NOTE TO THE FILE
SERIAL NUMBER: 88709645
DATE: 01/27/2020
NAME: csolano
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:X OTHER:
From: Emily Burns <emilyburns@google.com>
Sent: Monday, January 27, 2020 1:20 PM
To: Solano, Carlita <Carlita.Solano@USPTO.GOV>
Cc: tmdocket Role Account <tmdocketing@google.com>
Subject: Re: Docket # GT-1464-US-1 - U.S. TRADEMARK APPLICATION NO. 88709645 GOOGLE NEST MINI
Dear Ms. Solano,
My apologies for the confusion. I confirmed that we only filed this application in class 9, and are only interested in retaining the class 9 goods. No need to add class 42.
Sincerely,
Emily Burns
On Sat, Jan 25, 2020 at 10:25 AM Solano, Carlita <Carlita.Solano@uspto.gov> wrote:
Dear Ms. Burns,
Thank you for the below. As you indicated, this is in regards to Serial No. 88709645 GOOGLE NEST MINI.
Please confirm that you would like to add Class 42, as the application came in with just Class 9.
Best,
Carlita Jaye Solano
Trademark Examining Attorney
Law Office 128
United States Patent & Trademark Office
Telephone: (571) 270-0348
Facsimile: (571) 273-6513
Email: carlita.solano@uspto.gov
Notice to applicants and attorneys: Relevant e-mail communications will be uploaded to the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See 37 C.F.R. §2.191 and TMEP §§705.02, 709.04 - .06.
From: Emily Burns <emilyburns@google.com>
Sent: Friday, January 24, 2020 7:02 PM
To: Solano, Carlita <Carlita.Solano@USPTO.GOV>
Cc: tmdocket Role Account <tmdocketing@google.com>
Subject: Fwd: Docket # GT-1464-US-1 - U.S. TRADEMARK APPLICATION NO. 88409645 GOOGLE NEST MINI
Dear Ms. Solano,
Many thanks for your email. I can agree to the changes to the recitations in classes 9 and 42, as you've set out below. I can also agree to the disclaimer of "mini." I do note that I think the correct Serial No. for this filing is 88709645.
Sincerely,
Emily Burns
---------- Forwarded message ---------
From: Solano, Carlita <Carlita.Solano@uspto.gov>
Date: Fri, Jan 24, 2020 at 9:36 AM
Subject: Docket # GT-1464-US-1 - U.S. TRADEMARK APPLICATION NO. 88409645 GOOGLE NEST MINI
To: tmdocketing@google.com <tmdocketing@google.com>
Docket # GT-1464-US-1
Dear Ms. Burns,
I am the U.S. Patent and Trademark Office examining attorney assigned to Application Serial No. 88409645 GOOGLE NEST MINI. I have reviewed the application and the mark is almost ready for publication; however, there are a couple of issues that need to be addressed before the application can proceed, and these issues can be resolved by return email or over the phone:
Specifically, the term “MINI” needs to be disclaimed because it is descriptive of the goods, in that they are miniatures or small. I suggest the following, if accurate:
No claim is made to the exclusive right to use “MINI” apart from the mark as shown.
Also, the wording “software” in the identification needs to be clarified because it may fall into multiple classes, including downloadable software in Class 9 and non-downloadable software in Class 42. Additionally, the wording “Data processing equipment, computers” needs to be clarified to specify it is two different goods. I suggest the following, if accurate:
Class 9: Data processing equipment, and computers; Computer hardware; Computer hardware for controlling televisions, monitors, gaming systems, DVD players, portable media players, and digital media streaming devices; Audio speakers; Loud Speakers; Wireless indoor and outdoor speakers; Voice controlled audio speakers; Electronic devices and downloadable computer software that allow the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; Audio Speakers controlled by mobile applications; Home automation control device; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for streaming and playing audio, video, and multimedia content, for controlling televisions, monitors, gaming systems, DVD Players, portable media players, and digital media streaming devices; Computer hardware for controlling home automation systems, namely, lighting, appliances, heating and air conditioning units, alarms and other safety equipment, home monitoring equipment; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for accessing and searching online databases, websites, mobile phones, computers, tablets, smart phones, handheld computers, portable computers for documents, files, and other stored information on command; Stand alone information device, namely, voice and manual controlled audio speakers with personal digital assistant capabilities for providing personal concierge services for others initiated by voice-controlled commands via a mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders and making restaurant, travel, and hotel reservations; downloadable software used for the control of voice controlled information and communication devices; downloadable Software for providing a personal voice-enabled digital assistant; downloadable voice recognition software; downloadable software for accessing and searching online databases and websites; downloadable software for searching a user's mobile phone, computer, tablet, smart phone, handheld computer, portable computer, for documents, files, and other stored information on command; downloadable software for providing personal concierge services for others initiated by voice-controlled commands via a mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders and making restaurant, travel, and hotel reservations; downloadable software for controlling home automation systems, namely, lighting, appliances, HVAC systems, thermostats, air quality monitors and sensors, alarms and other safety equipment, locks, doorbells, cameras, and home monitoring equipment; downloadable software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, gaming systems, DVD players, portable media players, and digital media streaming devices
Class 42: providing online non-downloadable software used for the control of voice controlled information and communication devices; providing online non-downloadable Software for providing a personal voice-enabled digital assistant; providing online non-downloadable voice recognition software; providing online non-downloadable software for accessing and searching online databases and websites; providing online non-downloadable software for searching a user's mobile phone, computer, tablet, smart phone, handheld computer, portable computer, for documents, files, and other stored information on command; providing online non-downloadable software for providing personal concierge services for others initiated by voice-controlled commands via a mobile phone, computer, tablet, smart phone, handheld computer, portable computer, namely, adding and accessing calendar appointments, alarms, timers, reminders and making restaurant, travel, and hotel reservations; providing online non-downloadable software for controlling home automation systems, namely, lighting, appliances, HVAC systems, thermostats, air quality monitors and sensors, alarms and other safety equipment, locks, doorbells, cameras, and home monitoring equipment; providing online non-downloadable software for streaming and playing audio, video, and multimedia content, and for controlling televisions, monitors, gaming systems, DVD players, portable media players, and digital media streaming devices
With your authorization, I would be happy to enter the suggested changes for you.
If applicant wishes to add one or more additional classes, then I will need to send a communication providing information on how to make payment.
Please email me at your earliest convenience if you would like to resolve the issue(s) by email. Alternatively, you can give me a call at 571-270-0348 if you would like to resolve this issue over the phone. You can also respond to this email or leave a voice message responding to the inquiry.