To: | The Chamberlain Group, Inc. (trademark@fitcheven.com) |
Subject: | U.S. Trademark Application Serial No. 88929674 - CHAMBERLAIN - 5569-148783 |
Sent: | August 28, 2020 10:29:15 AM |
Sent As: | ecom105@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88929674
Mark: CHAMBERLAIN
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Correspondence Address: |
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Applicant: The Chamberlain Group, Inc.
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Reference/Docket No. 5569-148783
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: August 28, 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.
SEARCH OF USPTO DATABASE OF MARKS
Applicant must address and respond to the following issues.
As identified below, some of the wording in the identification of goods must be clarified to identify the common commercial name of the product associated with the mark. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
The wording could include goods or services in other international classes for which additional filing fees are required.
Lastly, the identification of goods and/or services contains parentheses. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
The purpose of the identification of goods and/or services is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods and/or services. In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
Applicant must address the following issues and may adopt the suggested language, if accurate:
Please note that the suggested language is underlined.
International Class 9 - Electric door and gate opening and closing systems (These goods are already properly classified
in class 7.); Remote controls for doors, gates, lights, light switches, electrical plugs and sockets, cameras and door locks; Electronic transmitters for controlling door and gate operators, lights
and lighting systems, light switches, electrical plugs and sockets, cameras and door locks, and providing status of same; Lighting controls; Lights, namely _________ (Applicant must specify
the type of lights in class 9, e.g. traffic lights, rotating signaling lights. Please note that most lights belong in class 11.) and lighting systems comprising
light sensors and switches; Light switches; Electrical plugs and sockets; Power controllers; Electronic actuators; Electronic readers and controllers for controlling access to a premises or
secured area; Radio receiver units; Radio transmitter units; Keypads for use with electric door and gate operators; Access control systems for providing and restricting access to
electronically monitored and/or secured enclosures, premises or areas; Access control and alarm monitoring systems; Home, office and industrial automation systems comprising wireless and wired
controllers, controlled devices, and downloadable software for lighting, HVAC, security, safety and other home, office and industrial monitoring and control applications; Electronic
transmitter-controller and automated pet door combination sold as a unit, that allows animals to enter and exit a confined space; Electronic transmitters that activate automated pet doors;
Magnetic devices, namely _________ (Applicant must specify the common commercial name of the devices, e.g. encoders, cores.) that activate self-unlocking pet doors; Communications hubs;
Electronic hubs for connecting and controlling networked devices in the internet of things (IoT) enabled devices in a home; electronic controllers for use with internet of
things (IoT) enabled devices; Home, office and industrial automation systems comprised of computer hardware, wireless and wired controllers, and downloadable software for automating appliances,
lighting, security, electrical power, doors, gates, locks and cameras; Computer hardware and downloadable or recorded software systems for remotely controlling lights and lighting devices,
light switches, electrical plugs and outlets, access devices, security devices, locks, and cameras within a building or building perimeter; Electronic security devices, namely, electronic controls
for granting access and egress through doors or gates; cameras; Electric and electronic video surveillance installations; downloadable or recorded computer application software for mobile
communication and computing devices for communicating with garage door and gate operators, lights and lighting systems, light switches, electrical plugs and sockets, locks and cameras and door locks,
and providing status of same; Downloadable mobile applications and computer application software for mobile devices, namely, mobile phones, tablet computers, personal computers, and vehicle
infotainment systems for accessing and controlling internet of things (IoT) enabled devices, namely, door and gate operators, lights and lighting systems, light switches, electrical plugs and
outlets, locks and cameras, and electronic locks; and downloadable or recorded computer software for opening doors, controlling machinery and operating
lights
International Class 6 - Automated pet appliances, namely metal pet doors with integrated digital cameras
International Class 11 - Lights, namely _________ (Applicant must specify the type of lights in class 11, e.g. flood lights, spot lights, reading lights, etc.. Please note that some lights belong in class 9.)
International Class 19 – Automated pet appliances, namely non-metal pet doors with integrated digital cameras
International Class 42 – providing temporary use of non-downloadable computer application software for mobile communication and computing devices for communicating with garage door and gate operators, lights and lighting systems, light switches, electrical plugs and sockets, locks and cameras and door locks, and providing status of same; providing temporary use of non-downloadable computer software for opening doors, controlling machinery and operating lights
The wording in class 7 is acceptable.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(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). The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 2 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
RESPONSE GUIDELINES
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.
Alain Lapter, Esq.
/Alain Lapter/
Trademark Examining Attorney
Law Office 105
email: alain.lapter@uspto.gov
phone: 571-272-3162
RESPONSE GUIDANCE