NOTE TO THE FILE
SERIAL NUMBER: 88655227
DATE: 11/26/2019
NAME: rfairbanks
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Emily Burns <emilyburns@google.com>
Sent: Tuesday, November 26, 2019 1:24 PM
To: Fairbanks, Ron <Ron.Fairbanks@USPTO.GOV>
Cc: tmdocket Role Account <tmdocketing@google.com>; Cristina Nathan <cfn@google.com>
Subject: U.S. Trademark Application Serial Nos. 88655227 GOOGLE NEST HELLO (Attn: Emily Burns)
Dear Mr. Fairbanks,
I appreciate your emailing me on this issue. For Application Serial Nos. 88655227 GOOGLE NEST HELLO, I agree to the amendment to insert "downloadable" as you have indicated below.
Please let me know if you need anything else from me. And Happy Thanksgiving.
Sincerely,
Emily Burns
---------- Forwarded message ---------
From: Fairbanks, Ron <Ron.Fairbanks@uspto.gov>
Date: Mon, Nov 25, 2019 at 3:43 PM
Subject: U.S. Trademark Application Serial Nos. 88655227 GOOGLE NEST HELLO (Attn: Emily Burns)
To: tmdocketing@google.com <tmdocketing@google.com>
Good afternoon, Ms. Burns.
My name is Ronald Fairbanks. I am the Trademark Examining Attorney assigned to review the above-referenced trademark application. The purpose of this communication is to seek authorization to enter the following amendment(s) on your behalf:
IDENTIFICATION OF GOODS – International Class 9
The identification for computer software in International Class 9 is indefinite and too 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).
I would propose amending the International Class 9 identification of goods to indicate that the software is downloadable. The International Class 9 identification would be amended to the following:
Electronic doorbells; electronic wirelessly enabled doorbells; electronic doorbells featuring a camera; intercoms; electric door chimes; electronic wirelessly enabled door chimes; wireless cameras; digital cameras; motion activated electric or electronic doorbells; motion and noise activated cameras; remote video monitoring and communication system consisting primarily of an electric or electronic doorbell, speaker, intercom, and video camera; video cameras; downloadable computer software for electronic devices including mobile phones, tablets, computers, and doorbells, namely, software for use in recording, viewing, storing, sharing, communicating and analyzing audio and video; downloadable computer software for facial and object recognition; downloadable computer software for use as an application programming interface (API); electric or electronic sensors for motion and sound
With your authorization I will issue an examiner’s amendment on your behalf, amending the identification, and approve the mark for publication. If you are unable to respond by the close of business on Tuesday – November 26, 2019, I will issue an Office action requesting the same. Please advise.
Best regards,
Ron
Ronald L. Fairbanks
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 119
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Emily Burns | Senior Trademark Counsel
Google LLC | 1600 Amphitheatre Parkway, Mountain View, CA 94043650.260.3652