To: | Google LLC (tmdocketing@google.com) |
Subject: | U.S. Trademark Application Serial No. 88655232 - GOOGLE NEST PROTECT - GT-1418-US-1 |
Sent: | December 02, 2019 09:59:56 PM |
Sent As: | ecom119@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88655232
Mark: GOOGLE NEST PROTECT
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Correspondence Address:
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Applicant: Google LLC
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Reference/Docket No. GT-1418-US-1
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: December 02, 2019
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
In this case, applicant must disclaim the wording “protect” 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 attached evidence from the website of The American Heritage Dictionary of the English Language shows this wording means “to keep from being damaged, attacked, stolen, or injured; guard.” Thus, the wording merely describes applicant’s goods and/or services because it merely describes the intended purpose or use of applicant’s goods and services, which include various alarms, sensors and detectors for environmental home protection and related software for operating and use in connection with those devices.
Further, the disclaimer requirement is consistent with the same requirement found in the applicant’s prior registration for a similar mark and goods. See attached U.S. Registration No. 4882042 for the mark NEST PROTECT.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PROTECT” 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.
IDENTIFICATION REQUIRES AMENDMENT
The International Class 42 identification of services is acceptable as written. The International Class 9 identification of goods are unacceptable because certain goods are indefinitely worded. See TMEP §§1402.01, 1402.03.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant may change the wording to the following, if accurate [please note that the current unacceptable entries appear italicized and suggested wording the applicant must provide appears in bold]:
Class 9: Electronic devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, security alarms and sensors; environmental hazard detectors, namely, devices to detect and record the presence of water, humidity levels, heat, temperature, movement, motion, and sound; lighting control apparatus, namely, devices to sense ambient light; Downloadable software application for use on computers and hand-held devices to monitor and control, from a remote location by wired or wireless communication, devices for environmental monitoring and control, namely, smoke alarms, carbon monoxide alarms, fire alarms, environmental hazard detectors, lighting equipment, security alarms and sensors.
TMEP §1402.01.
PLEASE NOTE: An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
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.
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.
/Ronald L. Fairbanks/
Ronald L. Fairbanks
Examining Attorney
Law Office 119
571-272-9405
ron.fairbanks@uspto.gov
RESPONSE GUIDANCE