PTO- 1957 |
Approved for use through 11/30/2023. OMB 0651-0050 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
90004995 |
LAW OFFICE ASSIGNED |
LAW OFFICE 124 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/90004995/mark.png |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
COLOR(S) CLAIMED
(If applicable) |
Color is not claimed as a feature of the mark. |
DESCRIPTION OF THE MARK
(and Color Location, if applicable) |
THE MARK CONSISTS OF SILHOUETTE OF HOUSE WITH ARCH FOR FRONT DOOR. |
GOODS AND/OR SERVICES SECTION (009) (current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Computer hardware 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; Audio speakers; Loud Speakers; Wireless indoor and outdoor speakers; Voice controlled audio speakers; Electronic
devices embedded with computer software that allows the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and
automation; Wireless cameras; digital cameras; motion activated cameras; video cameras; Electronic monitors and sensors for monitoring water, humidity levels, heat, temperature, air quality, light,
movement, motion, sound, and the presence of people, animals and objects; Light switches; lighting control panels; light systems comprising light sensors and switches; Electronic locks; programmable
locking systems comprised of electronic door locks and keypads; digital door locks; Electronic doorbells; electronic wirelessly enabled doorbells; electronic doorbells featuring a camera; intercoms;
Smoke alarms, carbon monoxide alarms, fire alarms; access control and alarm monitoring systems; security alarm hubs; sound alarms; alarm sensors; security alarm controllers; keypads for use with
security alarm devices; electronic key fobs being remote control apparatus; 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; 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, making restaurant, travel, and hotel reservations, and making
professional services appointments; 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; Downloadable voice-controlled search engine software for obtaining data, images, audio
and video via a global computer network |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18250973 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/09/2020 |
GOODS AND/OR SERVICES SECTION (009) (proposed) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Computer hardware 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; Audio speakers; Loud Speakers; Wireless indoor and outdoor speakers; Voice controlled audio speakers; Electronic
devices embedded with computer software that allows the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and
automation; Wireless cameras; digital cameras; motion activated cameras; video cameras; Electronic monitors and sensors for monitoring water, humidity levels, heat, temperature, air quality, light,
movement, motion, sound, and the presence of people, animals and objects; Light switches; lighting control panels; light systems comprising light sensors and switches; Electronic locks; programmable
locking systems comprised of electronic door locks and keypads; digital door locks; Electronic doorbells; electronic wirelessly enabled doorbells; electronic doorbells featuring a camera; intercoms;
Smoke alarms, carbon monoxide alarms, fire alarms; access control and alarm monitoring systems; security alarm hubs; sound alarms; alarm sensors; security alarm controllers; keypads for use with
security alarm devices; electronic key fobs being remote control apparatus; 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; 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, making restaurant, travel, and hotel reservations, and making
professional services appointments; 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; Downloadable voice-controlled search engine software for obtaining data, images, audio
and video via a global computer network |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18250973 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/09/2020 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
GOODS AND/OR SERVICES SECTION (037)(class deleted) |
GOODS AND/OR SERVICES SECTION (038) (current) |
INTERNATIONAL CLASS |
038 |
DESCRIPTION |
Telecommunication services, namely, transmission of emails, text messages, phone calls, voice, data, graphics, images, audio and video
clips by means of telecommunications networks, wireless communication networks, and the Internet |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18250973 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/09/2020 |
GOODS AND/OR SERVICES SECTION (038) (proposed) |
INTERNATIONAL CLASS |
038 |
DESCRIPTION |
Telecommunication services, namely, transmission of emails, text messages, phone calls, voice, data, graphics, images, audio and video
clips by means of telecommunications networks, wireless communication networks, and the Internet |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18250973 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/09/2020 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
GOODS AND/OR SERVICES SECTION (042) (current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Providing temporary use of online non-downloadable software for providing a personal voice-enabled digital assistant; Providing
temporary use of online non-downloadable voice recognition software; Computer services, namely, providing a non-downloadable voice-controlled search engine for obtaining data, images, audio and video
via a global computer network; Provision of Internet search engines; Providing temporary use of online non-downloadable software used to provide voice-controlled information and communications;
Electronic storage of electronic media, namely, images, text, audio, and video data; providing online non-downloadable software for recording, viewing, storing, sharing and analyzing online audio and
