Examiners Amendment

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

EXAMINER’S AMENDMENT

 

 

Issue date:  January 31, 2020

 

INTRODUCTION

On October 4, 2019, the examining attorney refused registration of Applicant’s mark for Classes 011, 037, and 42 under Section 2(d) of the Trademark Act, for a likelihood of confusion with a registered mark. The office Action also contained a requirement for an amended identification of the goods and services in the mark. Based on the amendments below, the refusal is withdrawn and the requirement considered satisfied.

 

Application has been amended as shown below.  As agreed to by Jay M. Brown on January 31, 2020, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  Otherwise, no response is required.  Id.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

AMENDED GOODS AND SERVICES

The identification of goods and services is amended to read as follows: 

 

CLASS 9: computer hardware and recorded software systems for visualizing lighting fixtures and lighting systems and their performance; computer hardware and recorded software systems for design, visualization, specification and installation of lighting for built environments; downloadable database management software for creating, managing, searching and accessing a database of lighting fixtures and associated performance and business metrics; computer hardware and recorded software systems for autonomous emotion-driven lighting design and specification; computer hardware and recorded software systems for measurement and characterization of lighting fixture performance; computer hardware and recorded software systems for modeling lighting fixtures; downloadable virtual reality, augmented reality and mixed reality software for design, visualization and specification of lighting fixtures and systems; computer hardware and recorded software systems for measurement, calculation, visualization and characterization of a lighting fixture's electrical, mechanical, spectral, optical and photometric performance, both in the near-field and in the far-field, including but not limited to wattage, dimensions, spectral power distribution, spatial and angular light distribution; computer hardware and recorded software systems for advertising and marketing of lighting systems and fixtures; downloadable virtual reality, augmented reality and mixed reality software for visualizing lighting fixtures and lighting systems and their performance; recorded virtual reality, augmented reality and mixed reality software for visualizing lighting fixtures and lighting systems and their performance; measuring and testing apparatus for determining properties of light, namely, radiance, luminance, chromaticity, reflectance, transmittance, scatter, bidirectional reflectance distribution function (brdf), bidirectional transmittance function (brtf), color, contrast, color temperature, spectral power distribution and illuminance; downloadable computer operating system software for light configuration for residential, commercial and industrial facilities; light configuration software for use in residential, commercial and industrial facilities; computer hardware and recorded software systems for configuring lights; downloadable cloud-based software for configuring lights by a cloud computing platform; downloadable computer-aided design (cad) software for designing light installations; downloadable or recorded computer and mobile application software for designing the layout of light installations; computer hardware and recorded software systems enabling users to configure lights; downloadable computer software for use in the field of virtual reality, augmented reality and mixed reality; downloadable software for use in enabling computers, handheld consoles, tablet computers, mobile devices, and smart phones to provide virtual reality, augmented reality and mixed reality experiences; downloadable software for use in connection with virtual reality, augmented reality and mixed reality for creating, sharing, and viewing, content online over the internet; downloadable software for the visualization of lighting systems; software, recorded and downloaded, namely, programs for the design, planning, simulation, visualization, in the nature of depicting the design in three-dimensional graphic design and analysis, of installations for lighting; downloadable computer software for lighting effect visualizations; downloadable software for characterizing, mapping and displaying both the spatial and angular distribution of light radiating from light sources; downloadable computer software for the design and analysis of optical and photometric systems; downloadable software for measuring the properties of light, namely, radiance, luminance, chromaticity, reflectance, transmittance, scatter, bidirectional reflectance distribution function (brdf), bidirectional transmittance function (brtf), color, contrast, color temperature, spectral power distribution and illuminance; downloadable computer software for use in connection with virtual reality, augmented reality and mixed reality systems enabling users to visualize lighting fixtures and lighting systems and their performance

CLASS 11: landscape lighting installations; LED lights for use in industrial lighting applications

CLASS 35: providing advertising space on free-standing visual advertising systems featuring the goods and services of others, namely, lighting fixtures and lighting systems and their performance; design of advertising materials with respect to the development of visualization technologies for advertisement, sales, selection and implementation of light installations; providing virtual reality, augmented reality and mixed reality product information for visualizing lighting fixtures and lighting systems and their performance

CLASS 37: configuration and implementation of lights and lights having LEDS, namely, lighting apparatus installation for industrial facilities

