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  76/546506

 

 

 

The assigned trademark examining attorney has reviewed the referenced application filed on September 23, 2003, and has determined the following.

 

Prior pending application

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 a potentially conflicting pending application.

 

The examining attorney encloses information regarding pending Application Serial No. 76/093858.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application 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.

 

Recitation of services 

THIS REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The recitation of services is unacceptable as indefinite because it does not clearly identify all of the services.  Furthermore, because the application was submitted as a photocopy or facsimile, some of the punctuation is not clear and the applicant must clarify the locations of semi-colons and the like.  The applicant may adopt the following recitation, if accurate: 

 

International Class 35:  employment agencies; advertising services, namely demonstration of goods, dissemination of advertising matter, rental of advertising space, direct mail advertising relating to environmental protection, new energies, the preservation of natural resources and sustainable development, promotion of electrical producers on behalf of others, distributing flyers and samples for others, disseminating advertising for others via the internet; accounting services; providing consulting and information in the nature of (the applicant must d3fine the type of information because this determines the proper classification.  For example, technical information may be classified in International Class 40.) concerning electrical energy consumption or non-consumption; production price analysis; providing economic forecasts in the fields of energy, new energies, environmental conservation, natural resources, urban planning, the environment, ecology and sustainable development; public relations concerning energy, environmental protection, new energies; natural resource conservation, and sustainable development; partnership searches namely, (the applicant must define what these “partnership searches” entail in order to ensure proper classification) in the business field concerning energy, environmental protection, new energies, natural resource conservation and sustainable development; business management and development assistance in the nature of (the applicant must specify the type of assistance in order to ensure proper classification) and consulting in the organization and management of business in the fields of energy, new energies, environmental conservation, natural resources, urban planning, the environment, ecology and sustainable development; organization of trade show expositions for commercial purposes and advertising concerning energy, environmental protection, new energies, natural resource conservation and sustainable development; market studies and research in the field of energy, environmental protection, new energies, natural resource conservation, and sustainable development; efficiency experts in the field of environmental protection, new energies, the preservation of natural resources and sustainable development

 

International Class 36: insurance services namely, (the applicant must identify the specific insurance services), real estate affairs namely, (the applicant must identify the specific real estate services), insurance namely, (the applicant must identify the specific insurance services), banking and real estate financial evaluation services, fund investments, all in the field of energy, environmental protection, new energies, natural resource conservation and sustainable development; fund raising for humanitarians purposes; financial consulting services in the field of energy, environmental protection, new energies, natural resource conservation and sustainable development; financial loans namely marketing and receiving applications for loans from others for energy related purposes; methods, analysis, planning and corporate development design for financial purposes namely, (the applicant must identify the specific “methods, analysis, planning and corporate development design” services), providing financial information, financial sponsorship, financial experts in the field of energy, environmental protection, new energies, natural resource conservation and sustainable development

 

International Class 37: construction, rehabilitation, and renovation of electrical systems, electric dams, power stations, hydroelectric stations, building, building complexes, and offices; construction, installation and repair of irrigation devices; supervision and management of construction projects of electric dams, power stations, hydroelectric stations, buildings, building complexes and offices in the field of energy, environmental protection, new energies, natural resource conservation and sustainable development; providing information for installation and repair of lighting, heating, steam generation, refrigeration, drying, ventilation, and water distribution equipment, electrical air conditioning equipment, and heaters; proving information concerning installation, maintenance and repair of air conditioning equipment, lighting equipment, computer equipment, electrical equipment; providing information and consulting for construction, conversion, rehabilitation and renovation of electric dams, power stations, hydroelectric stations, buildings, building complexes, and offices

 

International Class 41: Publication and publishing of books, journals and text other than publicity texts, and organization of competitions, in the fields of energy, new energies, environmental conservation, natural resources, urban planning, the environment, ecology, and sustainable development; education namely, (the applicant must identify the specific education services) and providing training, arranging and conducting training workshops, seminars, symposiums, colloquiums, conferences, congresses and training courses, and providing information relating to education, all in the fields of energy, new energies, environmental conservation, natural resources, urban planning, the environment, ecology and sustainable development

 

International Class 42: Conducting studies, analyses and diagnostics for the implantation and installation of electrical machinery and systems, namely lighting, heating, steam generation, cooking, refrigeration, dying, ventilation, water distribution, and sanitary facilities equipment, electrical air conditioning equipment, and heaters; conducting partnership searches namely, (the applicant must define what these “partnership searches” entail in order to ensure proper classification) unrelated to business management in the field of research and development of energy and electricity, environmental conservation, natural resources and sustainable development; legal services in the field of research and development of energy and electricity and relating to partnership research in the field of research and development of energy and electricity; assistance namely, (the applicant must identify the specific type of assistance) in setting up non-business association in the field of research and development of energy and electricity, environmental conservation, natural resources and sustainable development; computer software development relating to energy, electricity, environmental conservation, natural resources and sustainable development; data conversion of computer program data or information, construction drafting, relating to energy, electricity, environmental conservation, natural resources and sustainable development; engineering relating to evaluation, estimate, appraisal, research and reports in the fields of energy, new energies, environmental conservation, natural resources, urban planning, the environment, ecology and sustainable development; providing consulting and information in the nature of (the applicant must identify the type of information in order to ensure proper classification) related to energy, electricity environment conservation, natural resources, and sustainable development as well as their control and cost; providing professional consultations in the fields of energy, electricity, environmental conservation, natural resources, and sustainable development but unrelated to business management; conducting studies and research concerning energy and electricity, environmental conservation, natural resources, and sustainable development providing to others information in the fields of research and development of energy and electricity, environmental conservation, natural resources and sustainable development; providing technical project analyses and studies concerning energy, electricity, environmental conservation, natural resources and sustainable development. 

 

TMEP §1402.11.

 

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.

 

Additional classes

The application identifies services that may be classified in several international classes.  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 10, 2000, the fee for filing a trademark application is $325 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 10, 2000, the fee for filing a trademark application is $325 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Disclaimers

Applicant must disclaim the descriptive wording “fund” apart from the mark as shown because it merely describes the financial services.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “fund” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Significance of Mark

Applicant must specify what “e7” means and whether it has any significance in the relevant trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Certificate Required

If applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin.  Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

Drawing

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §§2.52.  The current drawing is not acceptable because the depiction of the mark is unclear; the drawing is a photocopy of the mark that will not reproduce satisfactorily.  TMEP §807.07(a).

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

Advisory - New Drawing Rules in Effect for Applications Filed on or After November 2, 2003

New Trademark Rules pertaining to drawings went into effect on November 2, 2003.  The new rules may be found at 37 C.F.R. §2.52 et seq. and information regarding these rules may be found in Exam Guide 01-03.

 

All applications filed on or after November 2, 2003, must comply with the new drawing rules.   For applications filed before November 2, 2003, the new rules are optional.  Applicants opting to amend their drawing to comply with the new rules must advise the assigned Examining Attorney.

 

Description Needed

Applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The following is suggested:

 

The mark consists of (the applicant must insert a description of the mark).

 

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.

 

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

 

 

/Eugenia K. Martin/

Eugenia K. Martin

Examining Attorney

Law Office 114

(703) 308-9114 x122

(703) 746-8114 (fax)

 

 

 

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 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.