video; Providing temporary use of 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; Providing temporary use of online non-downloadable software for use in providing personal concierge services for others 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,
making restaurant, travel, hotel reservations, and making professional services appointments; Providing temporary use of 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
temporary use of non-downloadable computer software that allows the sharing and transmission of data and information between electronic devices for the purposes of facilitating environmental
monitoring, control, and automation in homes; Installation of security and surveillance software; Certification services, namely, ensuring the professional installation of electronic devices,
computer hardware, and security and surveillance products, HVAC systems, lighting, and appliances conforms with certification standards |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18250973 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/09/2020 |
GOODS AND/OR SERVICES SECTION (042) (proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Providing temporary use of online non-downloadable software for providing a personal voice-enabled digital
assistant; Providing temporary use of online non-downloadable voice recognition software; Computer services, namely, providing a non-downloadable
voice-controlled search engine for obtaining data, images, audio and video via a global computer network; Provision of Internet search engines; Providing temporary use of online non-downloadable software used to provide voice-controlled information and communications; Electronic storage of electronic media,
namely, images, text, audio, and video data; providing online non-downloadable software for recording, viewing, storing, sharing and analyzing online audio and
video; Providing temporary use of 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; Providing temporary use of online non-downloadable software for use in
providing personal concierge services for others 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, making restaurant, travel, hotel reservations, and making professional services appointments; Providing temporary use of
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 temporary use of non-downloadable computer software that allows the sharing and transmission of data
and information between electronic devices for the purposes of facilitating environmental monitoring, control, and automation in homes; Installation of security and
surveillance software; Certification services, namely, ensuring the professional installation of electronic devices, computer hardware, and security and
surveillance products, HVAC systems, lighting, and appliances conforms with certification standards |
FINAL DESCRIPTION |
Providing temporary use of online non-downloadable software for providing a personal voice-enabled digital assistant; Providing
temporary use of online non-downloadable voice recognition software; Computer services, namely, providing a non-downloadable voice-controlled search engine for obtaining data, images, audio and video
via a global computer network; Provision of Internet search engines; Providing temporary use of online non-downloadable software used to provide voice-controlled information and communications;
Electronic storage of electronic media, namely, images, text, audio, and video data; providing online non-downloadable software for recording, viewing, storing, sharing and analyzing online audio and
video; Providing temporary use of 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; Providing temporary use of online non-downloadable software for use in providing personal concierge services for others 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,
making restaurant, travel, hotel reservations, and making professional services appointments; Providing temporary use of 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
temporary use of non-downloadable computer software that allows the sharing and transmission of data and information between electronic devices for the purposes of facilitating environmental
monitoring, control, and automation in homes; Installation of security and surveillance software |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18250973 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/09/2020 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
The application was originally filed on a 1(b) and 44(d) basis, without an intent-to-perfect and rely on 44(E) (see:
http://tsdr.gov.uspto.report/documentviewer?caseId=sn90004995&docId=APP20200619092242#docIndex=6&page=1). Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the §44
issue, as outlined in the Office Action, as a bar for registration. |
CORRESPONDENCE INFORMATION (current) |
NAME |
EMILY BURNS |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
tmdocket@google.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
DOCKET/REFERENCE NUMBER |
GT-0667-US-3 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Emily Burns |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
tmdocket@google.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
NOT PROVIDED |
DOCKET/REFERENCE NUMBER |
GT-0667-US-3 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Emily Burns/ |
SIGNATORY'S NAME |
Emily Burns |
SIGNATORY'S POSITION |
Senior Trademark Counsel at Google LLC, California Bar Member |
SIGNATORY'S PHONE NUMBER |
n/a |
DATE SIGNED |
01/13/2021 |
ROLE OF AUTHORIZED SIGNATORY |
Authorized U.S.-Licensed Attorney |
SIGNATURE METHOD |
Sent to third party for signature |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Jan 13 21:12:21 ET 2021 |
TEAS STAMP |
USPTO/ROA-XXXX:XXXX:XXXX:
XXXX:XXXX:XXXX:XXXX:XXXX-
20210113211221372535-9000
4995-760def0e231a8ddcf5da
4c753345e1da73c4f4f1d5903
9206292436a8ee19a2ed0-N/A
-N/A-20210113154409905559 |
PTO- 1957 |
Approved for use through 11/30/2023. OMB 0651-0050 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