CLASS 42: design of visualization technologies, and development of visualization technologies, for advertisement of the commercial products and business of others, namely, lighting fixtures and lighting systems; computer services, namely, electronic imaging of lighting fixtures and lighting systems and their performance; custom development of lighting fixtures and lighting systems and their performance; application service provider, namely, hosting, managing, developing, analyzing, and maintaining applications, software, and websites, of others in the fields of advertising and marketing of lighting systems and fixtures; design and development of virtual reality, augmented reality and mixed reality software; visual design services in the nature of designing aesthetic visual elements for representation and selection of light installations; providing temporary online use of non-downloadable software applications for configuring lights, namely, lamps, light fixtures, and lighting systems; providing temporary online use of non-downloadable software applications for configuring lights having light emitting diodes (LEDS); providing temporary online use of non-downloadable software applications for configuring lights; providing temporary online use of non-downloadable software applications for configuring lights in residential, commercial and industrial facilities; providing temporary online use of non-downloadable software applications for configuring lights by a cloud computing platform; providing temporary online use of non-downloadable computer-aided design (cad) software applications for designing light installations; providing temporary online use of non-downloadable software applications featuring technology enabling users to configure lights; lighting design and technology specification services pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential light applications; design for others with respect to specialty interior and exterior light installations; design consultation with respect to planning and layout design services for light installations; custom development of light installations; providing temporary online use of non-downloadable software applications for design, visualization, specification and installation of lighting for built environments; providing an on-line searchable database featuring lighting fixtures and associated performance and business metrics; providing temporary online use of non-downloadable software applications for autonomous emotion-driven lighting design and specification; providing temporary online use of non-downloadable software applications for measurement and characterization of lighting fixture performance; providing temporary online use of non-downloadable software applications for modeling lighting fixtures; providing temporary online use of non-downloadable augmented reality, virtual reality and mixed reality software applications for the design, visualization and specification of lighting fixtures and systems; providing temporary online use of non-downloadable software applications for measurement, calculation, visualization and characterization of a lighting fixture's electrical, mechanical, spectral, optical and photometric performance, both in the near-field and in the far-field, including but not limited to wattage, dimensions, spectral power distribution, spatial and angular light distribution; design of information graphics and data visualization materials; providing temporary online use of non-downloadable software applications for characterizing, mapping and displaying both the spatial and angular distribution of light radiating from light sources; providing temporary online use of non-downloadable software applications for measuring the properties of light, namely, radiance, luminance, chromaticity, reflectance, transmittance, scatter, bi-directional reflectance distribution function (brdf), bi-directional transmittance function (brtf), color, contrast, color temperature, spectral power distribution and illuminance; providing temporary online use of non-downloadable software applications for the design and analysis of optical and photometric systems; technical consulting services in the fields of light and color measurement and designing and calibrating optical and photometrics systems; virtual reality, augmented reality and mixed reality software-as-a-service for visualizing lighting fixtures and lighting systems and their performance

 

See TMEP §§1402.01, 1402.01(e).

 

 

 

GENERAL PROCEDURAL INFORMATION

After the trademark examining attorney issues the examiner’s amendment, applicant will not receive a registration on the Principal Register for the applied-for mark until the mark makes it through the publication process and opposition period.  The publication process starts once the trademark examining attorney issues the examiner’s amendment and the mark is approved for publication in the USPTO’s Trademark Official Gazette, a weekly online publication.  The USPTO will then send a “Notice of Publication” to the applicant specifying the date its mark will publish in this publication.

 

The USPTO publishes applicant’s mark in the Trademark Official Gazette to provide third parties who believe they may be damaged by registration of applicant’s mark an opportunity to oppose registration of that mark within thirty (30) days from the publication date.  An “opposition” is similar to a federal court proceeding, but this proceeding is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal of administrative judges who issue decisions on these matters.  If a third party opposes registration of applicant’s mark by instituting an opposition proceeding, the USPTO will send applicant notice of this opposition.  When this occurs, an applicant may wish to hire an attorney due to the complexity of these proceedings.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s actual use of the mark in commerce or on a foreign registration, the USPTO generally registers the mark and issues a registration certificate within approximately twelve (12) weeks after the publication date.

 

If no one opposes registration of the mark, and the mark was published based upon an applicant’s bona fide intention to use the mark in commerce, the USPTO generally issues a “Notice of Allowance” within approximately eight (8) weeks after the publication date.  Applicant then has six (6) months from the date of the Notice of Allowance to timely file a “Statement of Use” or to file a request for a six-month “Extension of Time to file a Statement of Use” (extension request).  Extension requests are granted in six-month increments and a maximum of five extension requests can be filed after the issuance of the Notice of Allowance.  If a Statement of Use is not filed within the six months after the Notice of Allowance issued, a Statement of Use must be filed within the time period of a previously granted extension request.  The USPTO will only issue a registration certificate after the trademark examining attorney approves a Statement of Use.

 

For an overview of the time frames for when an applicant should file and the USPTO will issue documents related to a trademark application, see Trademark Application and Post-Registration Process Timelines.  Forms for Statements of Use and extension requests, and additional requirements for intent to use applications, are available online at Intent to Use (ITU) Forms.

 

/Aaron Rosenthal/

Examining Attorney

Law Office 120

Telephone: 571-272-4625

Email: Aaron.Rosenthal@USPTO.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 31, 2020 for

U.S. Trademark Application Serial No. 88511574

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

Rosenthal, Aaron

 

 

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).

 

 

 

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.”