To: | Google LLC (tmdocket@google.com) |
Subject: | U.S. Trademark Application Serial No. 90042186 - GT-1100-US-2 |
Sent: | January 07, 2021 05:40:33 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90042186
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Correspondence Address:
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Applicant: Google LLC
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Reference/Docket No. GT-1100-US-2
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 07, 2021
This application comes to the examiner’s attention because of a query based on the identification of goods and services.
PLEASE NOTE: Applicant is encouraged to telephone the trademark examining attorney to resolve the issues raised below, if applicant does not add any additional class to the application.
IDENTIFICATION OF GOODS AND SERVICES: CLASS 42 ONLY
The examiner previously approved the application for publication. However, the Office has determined that the present identification is not, in fact, acceptable for the services in International Class 42. The examiner apologizes for any confusion.
Presently, the identification of goods and services in International Class 42 reads:
“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 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; Providing temporary use of online non-downloadable software used for the control of voice controlled information and communication devices; providing temporary use of online non-downloadable software for accessing and searching online databases and websites; Providing temporary use of online non-downloadable software for searching a user's mobile phone, computer, tablet, or other electronic communication device for documents, files, and other stored information on command” in International Class 42.
With regard to the identification in International Class 42, “Providing 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” appears in International Class 42 is indefinite and too broad and must be clarified to specify that the format is online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Providing temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d).
Specifically, for software identifications, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software. TMEP §1402.03(d). Additionally, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable. See id. Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Therefore, applicant may amend to the following, if accurate:
“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 online, 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; Providing temporary use of online non-downloadable software used for the control of voice controlled information and communication devices; providing temporary use of online non-downloadable software for accessing and searching online databases and websites; Providing temporary use of online non-downloadable software for searching a user's mobile phone, computer, tablet, or other electronic communication device for documents, files, and other stored information on command” in International Class 42.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at: http://tess2.gov.uspto.report/netahtml/tidm.html.
QUESTIONS
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Marcie R. Frum Milone/
Trademark Examining Attorney
Law Office 116
571-272-9726
Marcie.Milone@uspto.gov
(email for informal communications only)
RESPONSE GUIDANCE