Response to Office Action

Trademark

Google LLC

Response to Office Action

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



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