Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  June 24, 2020

 

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.

 

IDENTIFICATION OF GOODS

 

The wording “cleaning pads” in the identification of goods for Class 003 must be clarified because it is too broad for registration purposes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, “cleaning pads impregnated with cosmetics”, “sponges impregnated with cleaning preparations” and “wipes and/or cloths impregnated with cleaning preparations”  are classified in Class 003.  Moreover, the wording “solutions” is overbroad for proper classification.

 

The identification for “robots” in Classes 007 and Class 009 is indefinite and too broad and must be clarified for registration and proper classification purposes.  Applicant must specify the purpose of the goods.  See TMEP §1402.01.  For example, industrial robots are in Class 007; teaching  and security surveillance robots are in Class 009 and toy robots are in Class 028.

 

The identification for “computer software for the control of robotic devices” in Class 009 is also indefinite and too broad and must be clarified to specify whether its 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 009, whereas providing their temporary, online non-downloadable use is a service in International Class 042.  See TMEP §1402.03(d).   

 

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).

 

Finally, applicant should indicate that the “carpet sweepers” are non-electric for classification in Class 021.

 

Applicant may substitute the following wording, if accurate: 

 

Cleaning preparations; cleaning preparations and solutions substances for washing, cleaning, mopping, scouring and/or polishing floors and surfaces; cleaning pads in the nature of wipes [or cloths or sponges] impregnated with cleaning preparations in Class 003.

 

Machines for washing, scouring, sweeping, polishing, mopping and drying floor surfaces; road sweeping machines, self-propelled; industrial robots for commercial building cleaning; central vacuum cleaning installations; replacement parts for machines, namely, replacement parts for robotic vacuum cleaners, robotic floor mopping machines, robotic floor sweeping machines, robotic floor cleaning machines, and robotic lawn mowers; accessories for robotic vacuum cleaners, robotic floor mopping machines, robotic floor sweeping machines, robotic floor cleaning machines, and robotic lawn mowers, namely, brushes and dust filters; automatic machines for use in the fields of maintenance of households, properties, and commercial buildings, namely, robotic vacuum cleaners, robotic machines utilizing water and/or chemicals for cleaning floor surfaces, robotic machines utilizing paper, fabric or cloth wipes and pads, and machines for washing, scouring, sweeping, mopping and/or drying floor surfaces, robotic floor scrubbers, and robotic lawn mowers; structural and replacement parts and fittings for robotic floor cleaning machines, robotic vacuum cleaners, robotic floor mopping and sweeping machines, and robotic lawn mowers for use in the fields of maintenance of households, properties, and commercial buildings; dust exhausting installations for cleaning purposes; dust removing installations for cleaning purposes; vacuum cleaner attachments for disseminating perfumes and disinfectants; remote-controlled or autonomous robotic cleaning machines mounted with cameras, sensors, and radio modules or antennas for monitoring and investigation purposes in the fields of maintenance of households, properties and commercial buildings; industrial robots for household cleaning; automatic floor cleaning machines for consumer use; automatic machines for use in the field of interior maintenance of households and commercial buildings, namely, vacuum cleaners, machines utilizing water and/or chemicals for cleaning floor surfaces, machines utilizing paper, fabric or cloth wipes and pads, and machines for washing, scouring, polishing, mopping and/or drying floor surfaces; machines and apparatus for wax-polishing, electric; industrial robots; machines and apparatus for carpet shampooing, electric; floor scrubbing machines; carpet cleaning machines; wet-and-dry carpet cleaning machines; dust filters and bags for vacuum cleaners; industrial robots for video and audio monitoring, surveillance, and communication; industrial robots for use in law enforcement surveillance and reconnaissance; structural and replacement parts and fittings for industrial robots for military operations, law enforcement, scientific research and search and rescue in Class 007.

 

 

Teaching robots for use in video and audio monitoring, surveillance, and communication; Security surveillance remote-controlled or autonomous household robots mounted with cameras, sensors, and radio module/antenna for monitoring and investigation purposes; structural and replacement parts and fittings for remote-controlled or autonomous household security surveillance robots mounted with cameras, sensors, and radio module/antenna for monitoring and investigation purposes; remote controls for vacuum cleaners, automatic floor cleaning machines, robotic cleaning devices remotely controlled robotic comprised of computer hardware, computer software, monitors, sensors, and cameras to gather information and transmit or display audio and video communications and other electronic data; robots for educational use; teaching robots for educational use featuring/controlled through wireless technology; rechargeable batteries; battery chargers; rechargeable batteries and battery chargers for vacuum cleaners, automatic floor cleaning machines, robotic cleaning devices, automatic floor scrubbers, home outdoor and lawn care maintenance robots; batteries; battery chargers for machines utilizing water and/or chemicals for cleaning floor surfaces, machines utilizing paper, fabric or cloth wipes and pads, and machines for washing, scouring, polishing, mopping or drying floor surfaces; battery chargers for robotic cleaning devices; downloadable computer software for the control of robotic devices; mobile robotic system comprised primarily of personal security surveillance robots, operating software, cameras, communication systems, and sensors; downloadable mobile applications for starting and stopping, scheduling, customizing and monitoring vacuum cleaners, home monitoring robots, home outdoor and lawn care robots, and automatic floor cleaning machines; computer software for the control of automatic machines, namely, automatic floor cleaning machines, vacuum cleaners; remote controlled household robotic system comprised of computer hardware, downloadable computer software, monitors, sensors, and cameras to gather information and transmit or display audio and video communications and other electronic data; data processing apparatus; computer programs, recorded, for remote control of household robotic devices and display of collected data; electro-dynamic apparatus for the remote control of signals; mobile robotic system comprised of computer hardware, downloadable computer software, monitors, sensors, and cameras for audio and video conferencing, wireless communications, and for providing audio and video information and files to users; security surveillance robots; humanoid robots with artificial intelligence; downloadable or recorded computer programs using artificial intelligence for facial recognition in Class 009.

 

Cleaning cloths; cleaning pads; mopping pads for mopping not impregnated with cleaning preparations for cleaning floors and surfaces; fiber, paper and cloth mopping pads not impregnated with cleaning preparations for cleaning floors and surfaces; disposable cleaning pads not impregnated with cleaning preparations for cleaning floors and surfaces; non-electric carpet sweepers; cloth for washing floors in Class 021.

 

 

ADVISORIES

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Attorney, Law Office 112

571-272-9208 (direct)

kimberly.perry@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 24, 2020 for

U.S. Trademark Application Serial No. 88849110

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Kimberly Boulware Perry

/Kimberly Boulware Perry/

Trademark Attorney, Law Office 112

571-272-9208 (direct)

kimberly.perry@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from June 24, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”