data, files, sounds, and images in the nature of a desired voice file, audio file, audiovisual file, visual file, text file, content file, data file, photo, video, electronic work, audiovisual work, multimedia work and literary work; Connected electronic devices and smart electronic devices for collecting, processing, analyzing, and responding to data in the nature of internet and device activity and transmitting back data, files, sounds, and images in the nature of a desired voice file, audio file, audiovisual file, visual file, text file, content file, data file, photo, video, electronic work, audiovisual work, multimedia work and literary work; Humanoid robots with artificial intelligence, laboratory robots, and teaching robots that can collect, process, analyze and respond to electronic sensor data and communicate back a desired voice file, audio file, audiovisual file, visual file, text file, content file, data file, photo, video, electronic work, audiovisual work, multimedia work and literary work; Providing a downloadable computer software platform for use in building and construction site supervision, monitoring, compliance tracking, safety reporting, detection and alert notification of anomalies, for use in maintenance and repair services including monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances, and for use in building supervision, construction site supervision, compliance tracking; Recorded software and downloadable software for use in building and construction site supervision, monitoring, compliance tracking, safety reporting, detection and alert notification of anomalies, for use in maintenance and repair services including monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances, and for use in building supervision, construction site supervision, compliance tracking

 

Class 10:  Medical devices for monitoring vital signs, blood properties and respiratory events used to track, analyze and report health, wellness, fitness, stress, activity and sleep metrics; Medical apparatus for use in treating and diagnosing {indicate specific condition} which track, analyze and report vital signs and motion data including heart rate, activity levels, sleep quality and respiratory activity; Health and wellness instruments and apparatuses, namely, patient monitoring sensors and alarms for automated health, safety and wellness monitoring, tracking, analysis and alert notification systems; General health and wellness instruments and apparatus, namely, patient monitoring sensors and alarms featuring software for storing, relaying, tracking, measuring, displaying and automated alert notification of biometric data such as heart rate, respiration, body movement, activity intensity, type of activity, sleep quality and body movement; Video and audio patient monitoring sensors for use in remote monitoring, analysis and alert notification of patient health, safety and wellness; Medical devices, namely, patient monitors and patient sensors for monitoring, measuring, tracking, analyzing and alert notification of vital signs, sleep activity, bodily movements and respiratory events; Medical instruments, namely, health monitors comprising sensor that monitors the health of the elderly or disabled in their own homes; Medical device, namely, a device for measuring leg movements during sleep; Portable medical devices with sensors to monitor the physical movements of a patient wearing or carrying the device; Health monitoring, analysis and alert notification apparatus and instruments, namely, patient medical monitors for monitoring {specify physical condition being monitored, e.g., blood pressure, heart rate, lung function, etc.} for medical, dental or veterinary use; Surgical robots that can collect, process, analyze and respond to electronic sensor data and communicate back a desired voice file, audio file, audiovisual file, visual file, text file, content file, data file, photo, video, electronic work, audiovisual work, multimedia work and literary work; Medical robots for {indicate medical use, e.g., use in cognitive therapy for children, assisting physically disabled persons with eating, etc.} that can collect, process, analyze and respond to electronic sensor data and communicate back a desired voice file, audio file, audiovisual file, visual file, text file, content file, data file, photo, video, electronic work, audiovisual work, multimedia work and literary work; Video and audio sensors being patient monitoring sensors for use in remote monitoring, analysis and alert notification of patient health, safety and wellness

 

Class 35:  Advertising services; Marketing services; Sales promotion for others; Marketing, advertising, and promoting the goods and services of others; Business data analysis, namely, collection, tracking, analysis and reporting of consumer behavioral data for marketing purposes; Business data analytics and processing; Providing business information; Compilation of information into computer databases; Systemization of information into computer databases; Compiling and processing of business data including graphical, image, text, object, optical character, object recognition, gesture, pedestrian traffic, motion, sound, visual information and other data; Analyzing and compiling business data including graphical, image, text, object, optical character, object recognition, gesture, pedestrian traffic, motion, sound, visual information and other data; Updating and maintenance of data in computer databases; Record management services, namely, web document indexing for commercial or advertising purposes for others; Search engine optimization for sales promotion; Presentation of goods and services on communication media, for retail purposes; Electronic data collection and data submission services for business purposes in the fields of retail, medicine and healthcare; Provision of an on-line marketplace for buyers and sellers of goods and services; Processing, analyzing, tracking and reporting business data in the nature of image, text, object, optical character, motion, sound, voice, gesture, body motion, body orientation and other data for use in healthcare, home monitoring, medical, building construction, construction, repair, vehicle security, home security, building and construction site supervision, safety and security and veterinary services; Consulting services in the field of medical practice management for others

