Priority Action

United States Patent and Trademark Office (USPTO)

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

 

 

 

PRIORITY ACTION

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 27, 2020

 

Applicant must address issues shown below.  On 8/24/2020, the examining attorney contacted to discuss discussed the issue below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

IDENTIFICATION OF GOODS

 

The wording “computer software for the control of automatic machines, namely, automatic floor cleaning machines, vacuum cleaners” in Class 009 is not sufficiently specific and could include goods and services. In particular, applicant must indicate whether its software is downloadable, recorded, or online, non-downloadable.

 

Applicant may substitute the following wording for Class 009, if accurate: 

 

Security surveillance Robots for use in video and audio monitoring, surveillance, and communication; security surveillance remote-controlled or autonomous 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 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; teaching and laboratory robots for educational use; 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; downloadable 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.

 

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).

 

Applicant may elect to add Class 042 to the application and adopt the following description:

 

Providing online, non-downloadable computer software for the control of automatic machines, namely, automatic floor cleaning machines, vacuum cleaners.

 

If applicant adds Class 042 to this application,  applicant must satisfy all the requirements below:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Applicant must either submit the filing fees for Class 042 or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

 

EXAMINER’S AMENDMENT SUGGESTED

 

If applicant elects to move forward with the suggested Class 009 description, counsel is invited to call or email the assigned trademark examining attorney to authorize entry of the required disclaimer for expedited approval.

 

 

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.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 August 27, 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 August 27, 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.”