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 23, 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—Advisory
• Amendment To Identification Of Goods And Services Required
• Multiple-Class Application Requirements

 

PRIOR-FILED APPLICATION—ADVISORY

 

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. 87726177 (COMMSCOPE CONNECTIVITY) 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.

 

If the mark in the potentially conflicting prior-filed application has been assigned to applicant, applicant may provide evidence of ownership of the mark to avoid a possible refusal under Trademark Act Section 2(d) based on a likelihood of confusion.  See 15 U.S.C. §1052(d); TMEP §812.01. 

 

Applicant may provide evidence of ownership of the mark by satisfying one of the following:

 

(1)        Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)        Submit copies of documents evidencing the chain of title.

 

(3)        Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of Application Serial No. 87726177.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that  “Applicant is the owner of Application Serial No. 87726177,” inserting the relevant application serial number; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

Although applicant is not required to respond to the above advisory at this time, applicant must timely respond to the below issues to avoid abandonment of the application.

 

AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

• Class 6

 

The wording “Structural support equipment, namely, portable metal structures with flexible covers for telecommunications equipment” in the identification of goods is indefinite and must be clarified because the purpose or use of the goods is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Structural support equipment, namely, portable metal structures with flexible covers for shelter of telecommunications equipment.”

 

The wording “hoisting grips for telecommunications cables and metal support clamps” in the identification of goods for International Class 6 must be clarified because it is overly broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass manual hoists in Class 8 and mechanical hoists in Class 7.

 

• Class 9

 

The wording “optical cable parts, namely, fiber optic cable outlets, and fiber optic cable termination units” in the identification of goods is indefinite and must be clarified because the nature of the goods, specifically of the “fiber optic cable termination units” is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “optical cable parts, namely, fiber optic cable outlets, and fiber optic cable termination units in the nature of cable connectors.”

 

The wording “electrical transmission lines used for wireless applications” in the identification of goods is indefinite and must be clarified because the nature of the goods is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “telecommunications cables, namely, electrical transmission lines used for wireless applications.”

 

The identification in International Class 9 contains several entries for “computer software”, which is indefinite and overly broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).  See below for proposed amendment to the identification.

 

The wording “apparatus for monitoring, measuring, testing and controlling electrical signals” in the identification of goods is indefinite and must be clarified because the nature of the goods is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

The wording “optical electronic communications equipment, namely, optical network units, fiber optic transceivers, fiber optic repeaters, optical network units, optical amplifiers, optical transmitters, optical nodes, optical receivers, optical electronic components in the nature of optical cables, optical data links, and optical transceivers” in the identification of goods is indefinite and must be clarified because the nature of the goods, specifically of the “optical network units” is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Moreover, the wording “optical network units” is repeated in the listing of goods.  Applicant may substitute the following wording, if accurate:  “optical electronic communications equipment, namely, optical network units in the nature of communication link testers for testing communication links, fiber optic transceivers, fiber optic repeaters, optical amplifiers, optical transmitters, optical nodes, optical receivers, optical electronic components in the nature of optical cables, optical data links, and optical transceivers.”

 

The wording “signal splitters, including fiber-optic signal splitters” and “optical couplers including outside plant optical coupler” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a).  Moreover, applicant must specify the use or purpose of the signal splitters.

 

Applicant has included the term “or” in the identification of goods, specifically, in “telecommunications apparatus and instruments, namely, mechanical splices for optical or telecommunications transmission lines, tool-less splices for optical or telecommunications transmission lines, modular building termination optical or electrical blocks, fiber management hardware in the nature of fiber optic cable raceways, fiber optic distribution frames, namely, fiber optic distribution boxes.”  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 which splices applicant intends to use the mark on.

 

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. 

 

The wording “cable and wiring face plates, namely, telecommunications cable faceplates for telecommunication cables and wiring, surface mount zone electrical distribution boxes, and wall switches” in the identification of goods is indefinite and must be clarified because the nature of the goods is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “cable and wiring outlet face plates, namely, telecommunications cable faceplates for telecommunication cables and wiring, surface mount zone electrical distribution boxes, and wall electrical switches.”