 

Class 36:  Insurance and financial information and consultancy services

 

Class 37:  Technical support services in the nature of providing installation of theft prevention devices

 

Class 41:  Education services, namely, providing training and seminars in the fields of science, technology, healthcare, artificial intelligence, artificial intelligence (AI) based monitoring, data collection, data analysis and data management; Education services, namely, providing educational information in the academic fields of science, technology, healthcare, artificial intelligence, artificial intelligence (AI) based monitoring, data collection, data analysis and data management for the purpose of academic study; Providing online non-downloadable videos and articles in the fields of science, technology, healthcare, artificial intelligence, artificial intelligence (AI) based monitoring, data collection, data analysis and data management

 

Class 42:  Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in monitoring, tracking, analyzing and alert notification of health, wellness, fitness, stress, activity and sleep metrics; Development of and providing software as a service (SAAS) services featuring software for use in monitoring, tracking, analyzing and alert notification of health, wellness, fitness, stress, activity and sleep metrics; Development of and providing platform as a service (PAAS) services featuring software platforms for use in monitoring, tracking, analyzing and alert notification of health, wellness, fitness, stress, activity and sleep metrics; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in monitoring, tracking, analyzing and alert notification of healthcare related metrics including heart rate, activity levels, sleep quality and respiratory activity; Development of and providing software as a service (SAAS) services featuring software for use in monitoring, tracking, analyzing and alert notification of healthcare related metrics including heart rate, activity levels, sleep quality and respiratory activity; Development of and providing platform as a service (PAAS) services featuring software platforms for use in monitoring, tracking, analyzing and alert notification of healthcare related metrics including heart rate, activity levels, sleep quality and respiratory activity; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in environmental, health, safety, security and equipment monitoring, control, automation and notification systems; Development of and providing software as a service (SAAS) services featuring software for use in environmental, health, safety, security and equipment monitoring, control, automation and notification systems; Development of and providing platform as a service (PAAS) services featuring software platforms for use in environmental, health, safety, security and equipment monitoring, control, automation and notification systems; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in remotely interacting with environmental, building, health, safety, security and equipment monitoring, control, automation and notification systems; Development of and providing software as a service (SAAS) services featuring software for use in remotely interacting with environmental, building, health, safety, security and equipment monitoring, control, automation and notification systems; Development of and providing platform as a service (PAAS) services featuring software platforms for use in remotely interacting with environmental, building, health, safety, security and equipment monitoring, control, automation and notification systems; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in sharing and transmission of data and information between electronic monitoring devices and sensors for the purposes of facilitating environmental, health, safety, security, equipment monitoring, control, automation and notification; Development of and providing software as a service (SAAS) services featuring software for use in sharing and transmission of data and information between electronic monitoring devices and sensors for the purposes of facilitating environmental, health, safety, security, equipment monitoring, control, automation and notification; Development of and providing platform as a service (PAAS) services featuring software platforms for use in sharing and transmission of data and information between electronic monitoring devices and sensors for the purposes of facilitating environmental, health, safety, security, equipment monitoring, control, automation and notification; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in motion, humidity, temperature, and light monitoring, tracking, control, automation in building, facility, factory and manufacturing environments; Development of and providing software as a service (SAAS) services featuring software for use in motion, humidity, temperature, and light monitoring, tracking, control, automation in building, facility, factory and manufacturing environments; Development of and providing platform as a service (PAAS) services featuring software platforms for use in motion, humidity, temperature, and light monitoring, tracking, control, automation in building, facility, factory and manufacturing environments; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances; Development of and providing software as a service (SAAS) services featuring software for use in monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances; Development of and providing platform as a service (PAAS) services featuring software platforms for use in monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in building supervision, construction site supervision, compliance tracking, detection of anomalies; Development of and providing software as a service (SAAS) services featuring software for use in building supervision, construction site supervision, compliance tracking, detection of anomalies; Development of and providing platform as a service (PAAS) services featuring software platforms for use in building supervision, construction site supervision, compliance tracking, detection of anomalies; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in image detection, text recognition, optical character recognition, body orientation recognition, motion detection, object detection, video object detection, sound recognition, voice recognition, image recognition, remote image sensing, scene analysis, scene recognition, character detection and recognition, object detection and tracking, vehicle type recognition, vehicle recognition, vehicle detection, garment attributes recognition, pedestrian detection, pedestrian attributes detection, people detection, people counting, density estimation, commercial invoicing recognition, image processing, video stabilization, modifying the appearance of photographs and videos, taking and editing photographs and recording and editing videos, security systems, and authentication of electronic payment processing; Development of and providing software as a service (SAAS) services featuring software for use in image detection, text recognition, optical character recognition, body orientation recognition, motion detection, object detection, video object detection, sound recognition, voice recognition, image recognition, remote image sensing, scene analysis, scene recognition, character detection and recognition, object detection and tracking, vehicle type recognition, vehicle recognition, vehicle detection, garment attributes recognition, pedestrian detection, pedestrian attributes detection, people detection, people counting, density estimation, commercial invoicing recognition, image processing, video stabilization, modifying