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:  August 08, 2019

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH RESULTS

 

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

 

However, the applicant must address the following issues:

 

IDENTIFICATION OF GOODS AND SERVICES – Partial Requirement/Class 009

 

Class 009

 

Portions of the wording in this class are indefinite and must be clarified because the nature and function of the software has not been indicated. Pursuant to the Nice Agreement Eleventh Edition, Nice Classification, 11^th ed., version 2019, effective January 1, 2019, software must be designated as downloadable or recorded in Class 009.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

Applications filed on or after January 1, 2019 must comply with this new version.  See 37 C.F.R. §2.85(e)(1); TMEP §1401.09. 

 

Applicant may substitute the following wording, if accurate: 

 

Home and office automation systems comprising wireless and wired controllers, controlled devices, and [indicate whether downloadable or recorded] software for [indicate function of software, e.g., operating, monitoring, controlling lighting, HVAC, security, safety and other home and office equipment monitoring and control applications; battery chargers for use with vehicle batteries; solar panels for the production of electricity; renewable battery system to provide backup power; charging stations for electric vehicles; thermostats; climate control system consisting of a digital thermostat that can be controlled wirelessly from a remote location; [indicate whether downloadable or recorded] software application for use on computers and hand-held devices for [indicate function of software, e.g., monitoring and operating heating, air conditioning and lighting systems to control climate and energy usage in homes and businesses from a remote location; climate control system consisting of a digital thermostat that automatically sets climate conditions based on prior and historical patterns of climate settings selected by users; electronic devices for environmental monitoring, control, and automation, namely, thermostats, climate control systems consisting of a digital thermostat that can be controlled wirelessly from a remote location, and electric or electronic sensors; [indicate whether downloadable or recorded] computer software for remotely controlling, setting, and sensing climate control and energy usage through environmental monitoring, control, and automation systems; electronic devices, namely, thermostats, climate control systems consisting of a digital thermostat that can be controlled wirelessly from a remote location, and electric or electronic sensors, and [indicate whether downloadable or recorded] computer software that allow users to remotely interact with environmental monitoring, control, and automation systems; electronic devices, namely, thermostats, climate control systems consisting of a digital thermostat that can be controlled wirelessly from a remote location, and electric or electronic sensors, and [indicate whether downloadable or recorded] computer software that allow the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; [indicate whether downloadable or recorded] computer software for mobile phones, tablets and other wireless devices, namely, software for use in recording, viewing, storing, sharing and analyzing data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; [indicate whether downloadable or recorded] computer software for use as an application programming interface (API) for coordinating and facilitating the operation, use, and communication among multiple devices such as sensors, cameras, lights from a single mobile application; electric or electronic sensors for motion, humidity, presence, temperature, light, and security monitoring; off-grid power and deep cycle battery storage systems comprised of batteries, charge controllers and inverters with integrated LED bulbs and LED light fixtures for technological applications, namely, renewable energy, solar and wind

 

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).

 

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.

 

PARTIAL REQUIREMENT - RESPONDING TO THIS OFFICE ACTION

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class 009 will be deleted from the application:  “computer software” everywhere it appears in this class.  The application will then proceed with the following goods and/or services only:  Classes 007, 035, 036, 037, 042 and the following goods in Class 009:   

 

 

Battery chargers for use with vehicle batteries; solar panels for the production of electricity; renewable battery system to provide backup power; charging stations for electric vehicles; thermostats; climate control system consisting of a digital thermostat that can be controlled wirelessly from a remote location; climate control system consisting of a digital thermostat that automatically sets climate conditions based on prior and historical patterns of climate settings selected by users; electronic devices for environmental monitoring, control, and automation, namely, thermostats, climate control systems consisting of a digital thermostat that can be controlled wirelessly from a remote location, and electric or electronic sensors; electronic devices, namely, thermostats, climate control systems consisting of a digital thermostat that can be controlled wirelessly from a remote location, and electric or electronic sensors; electronic devices, namely, thermostats, climate control systems consisting of a digital thermostat that can be controlled wirelessly from a remote location, and electric or electronic sensors, electric or electronic sensors for motion, humidity, presence, temperature, light, and security monitoring; off-grid power and deep cycle battery storage systems comprised of batteries, charge controllers and inverters with integrated LED bulbs and LED light fixtures for technological applications, namely, renewable energy, solar and wind

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

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

 

 

 

/Susan Stiglitz/

Trademark Examining Attorney

USPTO

Law Office 109

571-272-9285

susan.stiglitz@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 August 08, 2019 for

U.S. Trademark Application Serial No. 88439692

 

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. 

 

 

/Susan Stiglitz/

Trademark Examining Attorney

USPTO

Law Office 109

571-272-9285

susan.stiglitz@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 08, 2019, 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.”