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:  December 13, 2019

 

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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Office’s Database Search

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Prior Pending Application

 

The filing date of pending U.S. Application Serial No. 87455161 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.

 

Identification of Goods and Services

 

The wording specified below in the identification of goods and services is indefinite and must be clarified to further specify the nature of the goods and services (see below for explanations and suggestions).  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 and services have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses or describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate: 

 

Class 009:       Scientific, nautical, surveying, photographic, cinematographic, optical, weighing apparatus, measuring apparatus, signaling apparatus, checking apparatus, life-saving apparatus, teaching apparatus, NAMELY, ____ (SPECIFY THE PARTICULAR GOODS AND APPARATUS, e.g., CAMERAS, ELECTRONIC SENSORS); optical, weighing instruments, measuring instruments, signaling instruments, checking instruments, life-saving instruments, teaching instruments, NAMELY, ____ (SPECIFY THE PARTICULAR INSTRUMENTS, e.g., ELECTRONIC-BASED INSTRUMENTS FOR MEASURING ENVIRONMENTAL PARAMETERS INCLUDING HUMIDITY, MOLD, BACTERIA, AIR QUALITY AND WATER QUALITY); apparatus for conducting, switching, converting, storing, controlling, checking electricity, NAMELY, ____ (SPECIFY CLASS 009 GOODS, e.g., ELECTRICITY LIMITERS, ELECTRICITY METERS, ELECTRICITY CONDUITS, ELECTRICITY DISTRIBUTION CONSOLES); instruments for conducting, switching, converting, storing, controlling, checking electricity NAMELY, ____ (SPECIFY CLASS 009 GOODS, e.g., ELECTRICITY LIMITERS, ELECTRICITY METERS, ELECTRICITY CONDUITS, ELECTRICITY DISTRIBUTION CONSOLES); apparatus for recording ___ (SPECIFY WHAT IS BEING RECORDED, e.g., TIME, SOUND, DATA); APPARATUS FOR transmission, processing, reproduction of sound, image, data; PRERECORDED magnetic recording carriers FEATURING ___ (INDICATE SUBJECT MATTER); COMPUTER hardware for data processing; computers; ___ (SPECIFY, e.g., DOWNLOADABLE, RECORDED) computer software FOR ___ (SPECIFY FUNCTION OF SOFTWARE AND IF CONTENT SPECIFIC THE FIELD OR SUBJECT MATTER, e.g., DATA PROCESSING); PRERECORDED ___ (SPECIFY TYPE, e.g., OPTICAL, MAGNETIC) data carriers FEATURING ___ (INDICATE SUBJECT MATTER); BLANK ___ (SPECIFY TYPE, e.g., OPTICAL, MAGNETIC) data carriers; ___ (SPECIFY, e.g., DOWNLOADABLE, RECORDED) computer programs FOR ___ (SPECIFY FUNCTION OF PROGRAMS AND IF CONTENT SPECIFIC THE FIELD OR SUBJECT MATTER, e.g., DATA PROCESSING); electronically stored data, NAMELY, ____ (SPECIFY CLASS 009 GOOD); DOWNLOADABLE electronic publications IN THE NATURE OF ____ (SPECIFY TYPE OF PUBLICATION, e.g., JOURNAL, ARTICLES, E-ZINE) IN THE FIELD OF ____ (SPECIFY SUBJECT MATTER); house and building technology systems consisting of computers AND associated __ (SPECIFY, e.g., DOWNLOADABLE, RECORDED) software AND of electronic apparatus and instruments for monitoring, controlling, operating miscellaneous electrical devices for house and building technology IN THE NATURE OF CONTROLLING AND AUTOMATING ___ (SPECIFY, e.g., LIGHTING, HVAC, APPLIANCES, ELECTRICAL POWER) and for alarm systems; climate CONTROL systems CONSISTING OF DIGITAL THERMOSTATS, AIR CONDITIONING, HEATING, VENTILATION AND DRYING CONTROL DEVICES; ELECTRONIC monitoring systems COMPRISED OF ___ (SPECIFY COMPONENTS, e.g., WIRELESS CONTROLLERS TO MONITOR AND CONTROL THE FUNCTION AND STATUS OF OTHER ELECTRICAL, ELECTRONIC, AND MECHANICAL DEVICES OR SYSTEMS, NAMELY, ____ (INDICATE TYPE OF DEVICES OR SYSTEMS, e.g., REMOTE METERING SYSTEMS, GAS AND LIQUID CYLINDERS, VEHICLE TRACKING DEVICES, ENERGY AND UTILITY SYSTEMS, SECURITY SYSTEMS, LIGHTING SYSTEMS)); HOME AND OFFICE AUTOMATION heating systems COMPRISED OF COMPUTER HARDWARE, WIRELESS AND WIRED CONTROLLERS, AND DOWNLOADABLE SOFTWARE FOR AUTOMATING HEATING; HOME AND OFFICE AUTOMATION blind systems COMPRISED OF COMPUTER HARDWARE, WIRELESS AND WIRED CONTROLLERS, AND DOWNLOADABLE SOFTWARE FOR AUTOMATING BLINDS; HOME AND OFFICE AUTOMATION lighting systems COMPRISED OF COMPUTER HARDWARE, WIRELESS AND WIRED CONTROLLERS, AND DOWNLOADABLE SOFTWARE FOR AUTOMATING LIGHTING; access control systems; multimedia systems COMPRISED OF ____ (SPECIFY COMPONENTS AND PURPOSE); automated control equipment, NAMELY, ____ (SPECIFY, e.g., WIRED CONTROLLERS, POWER CONTROLLERS) for CONTROLLING ____ (SPECIFY, e.g., ENERGY AND UTILITY SYSTEMS, SECURITY SYSTEMS, LIGHTING SYSTEMS, HVAC SYSTEMS) IN buildings; devices for communication and information technology and telecommunications, NAMELY, ____ (SPECIFY COMMON COMMERCIAL NAME OF DEVICES, e.g., DIGITAL TRANSMITTERS, TELECOMMUNICATION EXCHANGERS), ALL THE aforementioned goods in class 009