the appearance of photographs and videos, taking and editing photographs and recording and editing videos, security systems, and authentication of electronic payment processing; Development of and providing platform as a service (PAAS) services featuring software platforms for use in image detection, text recognition, optical character recognition, body orientation recognition, motion detection, object detection, video object detection, sound recognition, voice recognition, image recognition, remote image sensing, scene analysis, scene recognition, character detection and recognition, object detection and tracking, vehicle type recognition, vehicle recognition, vehicle detection, garment attributes recognition, pedestrian detection, pedestrian attributes detection, people detection, people counting, density estimation, commercial invoicing recognition, image processing, video stabilization, modifying the appearance of photographs and videos, taking and editing photographs and recording and editing videos, security systems, and authentication of electronic payment processing; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in recording, viewing, storing, sharing and analyzing online audio and video; Development of and providing software as a service (SAAS) services featuring software for use in recording, viewing, storing, sharing and analyzing online audio and video; Development of and providing platform as a service (PAAS) services featuring software platforms for use in recording, viewing, storing, sharing and analyzing online audio and video; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in gathering, compiling, reporting and analyzing graphical, visual and audial information and data; Development of and providing software as a service (SAAS) services featuring software for use in gathering, compiling, reporting and analyzing graphical, visual and audial information and data; Development of and providing platform as a service (PAAS) services featuring software for use in gathering, compiling, reporting and analyzing graphical, visual and audial information and data; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in artificial intelligence (AI) based image, text, object, optical character, body orientation, motion, sound detection and recognition; Development of and providing software as a service (SAAS) services featuring software for use in artificial intelligence (AI) based image, text, object, optical character, body orientation, motion, sound detection and recognition; Development of and providing platform as a service (PAAS) services featuring software platforms for use in artificial intelligence (AI) based image, text, object, optical character, body orientation, motion, sound detection and recognition; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in monitoring, analyzing, tracking and alert notification of image, text, object, optical character, motion, sound, voice, gesture, body motion, body orientation, anomalous events and other data in connection with the provision of healthcare, home monitoring, patient monitoring, medical, veterinary, repair, vehicle, home, building and construction site supervision, monitoring, safety and security services; Development of and providing software as a service (SAAS) services featuring software for use in monitoring, analyzing, tracking and alert notification of image, text, object, optical character, motion, sound, voice, gesture, body motion, body orientation, anomalous events and other data in connection with the provision of healthcare, home monitoring, patient monitoring, medical, veterinary, repair, vehicle, home, building and construction site supervision, monitoring, safety and security services; Development of and providing platform as a service (PAAS) services featuring software platforms for use in monitoring, analyzing, tracking and alert notification of image, text, object, optical character, motion, sound, voice, gesture, body motion, body orientation, anomalous events and other data in connection with the provision of healthcare, home monitoring, patient monitoring, medical, veterinary, repair, vehicle, home, building and construction site supervision, monitoring, safety and security services; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in processing data; Development of and providing software as a service (SAAS) services featuring software for use in processing data; Development of and providing platform as a service (PAAS) services featuring software platforms for use in processing data; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in editing images, sound and video; Development of and providing software as a service (SAAS) services featuring software for use in editing images, sound and video; Development of and providing platform as a service (PAAS) services featuring software platforms for use in editing images, sound and video; Development of and providing temporary use of online non-downloadable software and non-downloadable cloud-based software for use in health care, medical services, home-based care for the disabled and elderly, building safety, security, babysitting, childcare, hospitality, construction site safety, vehicle security; Development of and providing software as a service (SAAS) services featuring software for use in health care, medical services, home-based care for the disabled and elderly, building safety, security, babysitting, childcare, hospitality, construction site safety, vehicle security; Development of and providing platform as a service (PAAS) services featuring software platforms for use in health care, medical services, home-based care for the disabled and elderly, building safety, security, babysitting, childcare, hospitality, construction site safety, vehicle security; Computer programming; Computer software design; Updating of computer software; Electronic data storage; Electronic storage of electronic media, namely, images, text, audio, and video data; Maintenance of computer software; Providing information on computer technology and programming via a web site; Installation of computer software; Conversion of data or documents from physical to electronic media; Computer system design; Cloud computing featuring software for use in database management and image, sound, and video processing; Software as a service (SAAS) services featuring software for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}; Platform as a service (PAAS) services featuring computer software platforms for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}; Platform as a service (PAAS) services featuring computer software platforms for use in building and construction site supervision, monitoring, compliance tracking, safety reporting, detection and alert notification of anomalies, for use in maintenance and repair services including monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances, and for use in building supervision, construction site supervision, compliance tracking; Providing a website featuring temporary use of non-downloadable software for use in building and construction site supervision, monitoring, compliance tracking, safety reporting, detection and alert notification of anomalies, for use in maintenance and repair services including monitoring, maintenance and anomaly detection of machinery, vehicles, equipment, instruments and appliances, and for use in building supervision, construction site supervision, compliance tracking; Providing an internet site for medical purposes, namely, providing a website featuring on-line non-downloadable software that allows users to remotely interact with patient monitoring and automated alert notification systems

