UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 3/7/2008

 

 

This letter responds to the applicant’s communication filed on January 21, 2008.  Applicant 1) proposed amendment to the identification, 2) submitted copies of the foreign registration, 3) submitted a substitute drawing, and 4) argued against the requirement to amend the identification wording “electrical power generators” and to further specify the nature of the substances that pertain to the services.  While the wording “electrical power generators” and applicant need not describe the precise nature of the “substance” listed in the identification of services, the identification is must be further amended, as discussed below.  The copies of the foreign registration and substitute drawing are acceptable.

 

Identification – Classes 36, 39 and 40

The following wording in the identification of goods and/or services in the U.S. application is unacceptable because it exceeds the scope of the goods and/or services in the foreign application or registration:  “distribution for others of petroleum, natural gas and related hydrocarbons, and all other gases and substances, whether liquid or solid and whether hydrocarbons or not, that are produced in association with the petroleum, natural gas and related hydrocarbons and are contained in an oil and gas reservoir; distribution and transmission of electricity” and “transportation of electricity” and “transportation of petroleum, natural gas and related hydrocarbons, and all other gases and substances, whether liquid or solid and whether hydrocarbons or not, that are produced in association with the petroleum, natural gas and related hydrocarbons and are contained in an oil and gas reservoir,” and “production of petroleum, natural gas and related hydrocarbons, and all other gases and substances, whether liquid or solid and whether hydrocarbons or not, that are produced in association with the petroleum, natural gas and related hydrocarbons and are contained in an oil and gas reservoir.”  37 C.F.R. §2.32(a)(6). 

 

There are no distribution services in the foreign registration.  The only “production” services in the foreign registration pertain to electricity.  When an applicant has submitted an unacceptable identification of goods and/or services, it is Office practice to suggest acceptable substitute wording for “transportation of electricity.”  In this case, however, the trademark examining attorney is unable to suggest substitute wording for “transportation of electricity” because the nature of the services is unclear from the application record.  TMEP §1402.01(e).  Indeed, the examining attorney suggests deleting “transportation of electricity.” Despite the fact that the wording is in applicant’s prior registration, the wording “transportation of electricity” needs further clarification or deletion. As to the “transportation of petroleum,” etc., applicant may simply amend the identification to include the omitted wording “via pipeline, rail or truck.”

 

Therefore, applicant must either:

 

(1)    Amend the identification of goods and/or services in the U.S. application to correspond to the goods and/or services identified in the foreign application or registration, ensuring that all goods and/or services beyond the scope of the foreign application or registration are deleted from the U.S. application; or

 

(2)    Delete the Section 44 basis for the goods and/or services beyond the scope of the foreign application or registration and rely solely on the Section 1 basis for those goods and/or services. 

 

15 U.S.C. §1051; 37 C.F.R. §§2.32(a)(6) and 2.34(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02 et seq., 1012 and 1402.01(b). 

 

 

The wording “trading…” in the identification of services (Class 36) is unacceptable as indefinite because it is not sufficiently precise.  Because the acceptable word “brokerage” is synonymous with “trading” the examining attorney suggests deleting “trading.”   “Transmission of electricity” is in Class 40.

 

Applicant may adopt the following identification of goods and/or services, if accurate:  BROKERAGE OF ELECTRICITY, PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS, AND ALL OTHER GASES AND SUBSTANCES, WHETHER LIQUID OR SOLID AND WHETHER HYDROCARBONS OR NOT, THAT ARE PRODUCED IN ASSOCIATION WITH THE PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS AND ARE CONTAINED IN AN OIL AND GAS RESERVOIR in International Class 36 and/or; TRANSPORTATION OF PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS, AND ALL OTHER GASES AND SUBSTANCES, WHETHER LIQUID OR SOLID AND WHETHER HYDROCARBONS OR NOT, THAT ARE PRODUCED IN ASSOCIATION WITH THE PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS AND ARE CONTAINED IN AN OIL AND GAS RESERVOIR VIA PIPELINE, RAIL OR TRUCK; STORAGE OP PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS, AND ALL OTHER GASES AND SUBSTANCES, WHETHER LIQUID OR SOLID AND WHETHER HYDROCARBONS OR NOT, THAT ARE PRODUCED IN ASSOCIATION WITH THE PETROLEUM, NATURAL GAS AND RELATED HYDROCARBONS AND ARE CONTAINED IN AN OIL AND GAS RESERVOIR in International Class 39 and/or  TRANSMISSION OF ELECTRICITY; GENERATION AND PRODUCTION OF ELECTRICITY in Class 40. TMEP §1402.01.  TMEP §1402.11.

The applicant is encouraged to visit the Patent and Trademark Office’s web site at  http://tess2.gov.uspto.report/netahtml/tidm.html. to find examples of acceptable identifications of goods and services.  The applicant is encouraged to use the precise wording from recent registrations in amending the identification to items not found in the Manual of Acceptable Identifications.

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

 

 

Request For Information

Applicant should provide the following information to permit the examining attorney to reach an informed final determination concerning the proposed mark:  Applicant must provide any available advertising, promotional or explanatory material concerning the “transportation of electricity”  services.  If no such explanatory or promotional material is available, the applicant should provide the information for competitors’ goods and/or services. The applicant may also furnish any other evidence the applicant considers relevant to the registrability of the proposed mark.  In re Teledyne Industries, Inc., 696 F.2d 968, 217 USPQ 9 (Fed. Cir. 1982); 37 C.F.R. Section 2.61(b). TMEP §§814 and 1402.01(d).

Note that the above information request and factual inquiries form an important part of this Office action.   An applicant may not rely upon its own failure to provide information legitimately sought by the Office in claiming that its mark is registrable. See In re Page, 51 USPQ2d 1660 (TTAB 1999). Therefore, should applicant wish to pursue this application further by responding to this Office action, any failure to address the above information request and inquiries will be considered grounds for abandonment for failure to file a complete response. See 37 C.F.R. Section 2.65(a).

 

Response Guidelines

 

The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  Any arguments regarding the contents of the Office Action should be made in writing, as those discussions should be made of record.

 

 

 

USPTO

/Tracy Whittaker-Brown/

Examining Attorney, Law Office 111

U.S. Patent & Trademark Office

Phone: 571-272-9397

Fax: 571-273-9111(formal responses only)

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 3/7/2008 FOR

APPLICATION SERIAL NO. 77148215

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77148215&doc_type=OOA&mail_date=20080307 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 3/7/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.