UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/526913
APPLICANT: Echelon Corporation
|
|
CORRESPONDENT ADDRESS: DAX ALVAREZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 12400 WILSHIRE BOULEVARD, SEVENTH FLOOR LOS ANGELES, CA 90025-1030
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
|
MARK: DIGITAL HOME POWERED BY ECHELON
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 20820.T081US
CORRESPONDENT EMAIL ADDRESS:
|
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/526913
The assigned examining attorney has reviewed the referenced application and determined the following.
Search Results
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The recitation of services is unacceptable ,since it does not comport with the USPTO WEBSITE OF ACCEPTABLE SERVICE IDENTIFICATIONS found at www.uspto.gov. Management Services do not belong in Class 42. See website reference and properly describe and classify same..
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.
Combined Applications
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.
Disclaimers
The applicant must disclaim the descriptive wording DIGITAL HOME apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because these are non-distinctive trade terms as intended to be used with digital type services employed within the modern digital home environment. Enclosed is REG.2347756 on the Supplemental Register due to the non-distinctive nature of digital home..
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use DIGITAL HOME apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Claim of Ownership
If the applicant is the owner of Registration Nos. 1783245;2184412, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
Fee Increase
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 $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
/G.T.GLYNN/
ecom106@uspto.gov
Trademark Examining Attorney-Law Office 106
703-3089106x260
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.