90004995 (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9000499 5/large) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 037 for Installation of electronic devices, computer hardware, and security and video surveillance products, HVAC systems, lighting, and appliances
Applicant proposes to amend the following:
Current:
Class 009 for Computer hardware 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; Audio speakers; Loud Speakers; Wireless indoor and outdoor speakers; Voice controlled audio speakers; Electronic devices embedded with computer software that allows
the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; Wireless cameras; digital cameras; motion
activated cameras; video cameras; Electronic monitors and sensors for monitoring water, humidity levels, heat, temperature, air quality, light, movement, motion, sound, and the presence of people,
animals and objects; Light switches; lighting control panels; light systems comprising light sensors and switches; Electronic locks; programmable locking systems comprised of electronic door locks
and keypads; digital door locks; Electronic doorbells; electronic wirelessly enabled doorbells; electronic doorbells featuring a camera; intercoms; Smoke alarms, carbon monoxide alarms, fire alarms;
access control and alarm monitoring systems; security alarm hubs; sound alarms; alarm sensors; security alarm controllers; keypads for use with security alarm devices; electronic key fobs being
remote control apparatus; 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; 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, making restaurant, travel, and hotel reservations, and making professional services appointments; 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; Downloadable voice-controlled search engine software for obtaining data, images, audio and video via a global computer network
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services
to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 18250973 filed 06/09/2020]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Class 009 for Computer hardware 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; Audio speakers; Loud Speakers; Wireless indoor and outdoor speakers; Voice controlled audio speakers; Electronic devices embedded with computer software that allows
the sharing and transmission of data and information between devices for the purposes of facilitating environmental monitoring, control, and automation; Wireless cameras; digital cameras; motion
activated cameras; video cameras; Electronic monitors and sensors for monitoring water, humidity levels, heat, temperature, air quality, light, movement, motion, sound, and the presence of people,
animals and objects; Light switches; lighting control panels; light systems comprising light sensors and switches; Electronic locks; programmable locking systems comprised of electronic door locks
and keypads; digital door locks; Electronic doorbells; electronic wirelessly enabled doorbells; electronic doorbells featuring a camera; intercoms; Smoke alarms, carbon monoxide alarms, fire alarms;
access control and alarm monitoring systems; security alarm hubs; sound alarms; alarm sensors; security alarm controllers; keypads for use with security alarm devices; electronic key fobs being
remote control apparatus; 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; 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, making restaurant, travel, and hotel reservations, and making professional services appointments; 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; Downloadable voice-controlled search engine software for obtaining data, images, audio and video via a global computer network
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise
legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 18250973 filed
06/09/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following:
Current:
Class 038 for Telecommunication services, namely, transmission of emails, text messages, phone calls, voice, data, graphics, images, audio and video clips by means of telecommunications networks,
wireless communication networks, and the Internet
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services
to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 18250973 filed 06/09/2020]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Class 038 for Telecommunication services, namely, transmission of emails, text messages, phone calls, voice, data, graphics, images, audio and video clips by means of telecommunications networks,
wireless communication networks, and the Internet
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise
legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 18250973 filed
06/09/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following:
Current:
Class 042 for Providing temporary use of online non-downloadable software for providing a personal voice-enabled digital assistant; Providing temporary use of online non-downloadable voice
recognition software; Computer services, namely, providing a non-downloadable voice-controlled search engine for obtaining data, images, audio and video via a global computer network; Provision of
Internet search engines; Providing temporary use of online non-downloadable software used to provide voice-controlled information and communications; Electronic storage of electronic media, namely,
images, text, audio, and video data; providing online non-downloadable software for recording, viewing, storing, sharing and analyzing online audio and video; Providing temporary use of 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; Providing temporary use of online non-downloadable software for use in providing personal concierge services for others 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, making restaurant, travel, hotel reservations, and
making professional services appointments; Providing temporary use of 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 temporary use of non-downloadable computer