 

The wording “communications systems equipment, namely, for voice, data, and video utilized in the cable television, telephone, and power industries” in the identification of goods is indefinite and must be clarified because the nature of the goods is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the particular types of equipment.  Applicant may substitute the following wording, if accurate:  “communications systems equipment, namely, for voice, data, and video utilized in the cable television, telephone, and power industries in the nature of electronic communications systems comprised of computer hardware and recorded software for the transmission of data between two points”.

 

The wording “cable television, wireless communication, head end and central office, video servers, video processors, video receivers, set top boxes, multimedia terminal adapters, routers, modems, cable modems and cable modem termination systems comprising switches, processors, volatile memories, non-volatile memories, input and output ports, input and output interface circuitry and software to manage and control the switches, processors, volatile memories, non-volatile memories, input and output ports and input and output interface circuitry for routing and managing communications traffic” in the identification of goods is indefinite and must be clarified because the nature of the goods is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the applicant must clarify the types of multimedia terminal adapters, and routers.  Applicant may substitute the following wording, if accurate:  “cable television, wireless communication, head end and central office video servers, video processors, video receivers, set top boxes, multimedia terminal electrical adapters, network routers, modems, cable modems and cable modem termination systems comprising switches, processors, volatile memories, non-volatile memories, input and output ports, input and output interface circuitry and downloadable software to manage and control the switches, processors, volatile memories, non-volatile memories, input and output ports and input and output interface circuitry for routing and managing communications traffic”.

 

The wording “soundbars” in the identification of goods is indefinite and must be clarified because the nature of the goods is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate: “soundbar speakers”.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods in International Class 9 for “LAN (local area network) operating software.”  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, but not to broaden or expand the goods 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 may not later be reinserted.  TMEP §1402.07(e).

 

• Class 35

 

Applicant has classified “Computer software for networking and wireless applications” in International Class 35; however, the proper classification is International Class 9 for downloadable or recorded software and Class 42 for providing online nondownloadable software.  Therefore, applicant may respond by (1) reclassifying these goods and/or services in the proper international class, (2) deleting “Computer software for networking and wireless applications” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

• Class 38

 

The wording “providing cable telephony and videoconferencing services” and “providing converged cellular and cable telephony services” in the identification of services is indefinite and must be clarified because the nature of the telephony services is uncertain.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “providing cable telephony communications services and videoconferencing services” and “providing converged cellular and cable telephony communications services”.

 

• Class 42

 

The wording “development, maintenance and updating of telecommunications and radio frequency software systems and networks” in the identification of services for International Class 42 must be clarified because it is overly broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, while development, maintenance, and updating of software is in Class 42 and development of telecommunications network hardware is in Class 42, maintenance and updating of telecommunications network hardware is in Class 37.

 

The wording “technical support services, namely, remote and on-site support, for home networking devices” in the identification of services for International Class 42 must be clarified because it is overly broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, the services may include troubleshooting in the nature of diagnosing computer hardware and software problems in Class 42 and troubleshooting in the nature of repair of computer hardware in Class 37.

 

In summary, applicant may adopt the following amended identification, if accurate (proposed amendments in bold):

 

Class 6: Structural support equipment, namely, portable metal structures with flexible covers for shelter of telecommunications equipment; steel and metal infrastructure components for use in wireless communications, namely, support brackets and clamps specially adapted for installing and supporting antennas, antenna mounts, cable support components in the nature of universal sector frames, monopole T-frame kits, universal pipe mount kits, cable ladders, water tower mount kits, rooftop mount kits, microwave dish mounts, chain mounts, and microwave antenna ice shields;

 

Class 7: mechanical hoists, namely, hoisting grips for telecommunications cables and metal support clamps

 

Class 8: Network infrastructure installation tools, namely, cable preparation tools for preparing telecommunication cables for connector attachment in the nature of hand tools for stripping and crimping telecommunication cables; fiber installation tools and accessories, namely, hand tools for splicing, terminating and connecting fiber optic cables and connectors; raceway installation tools, namely, hand tools for drilling, cutting and connecting telecommunication cable management raceways; wireless installation hand tools, namely, hand tools for stripping and crimping network and telecommunication cables; Cable termination and cable connection tools, namely, hand tools for cutting, stripping, terminating, crimping and connecting telecommunication cables; manual hoists, namely, hoisting grips for telecommunications cables and metal support clamps

