To: | Leverege LLC (trademarks@cooley.com) |
Subject: | U.S. Trademark Application Serial No. 88652436 - IOT CHANGES EVERYTHING - 331744-20000 |
Sent: | January 22, 2020 04:20:07 PM |
Sent As: | ecom112@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88652436
Mark: IOT CHANGES EVERYTHING
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Correspondence Address: 1299 PENNSYLVANIA AVE., STE. 700
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Applicant: Leverege LLC
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Reference/Docket No. 331744-20000
Correspondence Email Address: |
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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: January 22, 2020
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.
· SEARCH OF OFFICE’S DATABASE OF MARKS
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).
· DISCLAIMER REQUIRED
Applicant must disclaim the wording “IOT” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
In this case, the goods and services, as identified, feature or are designed for use in an Internet of Things (IoT) environment. Thus, the term “IOT” in the mark merely describes a primary feature or purpose of the goods and services, and must be disclaimed.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “IOT” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
· IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant must clarify indefinite wording in the identification of goods and/or services. See TMEP §1402.01.
Note the following specific issues:
- Class 9 software must be identified as “downloadable” and/or “recorded”
- Class 42 software services must be identified as both online and non-downloadable. See TMEP §1402.11(a)(xii).
- Installation of software is a Class 42 service. Other “installation” services, including installation of computing hardware or IoT devices, are generally classified in Class 37.
The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type. Applicant may adopt the following identification of goods and/or services, if accurate:
CLASS 9: downloadable computer software, namely, software for managing devices, actuating sensors, visualizing data and trends, and collecting and analyzing data from networked devices; downloadable computer software for connecting people, services, and devices to a computer network; downloadable computer software for managing and maintaining software applications for connecting people, services and devices to a computer network; downloadable computer software for use in the Internet of Things (IoT) environment, namely, computer software application programs designed as a framework for connecting IoT capable devices to a computer network; electronic communications system comprised of {specify class-appropriate medium/mode of delivery, e.g., downloadable} computer hardware and software for collecting data via sensors that communicate over an IoT interface
CLASS 37: design, development, and installation of Internet of Things (IoT) enabled devices
for others
CLASS 42: Online, non-downloadable computer software, namely, software for managing devices, actuating sensors, visualizing data
and trends, and collecting and analyzing data from networked devices; Online, non-downloadable computer software for connecting people, services, and devices to a computer
network; Online, non-downloadable computer software for managing and maintaining software applications for connecting people, services and devices to a computer network;
Online, non-downloadable computer software for use in the Internet of Things (IoT) environment, namely, computer software application programs designed as a framework for
connecting IoT capable devices to a computer network; design, development, and installation of computer software for others; design and development, and
installation of Internet of Things (IoT) enabled devices for others; computer software consulting for integrating Internet of Things (IoT) technology for business and personal use; providing a
website featuring information about Internet of Things (IoT) devices and computer networks
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
Classification of Goods/Services
If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add International Class 37. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
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):
(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 fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). 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).
For 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, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
/Lief Martin/
Examining Attorney
Law Office 112
571-272-3434
lief.martin@uspto.gov
RESPONSE GUIDANCE