Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  July 12, 2021

 

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

 

Search Results

 

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

 

Summary of Issues

 

·       Identification and Classification of Goods

 

Identification of Goods

 

The identification of goods is indefinite and must be clarified to indicate the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Additionally, the wording “Wifi” in the identification of goods is a non-punctuated form of a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the goods.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration No(s). 2523241 and 2525795. 

 

Identifications of goods should generally be comprised of generic everyday wording for the goods, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1).  Applicant may replace such wording with the wording suggested below, if appropriate:

 

Applicant has classified “smart light bulbs” in International Class 9; however, the proper classification is International Class 9.  Therefore, applicant may respond by (1) reclassifying these goods in the proper international class, (2) deleting smart light bulbs” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d). Applicant may adopt the wording suggested below in International Class 9, if accurate:

 

Applicant may adopt the following wording, if accurate:

 

Class 7: electric garage door openers, electric door openers; vacuum cleaners; smart vacuums being robot vacuum cleaners

 

Class 9: computer smart home display monitors; thermostats; electrical controllers, namely, heating, ventilation, and air conditioning controllers; temperature sensors; lighting switches; lighting controllers; electronic sprinkler controllers; landscaping controllers being electrical controllers for sprinkler systems; environmental controllers being electrical controllers for temperature; televisions; media display equipment, namely, computer display monitors; smart-home electronic controllers; wireless communications equipment being devices for data transmission; network routers; network communications equipment, namely, wireless routers; motion electronic door remote controllers; motion sensors; security display computer monitors; electronic digital door locks; security computer keypads; electronic doorbells; smart light dimmers; electrical smart plugs; smart light switches; smart netcams being cameras; smart lights being light systems comprising light sensors and switches; contact sensors being electrical sensor apparatus for sensing the presence or absence of individuals or objects by contact or pressure; communication hubs; alarms, namely, burglar and anti-intrusion alarms; access control and alarm monitoring systems, namely, alarm alert systems for monitoring homes and other buildings, comprised of security cameras and motion sensors; devices for expansion of internet connectivity namely, downloadable software for connecting, operating, and managing networked {indicate devices, e.g., cars, kitchen appliances, HVAC systems, etc.} in the internet of things (IoT); wireless internet routers; smart digital door locks; smart home digital door locks; computer hardware; digital audio and video players; media players; entertainment systems, namely, apparatus and instruments for transferring, receiving and storing sound, images and data in digital form on a home computer network; downloadable voice command and recognition software, downloadable speech to text conversion software; downloadable personal assistant software; downloadable home automation and home device integration software; downloadable wireless communication software for voice, audio, video, and data transmission; downloadable computer software used for controlling stand-alone voice controlled information and personal assistant devices; downloadable computer software for use to connect and control internet of things (IoT) electronic devices; downloadable computer software for connecting, operating, integrating, controlling, and managing networked consumer electronic devices, home climate devices and lighting products via wireless networks; downloadable computer software for others to use for the development of software to manage, connect, and operate internet of things (IoT) electronic devices; downloadable computer software to assist a user in operating a computerized handheld device; downloadable computer software for voice recognition and processing voice commands; downloadable computer software for personal information management; downloadable computer application software for handheld wireless devices, namely, software for controlling, integrating, operating, connecting, and managing voice controlled information devices, namely, cloud-connected and voice-controlled smart consumer electronic devices and electronic personal assistant devices; none of the aforesaid for professional photographic and cinematographic cameras including professional photographic and cinematographic specific accessories therefor and professional photographic and cinematographic software

 

Class 11: microwave ovens for cooking; electric small kitchen appliances for domestic and commercial use, namely, electric coffee makers; electric air fryers; apparatus, namely, light bulbs; lighting fixtures; ceiling fans; smart light bulbs

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Assistance

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

 

 

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

 

 

/Catherine Caycedo/

Catherine Caycedo

Trademark Examining Attorney

Law Office 101

(571) 272-7066

Catherine.Caycedo@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 12, 2021 for

U.S. Trademark Application Serial No. 90452662

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Catherine Caycedo/

Catherine Caycedo

Trademark Examining Attorney

Law Office 101

(571) 272-7066

Catherine.Caycedo@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 12, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”