Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/430046

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

The examining attorney encloses information regarding pending Application Serial Nos. 78114164, 78114168, 78114173, and 78118621.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

The applicant must indicate whether the letters “CSO” have any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

The application identifies services that may be classified in several international classes. While most of the services appear to be in class 36, “auctioning” is in class 35. Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

The services require some clarification per Rule 2.32(a)(6) and contain duplicate language.  The “commodity exchange services” and “conducting a commodities exchange” is duplicative.  One instance must be deleted. 

 

                        “trading support services” and “providing other services” is indefinite and must be clarified or deleted. 

 

The following is acceptable and should be adopted, if accurate.

 

                        Class 35-  Providing auction services for auctioning, liquidating and remarketing emission allowances and offsets of others pertaining to carbon dioxide, methane and other greenhouse gases.

 

                        Class 36-  Commodity exchange services for the trading and sale of emission allowances and offsets, representing the release to or removal from the atmosphere of carbon dioxide, methane and other greenhouse gases, between businesses and other market participants; Providing financial information in the nature of market trades and quotations for emission allowances and offsets of carbon dioxide, methane and other greenhouse gases. 

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  Please note that the examining attorney has found potentially conflicting pending applications.

 

 

 

 

 

 

 

 

/G. Mayerschoff/

Trademark Attorney, LO-107

Hrs. 8:30 am- 6pm

703- 308- 9107 x170

Fax- 703- 746-8107

ecom107@uspto.gov

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335 per class for classes added on or after January 1, 2003.  

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.