 

Class 9: Antennas, namely, base station antennas, dual-polarized antennas, remote electrical tilt antennas, point to point antennas, microwave antennas, radio frequency antennas, and broadband antennas; radiating radio frequency telecommunication cables; base station and in-building wireless equipment, namely, indoor antennas, distributed antennas, fiber-based distributed antennas, and radio-over-fiber distributed antennas; wireless radio transmitters, and receivers, transceivers, sound amplifiers and digital signal processors for repeating, reshaping and reformatting data signals; control and diagnostic systems for wireless telecommunications base station antennas, namely, handheld remote electrical downtilt diagnostic electric controllers; Cable Assemblies, namely, copper telecommunications cable assemblies, fiber optic cable assemblies, pre-terminated fiber-optic cables, and pre-terminated RF jumper cables; Cable Routing and Management Equipment, namely, horizontal and vertical cable manager racks for supporting, organizing and protecting multiple telecommunication cables, fiber optic cable raceways, cable runway racks for supporting, organizing and protecting multiple telecommunication cables, and shelving mounting racks for telecommunications hardware; communications cable accessories, namely, surge protectors and cable pathway plastic conduits for holding coaxial cables, fiber optic cables, twisted pair cables and hybrids thereof; metal cabinets specially adapted to protect telecommunications equipment in the nature of telecommunication cables and runway and horizontal and vertical cable manager housings for supporting, organizing and protecting multiple telecommunication cables; optical cable parts, namely, fiber optic cable outlets, and fiber optic cable termination units in the nature of cable connectors; blank fiber optic storage devices, namely, storage racks for storing fiber optic cables; Communications cables, namely, coaxial cables, fiber optic cables, twisted pair telecommunication cables and hybrid fiber optic cables, patch telecommunication cables, jumper cables and trunk cables in the nature of telecommunication cables; telecommunications cables, namely, electrical transmission lines used for wireless applications; remote electrical tilt cables; communications cable connectors for coaxial, fiber optic and twisted pair cables and hybrids thereof; electrical and fiber optic connector plugs; fiber-optic closures and terminals in the nature of fiber-optic cable junction box housings and telecommunication cable connecting blocks for connecting the terminal ends of cables; plug adaptors; coaxial and fiber-optic cable taps; communications and data cable connector accessories, namely, protective weatherproofing silicone rubber molded boot sheaths designed to seal and protect electrical, RF, and fiber optic cable connections; telecommunication wall jacks; Radio Access Network products, namely, distributed antenna systems consisting of radio-frequency antennas, RF repeater systems consisting of repeaters for cellular radio communication, small RF cells, and associated downloadable software for powering, managing, designing and testing these systems; wireless distribution system comprising waveguides, elliptical waveguides, rigid and flexible waveguides, and elliptical waveguide cables; portable reading apparatus for radio frequency identification (RFID), namely, RFID readers; cased or framed control apparatus consisting of system electrical controllers, logic analyzers, and gateways mounted on electrical switch plates and frames that unite and group data to communicate with software; portable communication and power modules, namely, integrated circuit modules for the operation of a data communication system within a fiberglass hub and enabling communication via wireless connection with software and mobile devices; products for radio frequency identification (RFID), namely, labels in the nature of radio frequency identification tags, RFID readers, and handheld RFID readers; apparatus for monitoring, measuring, testing and controlling electrical signals, namely, ___________ {applicant must specify particular apparatus, e.g., electrical attenuator, signal processors, computer-controlled apparatus for testing and measuring electrical signals, etc.