UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/614794

 

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

 

Search of Office Records

 

The trademark 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. Section 1052(d).  TMEP§ 704.02.

 

Applicant must, however, address the following.

 

Recitation of Services

 

International Class 035

 

Applicant provided the following recitation of services in International Class 035:  “administration, management, and operation of power and energy markets, namely the auction and trading of the transmission and distribution of bulk electricity.”

 

Applicant classified the services “trading of the transmission and distribution of bulk electricity” in International Class 035; however, the correct classification is International Class 036.  Applicant must either delete these services or move the goods to International Class 036.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

The examining attorney suggests the following amendments:

 

Administration, management, and operation of power and energy markets, namely the auction of the transmission and distribution of bulk electricity, in International Class 035.

 

Administration, management, and operation of power and energy markets, namely the trading of the transmission and distribution of bulk electricity, in International Class 036.

 

TMEP §1402.01.

 

International Class 036

 

Applicant provided the following recitation of services in International Class 036:  “brokerage and market services in power and energy markets, namely the transmission and distribution of bulk electricity.”

 

The wording used to describe the services needs clarification because it is inconsistent and does not clearly describe the nature of applicant’s services.  The recitation, as currently worded, suggests two separate services that require classification in more than one International Class. Specifically, the recitation suggests that applicant is providing the brokerage of energy on the one hand, and  the service of transmitting/distributing electricity on the other.

 

If accurate, applicant may adopt the following: 

 

Brokerage and market services in power and energy markets, namely the brokerage of the transmission and distribution of bulk electricity, in International Class 036.

 

TMEP §1402.01.

 

In the alternative, applicant may adopt one or both of the following:

 

Brokerage and market services in power and energy markets, in International Class 036.

 

Transmission and distribution of bulk electricity, in International Class 039.

 

TMEP §1402.01.

 

Please note that, while the recitation of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the recitation to include services that are not within the scope of the services set forth in the present recitation.

 

Combined or Multiple Class Applications

 

If applicant’s amendment to the recitation of services results in more than two International Classes, applicant must either (1) restrict the application to the number of class(es) covered by the fees already paid (i.e. two classes), or (2) submit the fees for the additional class(es).

 

The filing fee for adding classes to an application is as follows:

 (1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

(2)     $375 per class, when the fees are submitted with a paper response. 

Consolidated Appropriations Act, 2005, Pub. L. 108-447.

 

Black and White Drawing Filed with Color Description – Clarification Needed

 

The drawing showing the mark in black and white is unacceptable because the application includes a color description and fails to show the applied-for mark in color.  37 C.F.R. §2.52(b)(1).  All applications for marks claiming color must include a drawing showing the mark in color.  Applicant must therefore submit a new drawing that complies with one of the following:

 

(1)   (a) shows the mark in color, with (b) a statement that “the color(s) blue and black are claimed as a feature of the mark,” and (c) a separate description specifying where the color(s) appears in the mark, i.e., “the color black appears in the wording “MISO” which is underlined and overlined with blue lines;” or

 

(2)   (a) shows the mark in black and white without color lining and with all gray tones deleted; and (b) a statement authorizing deletion of the color description.  In the present case, color is not material to the commercial impression of the mark and therefore can be deleted from the drawing of the mark.  37 C.F.R. §2.72; TMEP §§807.07(d) and 807.14 et seq.

 

Please note that if applicant chooses to pursue a color mark, it must add a color claim and an amended color description as stated in option (1), above.  The application currently does not include a color claim.  Furthermore, applicant’s color description must be amended to include only common color names, e.g., red, yellow blue.  TMEP §807.07(a)(ii).  The current color description includes the color “Pantone blue” which is not a common color name.

 

Please also note that if the applicant choose to pursue a black and white drawing, it must submit a new drawing showing the mark in black and white only, with the gray tones deleted.  The current drawing, shows gray tones in the lines under and over the wording “MISO.”

 

If the applicant has any questions regarding this Office Action it may contact the examining attorney directly at the telephone number listed below.

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

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.

 

 

/Katrina Edge/

Examining Attorney

Law Office 111

Ph:  (571) 272-5886

Fax: (571) 271-9111

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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