software that allows the sharing and transmission of data and information between electronic devices for the purposes of facilitating environmental monitoring, control, and automation in homes;
Installation of security and surveillance software; Certification services, namely, ensuring the professional installation of electronic devices, computer hardware, and security and surveillance
products, HVAC systems, lighting, and appliances conforms with certification standards
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services
to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 18250973 filed 06/09/2020]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Providing temporary use of online non-downloadable software for providing a personal voice-enabled digital assistant;
Providing temporary use of online non-downloadable voice recognition software;
Computer services, namely, providing a non-downloadable voice-controlled search
engine for obtaining data, images, audio and video via a global computer network;
Provision of Internet search engines;
Providing temporary use
of online non-downloadable software used to provide voice-controlled information and communications;
Electronic storage of electronic media, namely, images, text, audio,
and video data;
providing online non-downloadable software for recording, viewing, storing, sharing and analyzing online audio and video;
Providing temporary use of 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;
Providing temporary use of online non-downloadable software for use in providing personal concierge
services for others 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, making restaurant, travel, hotel reservations, and making professional services appointments;
Providing temporary use of 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 temporary use of non-downloadable computer software that allows the sharing and transmission of data and information
between electronic devices for the purposes of facilitating environmental monitoring, control, and automation in homes;
Installation of security and surveillance
software;
Certification services, namely, ensuring the professional installation of electronic devices, computer hardware, and security and surveillance
products, HVAC systems, lighting, and appliances conforms with certification standardsClass 042 for Providing temporary use of online non-downloadable software for providing a personal
voice-enabled digital assistant; Providing temporary use of online non-downloadable voice recognition software; Computer services, namely, providing a non-downloadable voice-controlled search engine
for obtaining data, images, audio and video via a global computer network; Provision of Internet search engines; Providing temporary use of online non-downloadable software used to provide
voice-controlled information and communications; Electronic storage of electronic media, namely, images, text, audio, and video data; providing online non-downloadable software for recording,
viewing, storing, sharing and analyzing online audio and video; Providing temporary use of 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; Providing temporary use of online non-downloadable software for use in
providing personal concierge services for others 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, making restaurant, travel, hotel reservations, and making professional services appointments; Providing temporary use of 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 temporary use of non-downloadable computer software that allows the sharing and transmission of data and information between electronic devices for
the purposes of facilitating environmental monitoring, control, and automation in homes; Installation of security and surveillance software
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide
intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application.
For a
collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to
exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority
based upon a foreign application.
For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise
legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 18250973 filed
06/09/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
ADDITIONAL STATEMENTS
Miscellaneous Statement
The application was originally filed on a 1(b) and 44(d) basis, without an intent-to-perfect and rely on 44(E) (see:
http://tsdr.gov.uspto.report/documentviewer?caseId=sn90004995&docId=APP20200619092242#docIndex=6&page=1). Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the §44
issue, as outlined in the Office Action, as a bar for registration.
Correspondence Information (current):
EMILY BURNS
PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@google.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
The docket/reference number is GT-0667-US-3.
Correspondence Information (proposed):
Emily Burns
PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@google.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
The docket/reference number is GT-0667-US-3.
Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all
official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).
SIGNATURE(S)
Response Signature
Signature: /Emily Burns/ Date: 01/13/2021
Signatory's Name: Emily Burns
Signatory's Position: Senior Trademark Counsel at Google LLC, California Bar Member
Signatory's Phone Number: n/a Signature method: Sent to third party for signature
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
Mailing Address: EMILY BURNS
1600 AMPHITHEATRE PARKWAY
MOUNTAIN VIEW, California 94043
Mailing Address: Emily Burns
1600 AMPHITHEATRE PARKWAY
MOUNTAIN VIEW, California 94043
Serial Number: 90004995
Internet Transmission Date: Wed Jan 13 21:12:21 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20210113211221372535-90004995-
760def0e231a8ddcf5da4c753345e1da73c4f4f1
d59039206292436a8ee19a2ed0-N/A-N/A-20210
113154409905559