 

Class 44:  Health care services; Home healthcare services; Medical services; Medical diagnostic and monitoring services through the use of wearable and contactless medical devices, sensors and monitoring apparatuses; Health care services, namely, collection and provision of health data and information for treatment and diagnostic purposes; Providing medical information and data being medical information; Health monitoring services being medical services provided through the use of wearable and contactless monitoring devices and sensors with automated alert and monitoring capacity for use in connection with health care, home health, medical, and veterinary services; Healthcare, veterinary and medical services, namely, monitoring, storing, relaying, tracking, measuring, analyzing, displaying and automated alert notification of vital signs and motion data such as heart rate, respiration, body movement, body orientation, activity intensity, type of activity, sleep quality and body movement; Healthcare and wellbeing services, namely, providing an internet site featuring medical information for use in monitoring, tracking, analyzing, reporting, automated alert notification of health, wellness, fitness, stress, activity and sleep metrics; Health care and medical services, namely, monitoring, tracking, analyzing, reporting and automated alert notification of vital signs and motion data including heart rate, activity levels, body orientation, sleep quality and respiratory activity; Providing health care and wellness information and recommendations being health advice online, through a website, downloadable mobile applications and via electronic communications; Providing information regarding medical diagnosis and health online, through downloadable mobile applications, a website, and via electronic communications; Consulting services in the field of healthcare, namely, consulting services in the field of medical care; Medical services, namely, medical consultation services related to patient management, treatment and monitoring; Medical equipment rental services

 

Class 45:  Home and building security monitoring using wireless and wired sensors, motion detectors, alarms, audio devices, video devices, home automation devices, and security devices and equipment; safety and security monitoring being monitoring of alarms using sensors, cameras and motion detectors; Home security alarm monitoring; Monitoring of security alarm systems; Home and facility medical alarm monitoring for elderly people, disabled people, and children

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or services may not later be reinserted.  See 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.

 

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  

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@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 September 05, 2019 for

U.S. Trademark Application Serial No. 88461001

 

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. 

 

 

/Anna C. Burdecki/

Anna C. Burdecki

Examining Attorney

Law Office 108

(571) 270-1941

anna.burdecki@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 September 05, 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.”