To: | Google LLC (tmdocket@google.com) |
Subject: | U.S. Trademark Application Serial No. 88655233 - GOOGLE NEST LEARNING THERMOSTAT - GT-1417-US-1 |
Sent: | August 03, 2020 09:25:40 PM |
Sent As: | ecom119@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88655233
Mark: GOOGLE NEST LEARNING THERMOSTAT
|
|
Correspondence Address:
|
|
Applicant: Google LLC
|
|
Reference/Docket No. GT-1417-US-1
Correspondence Email Address: |
|
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: August 03, 2020
This Office action is in response to applicant’s communication filed on June 4, 2020.
In the previous Office action, the applicant was required to provide a disclaimer of the descriptive wording apart from the mark, and amend the identifications of goods and services.
In response, the applicant has acceptably amended the identifications of goods and services. In response to the disclaimer requirement, the applicant has raised a claim of acquired distinctiveness as to the portion that was the subject of the disclaimer. Accordingly, the following is noted:
§2(f) CLAIM IN PART
Applicant claims acquired distinctiveness under Trademark Act Section 2(f) for a portion of the wording in its mark, namely “Learning Thermostat.” See 15 U.S.C. §1052(f); TMEP §1212.02(f).
Generally, the element that is the subject of the Section 2(f) claim must present a separate and distinct commercial impression apart from the other elements of the mark; it must be a separable element. TMEP §1212.02(f)(ii).
Therefore the claim of acquired distinctiveness in part must be amended to encompass the following wording: “Learning Thermostat.”
If the Section 2(f) claim is based on five years’ use, then applicant must verify the amended claim with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
DISCLAIMER OF GENERIC – SECTION 2(f)
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “THERMOSTAT” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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