 

Class 038:       Telecommunications, NAMELY, ____ (SPECIFY CLASS 038 SERVICES, e.g., PROVIDING ELECTRONIC TELECOMMUNICATION CONNECTIONS, RENTAL OF TELECOMMUNICATION EQUIPMENT); provision of electronic online access to information databases and files STORED ELECTRONICALLY FOR REMOTE CONSULTATION sent via telecommunications media; provision of MULTIPLE USER access to PROPRIETARY COLLECTIONS OF information on the internet and via mobile terminals; TRANSMISSION OF MESSAGES IN THE NATURE OF electronic exchange of messages by means of chat lines, chatrooms and internet forums; Telecommunications, NAMELY, ____ (SPECIFY TELECOMMUNICATION SERVIECS, e.g., PROVIDING ELECTRONIC TELECOMMUNICATION CONNECTIONS) by means of platforms and portals on the internet and via mobile terminals; provision of MULTIPLE USER access to an online interface for checking heating devices, water supply devices, lighting devices, sanitary devices, climate devices, ventilation devices and security devices ON A GLOBAL NETWORK; information and consulting in relation to all aforementioned services; electronic message transmission

 

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).

 

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.

 

Disclaimer

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The term HOME is defined as “A place where one lives; a residence” (see attached). The term CONNECT is defined as “To join to or by means of a communications circuit” (see attached). Applicant’s goods and services are used to CONNECT a user with the various systems located in its HOME, such as lighting, security, HVAC (see page from applicant’s website). Accordingly, the phrase HOME CONNECT is descriptive of the purpose of the goods and services. Terms that describe the function or purpose of a product or service may be merely descriptive.  TMEP §1209.03(p); see, e.g., In re Hunter Fan Co., 78 USPQ2d 1474, 1477 (TTAB 2006) (holding ERGONOMIC merely descriptive of ceiling fans); In re Wallyball, Inc., 222 USPQ 87, 89 (TTAB 1984) (holding WALLYBALL merely descriptive of sports clothing and game equipment); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977) (holding BREADSPRED merely descriptive of jams and jellies). 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “HOME CONNECT” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Description of the Mark

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the design of a cartoon speech bubble enclosing a house icon, next to the wording HOME CONNECT.

 

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 refusal(s) and/or requirement(s) 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. 

 

 

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

 

 

/Christina M Sobral/

Christina Sobral

Trademark Examining Attorney

Law Office 109

Christina.Sobral@uspto.gov

571.272.5703

 

 

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 December 13, 2019 for

U.S. Trademark Application Serial No. 88614132

 

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. 

 

 

/Christina M Sobral/

Christina Sobral

Trademark Examining Attorney

Law Office 109

Christina.Sobral@uspto.gov

571.272.5703

 

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 December 13, 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.”