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  76/592118

 

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

 

SEARCH OF OFFICE RECORDS

 

The examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

REGISTRATION

 

Likelihood of Confusion

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No. 78/182698.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Identification of Goods

 

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate:  Pre-fabricated, integrally wired, modular electrical power distribution and control system, comprised of main distribution power panelboards, lighting panelboards, smart breakers, distribution transformers, lighting and HVAC control (energy management or facility management), lighting contactors, disconnect switches, emergency and uninterrupted power supplies, automatic transformer switches, alarm control and telephone systems used in all retail, institution (education/K-12, colleges and universities, and hospitals), and commercial construction markets, (in International Class 9); Energy use management, (in International Class 35); Installation, repair and maintenance of cleanroom facilities and equipment;  HVC contractor services, (in International Class 37) in the nature of energy management .  TMEP §1402.01.

 

Identification Limited to Clarification and Limitation

 

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 that are not within the scope of goods set forth in the present identification.

 

 

For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).

 

Additional Fee Required

 

 

 

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.  

 

Upon resolution of the informalities, action on this application will be SUSPENDED pending the outcome of Serial No. 78/182698.

 

 

Applicant's Response

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  The applicant may also visit the Patent and Trademark Office’s home page at www.uspto.gov.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or electronic mail.  TMEP 702.04(e); Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

Note:  To reach the undersigned attorney by phone after October 12, 2004 please call (571) 272-9258. 

 

To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9102. See the below information regarding relocation of the agency.

 

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

                                                                        /pbm/

Paula B. Mays

Trademark Examining Attorney

Law Office 102

Telephone: (571) 272 9258

Fax:  (571) 273-9102

General E-mail: www.uspto.gov

Trademark Examining Attorney

Law Office 102

Telephone: (571) 272 9258

Fax:  (571) 273-9102

General E-mail: www.uspto.gov

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.