}; Downloadable computer systems software for processing communications signals associated with geolocation devices, managing and controlling telecommunications equipment and systems from remote locations and evaluating wireless voice and data transmissions; downloadable software for use in designing, installing, operating, optimizing and maintaining telecommunications equipment; data transmission apparatus in the field of telecommunication transmission; digital optical transmission apparatus for transmission of telecommunications data; apparatus for transmission of sound and images; optical electronic communications equipment, namely, optical network units in the nature of communication link testers for testing communication links, fiber optic transceivers, fiber optic repeaters, optical amplifiers, optical transmitters, optical nodes, optical receivers, optical electronic components in the nature of optical cables, optical data links, and optical transceivers; data processing apparatus in the field of telecommunication transmission; computers for use in the field of telecommunication transmission; downloadable computer software for managing, monitoring, visualizing and optimizing data center infrastructure and its performance and for centralized control and management of computing and network devices distributed throughout an organization providing networking and storage services; signal splitters for electronic apparatus, namely, fiber-optic signal splitters; optical couplers, namely, outside plant optical coupler; RF amplifiers, RF signal splitters for electronic apparatus, terminations in the nature of electrical terminators, and electrical signal attenuators; optical filters and electronic combiners for connecting antennas and receivers; multiplexers; tower mounted amplifiers; drop amplifiers; electrical termination blocks; RF conditioning products for outdoor cell sites, namely, radio-frequency controlled transmitters; distribution enclosures, namely, electrical distribution boxes; copper splice closures, namely, splices for electrical transmission lines; fiber splice enclosures namely, splices for fiber optic transmission lines; FTTA enclosures, namely, junction boxes; FTTA shelves, namely, mounting racks for fiber optic junction boxes; fiber panels and cassettes, namely, fiber-optic control panels for connecting multiple data and fiber optic devices; copper panels and cassettes, namely, copper telecommunications signal control panels for connecting multiple data and electrical devices; mounting racks and cabinets for telecommunications hardware; fiber-optic mounting racks and panels for telecommunication hardware; telecommunication fiber optic and copper telecommunications control patch panels for housing patch telecommunication cables; battery cases for housing back-up batteries; metal cabinets specially adapted to protect telecommunications equipment in the nature of power supplies and electronic equipment for telecommunications systems; DC-DC power convertors for use with patch panels in communications and data infrastructure network systems; power supply converters for use with antennas and transceivers; telecommunications apparatus and instruments, namely, mechanical splices for optical and telecommunications transmission lines, tool-less splices for optical and telecommunications transmission lines, modular building termination optical and electrical blocks, fiber management hardware in the nature of fiber optic cable raceways, fiber optic distribution frames, namely, fiber optic distribution boxes; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electrical or optical signals, namely, telecommunications equipment in the nature of fiber optic splice closures, fiber optic splice and telecommunications cable housings, fiber optic splice and telecommunications cable distribution boxes, fiber management hardware in the nature of fiber optic cable raceways, fiber optic and telecommunications cable distribution frame housings, fiber optic or telecommunications cable connectors, fiber optic and telecommunications cable plugs, fiber optic and telecommunications cable adapters, fiber optic splices for optical transmission lines, fiber optic splice trays in the nature of fiber optic splice closures, and fiber optic splice cassettes; fiber storage baskets, namely, mounting racks for telecommunications hardware; cable and wiring outlet face plates, namely, telecommunications cable faceplates for telecommunication cables and wiring, surface mount zone electrical distribution boxes, and wall electrical switches; communications systems equipment, namely, for voice, data, and video utilized in the cable television, telephone, and power industries in the nature of electronic communications systems comprised of computer hardware and recorded software for the transmission of data between two points; computer