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:  May 18, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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.

 

However, applicant must respond to the issue below.

 

AMENDMENT TO THE IDENTIFICATION OF GOODS & SERVICES REQUIRED

 

Particular wording in the identification of goods is indefinite and too broad, and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Generally, 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. For services, applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Specifically, the issues are as follows:

 

• The identifications for “security and safety systems for vehicles” and “computer and telecommunication apparatus and systems for securing and recording property in vehicles” in International Class 09 are indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).  For example, “vehicle security system comprised of an antenna and radio transmitter to be placed in a vehicle” is in International Class 09 and “security alarms for vehicles” are in International Class 12. Applicant must clarify the goods by (1) describing the nature, purpose, or use of the systems; and (2) listing the systems’ parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the systems.  See TMEP §1401.05(d). 

 

• The identification for “back-end monitoring hardware for vehicles” is indefinite and the applicant must further clarify the nature of the “hardware” contemplated, such as “video monitors, proximity sensors and cameras” in Class 09. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

• The identification for “security devices and equipment for vehicles” in International Class 09 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “vehicle security system comprised of an antenna and radio transmitter to be placed in a vehicle” is in International Class 09 and “security alarms for vehicles” are in International Class 12. Therefore, the applicant must further specify the nature of the “devices and equipment” contemplated and classify the goods accordingly.

 

• The identification for “camera input and output devices with motion detection for vehicles” is indefinite and the applicant must further specify the “input and output devices” contemplated, such as “motion sensors” in Class 09. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

• The identification for “Telecommunication services for delivering security alerts for vehicles” in Class 38 is indefinite and the applicant must further specify the nature of the “security alerts” contemplated, such as “providing electronic message alerts via the internet” in Class 38. Id.

 

• The identifications for “Remote monitoring and security for vehicles” and “backend monitoring services for vehicles” in Class 45 must be clarified because they are too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass monitoring services “for commercial purposes” in Class 35, monitoring of computer systems in vehicles “to ensure proper functioning” in Class 42 or monitoring of “security alarm systems” for vehicles in Class 45. Therefore, the applicant must further clarify the primary nature of the services contemplated and classify the service accordingly.

 

• The identification for “security services for protection of property in vehicles” in Class 45 must be clarified because it is too broad and could include services in other international classes.  Id.  In particular, this wording could encompass “computer security services for protection of property in vehicles, namely, providing technology information updates for vehicle security systems via the global computer network” in Class 42 or “security services for protection of personal property in vehicles” in Class 45. Therefore, the applicant must further clarify the primary nature of the services contemplated and classify the service accordingly.

 

• The identification for “apparatus for monitoring and security for vehicles” in Class 45 is indefinite and misclassified. See 37 C.F.R. §§2.32(a)(6),(7), 2.85; TMEP §§1402.01, 1401.03(b). Specifically, this wording can encompass “vehicle safety equipment, namely, electronic vibration, shock, motion, angle, temperature and voltage monitors” in International Class 09 and “security alarms for vehicles” in International Class 12. Id. Therefore, the applicant must further specify the nature of the goods contemplated and classify the goods accordingly.

 

• The identification for “providing vehicle security and safety services through mobile software applications and web based software” in Class 45 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “monitoring of vehicle computer systems by remote access to ensure proper functioning” in Class 42 or “fleet monitoring services for safety purposes” in Class 45. Therefore, the applicant must further clarify the primary nature of the services contemplated and classify the services accordingly.

 

In each instance where further clarification as to the nature of the goods and services is required, the examining attorney has provided a suggestion for an acceptable amendment in bold, italics and underline below. If the suggestions are not accurate or comprehensive, the examining attorney strongly encourages the applicant to utilize the USPTO’s online identification manual (link below) to search for the goods and services contemplated.

 

Please note that if the applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 09: Downloadable software for remote vehicle monitoring and security; security and safety systems for vehicles comprised of an antenna and radio transmitter to be placed in a vehicle; back-end monitoring hardware for vehicles, namely, video monitors, proximity sensors and cameras; theft prevention installations for vehicles; anti-theft devices and equipment for vehicles; security devices and equipment for vehicles, namely, vehicle security system comprised of an antenna and radio transmitter to be placed in a vehicle; camera input and output motion sensors devices with motion detection for vehicles; motion detectors for vehicles; motion sensors for vehicles; computer and telecommunication apparatus and systems comprised of computers, cameras and motion sensors for securing and recording property in vehicles; apparatus for monitoring the security and safety of for vehicles, namely, electronic vibration, shock, motion, angle, temperature and voltage monitors.

 

Class 12: Security and safety systems for vehicles comprised of security alarms for vehicles; security devices and equipment alarms for vehicles; apparatus for monitoring and security for vehicles, namely, security alarms for vehicles.

 

Class 35: Remote monitoring and security for of vehicles for commercial purposes; backend monitoring services for of vehicles for commercial purposes.

 

Class 38: Telecommunication services for delivering security alerts for vehicles, namely, providing electronic message security alerts for vehicles via the internet.

 

Class 42: Remote monitoring and security of computer systems for in vehicles to ensure proper functioning; computer security services for protection of property in vehicles, namely, providing technology information updates for vehicle security systems via the global computer network; backend monitoring services for vehicles, namely, monitoring of computer systems in vehicles to ensure proper functioning; providing vehicle security and safety services through mobile software applications and web based software, namely, monitoring of vehicle computer systems by remote access to ensure proper functioning.

 

Class 45: Remote monitoring and security of for vehicles security alarm systems; security services for protection of personal property in vehicles; backend monitoring services for vehicles, namely, monitoring of vehicle security alarm systems; apparatus for monitoring and security for vehicles; providing vehicle fleet monitoring services security and for safety purposes services through mobile software applications and web based software.

 

SCOPE ADVISORY: Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b). 

 

The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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

 

For information on how to identify the goods and services in an application, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 6, “Goods and services.”

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least six (6) classes; however, applicant submitted fees sufficient for only three (3) classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

The applicant may call or email the assigned trademark examining attorney with specific 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.    

 

 

/Deborah L. Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@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 May 18, 2021 for

U.S. Trademark Application Serial No. 90463166

 

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. 

 

 

/Deborah L. Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@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 May 18, 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.”