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  76/531520

 

This Office action supersedes any previous Office action issued in connection with this application.

The assigned examining attorney has reviewed the referenced application filed on July 18, 2003 and has determined the following:

I.          No Conflicting Marks Found

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.

II.            Reclassification and Recitation of Services

The wording "MONITORING, METERING AND REVIEWING ENERGY USAGE FOR OTHERS" in the recitation of services is indefinite.  In addition, the wording, “COMPUTER SERVICES, NAMELY, PROVIDING ON-LINE MAGAZINES AND NEWSLETTERS ON A GLOBAL COMPUTER NETWORK IN THE FIELD OF ENERGY GENERATION, TRANSMISSION, TRANSPORTATION, DISTRIBUTION, USAGE, STORAGE, PROCESSING, AND SERVICES, AND IN THE FIELD OF THE DESIGN, CONSTRUCTION, MANAGEMENT, ACQUISITION, SALE FINANCING, AND OPERATION OF POWER AND/OR FUEL FACILITIES, ENERGY USAGE AND CONSERVATION, AND ENVIRONMENTAL AND COMMUNITY ISSUES” in the recitation of services must be clarified.  Please note that if there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended use to avoid the use of indefinite words and phrases.  TMEP §1402.01.  The applicant must amend the recitation to specify more information about these services, specify the common commercial name of the services and clarify the correct classification.

 

The applicant may adopt any of the following classifications and recitations, if accurate:

"Industrial and engineering design for others in the field of public utilities and in connection with energy facilities and infrastructure; technical consultation in the field of energy " in International Class 42

“Energy usage management, namely, monitoring, metering and reviewing energy usage for others” in International Class 35.

"Computer services, namely, providing electronic library services which feature magazines and newsletters in the field of energy generation, transmission, transportation, distribution, usage, storage, processing, and services, and in the field of the design, construction, management, acquisition, sale, financing, and operation of power and/or fuel facilities, energy usage and conservation, and environmental and community issues via an online computer network" in International Class 41. 

The applicant may also refer to The Trademark Acceptable Identification of Goods and Services Manual at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual for guidance.  The Trademark Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications. 

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 goods and services that are not within the scope of goods and/or services set forth in the present identification.  Therefore, the applicant may not amend to include any services that are not within the scope of services set forth in the present identification.

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 and/or services by international class with the classes listed in ascending numerical order.  TMEP section 1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 1403.  The applicant has paid for one class, only.

 

III.            Declaration

 

The previously submitted declaration is defective because it states that applicant is entitled to use the trademark, but not that the applicant is entitled to use such mark in commerce.  15 U.S.C. §1051(a)(3), 37 C.F.R. §2.33(b)(1); TMEP §804.02.

 

Applicant must submit a written statement attesting to the facts set forth in the application, and confirming that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  This statement must be dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.  No signed verification was provided with the application.

 

To satisfy this requirement, applicant may add the following declaration paragraph at the end of its response, properly signed and dated:

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), 1126(d) or 1126(e), he/she believes applicant to be entitled to use such mark in commerce; that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

__________________________________

(Signature)

 

__________________________________

(Print or Type Name and Position)

 

__________________________________

(Date)

 

If the applicant has any questions of needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Lana H. Pham/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 ext. 186

Lana.Pham@uspto.gov

 

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.