hardware for telecommunications; cable television, wireless communication, head end and central office video servers, video processors, video receivers, set top boxes, multimedia terminal electrical adapters, network routers, modems, cable modems and cable modem termination systems comprising switches, processors, volatile memories, non-volatile memories, input and output ports, input and output interface circuitry and downloadable software to manage and control the switches, processors, volatile memories, non-volatile memories, input and output ports and input and output interface circuitry for routing and managing communications traffic; downloadable software for operational management and service of cable television; computer hardware and computer peripherals; soundbar speakers; Computer hardware and downloadable software for setting up and configuring local area networks; Computer hardware and downloadable software for setting up and configuring wide area networks; Computer networking hardware; Computer hardware, namely, wireless access points (WAP) devices, wireless network repeaters, wireless network extenders and wireless local area network (WLAN) controllers; Downloadable computer software for networking and wireless applications; Downloadable computer software and computer hardware for wireless content delivery, and for setting up and configuring computer networks; Downloadable computer software for administration of computer local area networks; LAN (local area network) access points for connecting network computer users; LAN (local area network) hardware; Downloadable LAN (local area network) operating software; ethernet-over-VDSL access aggregators, terminators and repeaters, and remote presence management products, namely, switches, and console, alarm, sensor and power management devices; Wireless adapters for computers; Wireless adapters used to link computers to a telecommunications network; Wireless communication devices for voice, data or image transmission; Downloadable computer software and computer hardware for wireless content delivery; Downloadable computer software and computer hardware for creating, operating and managing wireless, mobile, LAN (local area network) and WAN (wide area networks); Downloadable VPN (virtual private network) operating software; PoE (Power over Ethernet) switches, downloadable computer software for wireless content delivery; LAN (local area network) computer cards for connecting portable computer devices to computer networks and the Internet; telecommunication and data networking hardware, namely, devices for transporting and aggregating voice, data and video communications across multiple network infrastructures and communication protocols; downloadable computer application software for mobile phones, namely, software for creating, operating and managing wireless, mobile, local area (LAN), and wide area (WAN) networks; downloadable computer application software, namely, software for creating, operating and managing wireless, mobile, local area (LAN), and wide area (WAN) networks; downloadable computer software for telecommunications, namely, software for the administration of local area (LAN) and wide area (WAN) networks consisting of computer networking hardware, networked modems, lighting, cameras, speakers, HVAC systems and sensors, air quality sensors, temperature sensors, humidity sensors, water and moisture sensors, wind sensors, security systems, motion sensors and door locks, home automation hubs and autonomous devices in the internet of things (IoT); downloadable computer software for wireless content delivery; downloadable software for connecting, operating, and managing networked modems, lighting, cameras, speakers, HVAC systems and sensors, air quality sensors, temperature sensors, humidity sensors, water and moisture sensors, wind sensors, security systems, motion sensors and door locks, home automation hubs and autonomous devices in the internet of things (IoT); computer hardware for connecting, operating, and managing networked modems, access points, lighting, cameras, speakers, HVAC systems and sensors, air quality sensors, temperature sensors, humidity sensors, water and moisture sensors, wind sensors, security systems, motion sensors and door locks, home automation hubs and autonomous devices in the internet of things (IoT); downloadable computer software and computer hardware for the application and management of software-defined networking technology in a wide area network (SD-WAN); downloadable computer software for networking and wireless applications

