NOTE TO THE FILE
SERIAL NUMBER: 88655231
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 1:22 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. 88655229 GOOGLE NEST CAM IQ & 88655231 GOOGLE NEST CAM (Attn: Emily Burns)
Dear Mr. Fairbanks,
I appreciate you reaching out to me via email regarding these amendments. For both of the applications noted below (namely, Serial Nos. 88655229 GOOGLE NEST CAM IQ & 88655231 GOOGLE NEST CAM), I am fine with the disclaimer of "Cam" and the insertion of "downloadable" as you have indicated.
Please let me know if you require any additional information or input from me. And Happy Thanksgiving.
Sincerely,
Emily Burns
---------- Forwarded message ---------
From: Fairbanks, Ron <Ron.Fairbanks@uspto.gov>
Date: Mon, Nov 25, 2019 at 5:40 PM
Subject: U.S. Trademark Application Serial Nos. 88655229 GOOGLE NEST CAM IQ & 88655231 GOOGLE NEST CAM (Attn: Emily Burns)
To: tmdocketing@google.com <tmdocketing@google.com>
Good evening, Ms. Burns.
My name is Ronald Fairbanks. I am the Trademark Examining Attorney assigned to review the above-referenced trademark applications. The purpose of this communication is to seek authorization to enter the following amendment(s) on your behalf:
DISCLAIMER
No claim is made to the exclusive right to use “CAM” apart from the mark as shown.
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:
Wireless cameras; digital cameras; event activated cameras; remote video monitoring system consisting primarily of a camera and video monitor for recording and transmitting images and videos to remote locations; video cameras; downloadable computer software for electronic devices including computers, mobile phones, tablets, and wireless devices, namely, software for use in recording, viewing, storing, sharing and analyzing audio and video; downloadable computer software for use as an application programming interface (API); electric or electronic sensors for sound, motion, humidity, temperature, and light; electronic devices for environmental monitoring and control, namely, security alarms and alarm sensors; downloadable software application for use on computers and hand-held devices to monitor and control, by wired or wireless communication, devices for environmental monitoring and control, namely, cameras, security alarms and proximity and motion sensors; Audio speakers; Loud Speakers; Wireless indoor and outdoor speakers; Voice controlled audio speakers
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