Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

---

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88655231 GOOGLE NEST CAM(Standard Characters, see http://uspto.report/TM/88655231/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 045 for Home and building monitoring using wireless and wired sensors, motion detectors, audio devices, video devices, home automation devices, and security devices and equipment
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 045, the mark was first used at least as early as 05/08/2019 and first used in commerce at least as early as 05/08/2019.


Proposed:
Class 045 for Home and building monitoring using wireless and wired sensors, motion detectors, audio devices, video devices, home automation devices, and security devices and equipment

Deleted Filing Basis: 1(b)
In International Class 045, the mark was first used at least as early as 05/08/2019 . and first used in commerce at least as early as 05/08/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 045. The specimen(s) submitted consists of Specimen 1 - Online product listing offering for sale the device that performs the claimed services; Specimen 2 - Online product listing offering for sale the device that performs the claimed services; Specimen 3 - Online product listing offering for sale the device that performs the claimed services.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-6385229130-202107071 04123328231_._Specimen_1_ __2021.04.21___Walmart_Go ogle_Nest_Cam__Indoor_.pdf
Converted PDF file(s) ( 16 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7Specimen File8Specimen File9Specimen File10Specimen File11Specimen File12Specimen File13Specimen File14Specimen File15Specimen File16
Original PDF file:
SPU1-6385229130-202107071 04123328231_._Specimen_2_ __2021.04.21___BBB_Google _Nest_Cam__Outdoor_.pdf
Converted PDF file(s) ( 14 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7Specimen File8Specimen File9Specimen File10Specimen File11Specimen File12Specimen File13Specimen File14
Original PDF file:
SPU1-6385229130-202107071 04123328231_._Specimen_3_ __2021.04.21___BBB_Google _Nest_Cam__Indoor_.pdf
Converted PDF file(s) ( 22 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7Specimen File8Specimen File9Specimen File10Specimen File11Specimen File12Specimen File13Specimen File14Specimen File15Specimen File16Specimen File17Specimen File18Specimen File19Specimen File20Specimen File21Specimen File22


Webpage URL: http://www.walmart.com/ip/Google-Nest-Cam-IQ-Indoor-Security-Camera/385545654
Webpage Date of Access: 04/21/2021
Webpage URL: http://www.bedbathandbeyond.com/store/product/google-nest-cam-outdoor-security-camera/1047492042?keyword=googles-nest-cam
Webpage Date of Access: 04/21/2021
Webpage URL: http://www.bedbathandbeyond.com/store/product/google-nest-cam-indoor-security-camera/1047370272?keyword=googles-nest-cam&wmSkipPwa=1
Webpage Date of Access: 04/21/2021

ADDITIONAL STATEMENTS
Miscellaneous Statement
The claimed device performs the claimed home and building monitoring services under the claimed mark. The replacement specimens expressly identify the claimed services as product features. For example and without limitation, these include the device's active, automatic monitoring, which provides "person alerts" and "instant alerts and snapshots" to consumers when certain types of activity are detected during the device's active, automatic monitoring. (See, e.g., Specimen 1 at 5 (Product Features).) Furthermore, additional monitoring services are provided by the device and under the claimed mark when a consumer purchases subscription monitoring services.

Correspondence Information (current):
      Emily Burns
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@google.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Emily Burns
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@google.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): martus@nge.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Emily Burns/      Date: 07/07/2021
Signatory's Name: Emily Burns
Signatory's Position: Senior Trademark Counsel at Google LLC
Signature method: Sent to third party for signature

Response Signature
Signature: /Ian Block/     Date: 07/07/2021
Signatory's Name: Ian J. Block
Signatory's Position: Attorney

Signatory's Phone Number: 312-269-2960 Signature method: Sent to third party for signature

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Emily Burns
   
   
   1600 AMPHITHEATRE PARKWAY
   MOUNTAIN VIEW, California 94043
Mailing Address:    Emily Burns
   1600 AMPHITHEATRE PARKWAY
   MOUNTAIN VIEW, California 94043
        
Serial Number: 88655231
Internet Transmission Date: Thu Jul 08 00:01:22 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2021070800012253
2576-88655231-780cfc93dbe1f75e3c8f981b59
b83e1266dda638c5388740803ed76d6799c4c921
-N/A-N/A-20210707111511260907