 

Class 35: Retail store services featuring telecommunications hardware and software; Computerized on-line retail store services in the field of telecommunications hardware and software; Connecting qualified service providers with consumers; Providing a website for connecting sellers with buyers

 

Class 37: Network infrastructure services, namely, installation, maintenance and repair of telecommunications and radio frequency related products, equipment, devices and components, namely, wireless devices for transmitting and receiving communication signals, and radio frequency antennas, telecommunication cables, filters, combiners and duplexers; Providing communications networks in the fields of computer and cable networks, namely, installation of computer networking hardware including data, audio and video hardware; providing wireless computer networking services, namely, installation of wireless computer networking hardware, including data, audio and video hardware; Technical support services, namely, troubleshooting in the nature of the repair of computer hardware and home networking devices; installation, maintenance and repair of computer networking hardware; installation, maintenance and repair of wireless networking hardware; maintenance and updating of telecommunications and radio frequency network hardware; technical support services, namely, remote and on-site support for home networking devices featuring troubleshooting in the nature of repair of computer hardware

 

Class 38: Providing communications networks in the fields of computer and cable networks, namely, transmission of information by electronic computer and cable communications networks; broadcasting, multicasting, and unicasting video and audio programs via computer and cable networks; providing cable telephony communications services and videoconferencing services; providing telecommunications services, namely, cable television transmission, cellular telephone services, and video broadcasting via the Internet; providing wireless computer networking services, namely, providing multiple user wireless access to the Internet and transmission of voice, audio, data and images by computer communications networks; providing converged cellular and cable telephony communications services; distributing video, data, and telephony services, namely, broadcasting and transmission of data, audio and video by cable and computer networks; Communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; Consulting services in the field of communications; Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Telecommunication services, namely, providing internet access via broadband optical or wireless networks; Telecommunications services, namely, wireless telephony and wireless broadband communications services for the transmission of voice and data

 

Class 42: Technical support services, namely, troubleshooting in the nature of diagnosing performance of telecommunication equipment for retrieval of data through automated attendant services; development, maintenance and updating of telecommunications and radio frequency software systems and development of telecommunications and radio frequency network hardware; design and development of telecommunications networks; data automation and collection service using proprietary software to evaluate, analyze and collect service data; data and voice encryption services; product testing in the field of telecommunications; application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the field of wireless communication and mobile information access; network infrastructure services, namely, engineering of telecommunications and radio frequency related products, equipment, devices and components, namely, wireless devices for transmitting and receiving communication signals, and radio frequency antennas, telecommunication cables, filters, combiners and duplexers; Computer software and hardware design, engineering, and product development in the field of telephony, cable television, wireless communication, broadband and optical fiber networks; technology consultation in the field of telecommunications; Cloud computing featuring software for use networking and wireless applications; Consulting services in the field of cloud computing; Design and development of computer software for networking and wireless applications; Technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; Technical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; technical support services, namely, remote and on-site support for home networking devices featuring troubleshooting in the nature of  diagnosing computer hardware and software problems; Providing online nondownloadable computer systems software for processing communications signals associated with geolocation devices, managing and controlling telecommunications equipment and systems from remote locations and evaluating wireless voice and data transmissions; providing online nonndownloadable software for use in designing, installing, operating, optimizing and maintaining telecommunications equipment; providing online nondownloadable computer software for managing, monitoring, visualizing and optimizing data center infrastructure and its performance and for centralized control and management of computing and network devices distributed throughout an organization providing networking and storage services; providing online nondownloadable software for setting up and configuring local area networks; providing online nondownloadable software for setting up and configuring wide area networks; providing online nondownloadable computer software for networking and wireless applications; providing online nondownloadable computer software for wireless content delivery, and for setting up and configuring computer networks; providing online nondownloadable computer software for administration of computer local area networks; providing online nondownloadable LAN (local area network) operating software; providing online nondownloadable computer software for wireless content delivery; providing online nondownloadable computer software for creating, operating and managing wireless, mobile, LAN (local area network) and WAN (wide area networks); providing online nondownloadable VPN (virtual private network) operating software; providing online nondownloadable computer application software for mobile phones, namely, software for creating, operating and managing wireless, mobile, local area (LAN), and wide area (WAN) networks; providing online nondownloadable computer application software, namely, software for creating, operating and managing wireless, mobile, local area (LAN), and wide area (WAN) networks; providing online nondownloadable computer software for telecommunications, namely, software for the administration of local area (LAN) and wide area (WAN) networks consisting of computer networking hardware, networked modems, lighting, cameras, speakers, HVAC systems and sensors, air quality sensors, temperature sensors, humidity sensors, water and moisture sensors, wind sensors, security systems, motion sensors and door locks, home automation hubs and autonomous devices in the internet of things (IoT); providing online nondownloadable computer software for the application and management of software-defined networking technology in a wide area network (SD-WAN); providing online nondownloadable computer software for networking and wireless applications

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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)/Trademark Act Section 44/Trademark Act Sections 1(b) and 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least eight classes; however, applicant submitted fees sufficient for only seven classes.  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.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

Melissa S. Winter

/Melissa S. Winter/

Examining Attorney

Law Office 122

571-272-7913

Melissa.Winter@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 23, 2019 for

U.S. Trademark Application Serial No. 88473323

 

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. 

 

 

Melissa S. Winter

/Melissa S. Winter/

Examining Attorney

Law Office 122

571-272-7913

Melissa.Winter@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 23, 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.”