Offc Action Outgoing

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: 1/28/2010

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

Identification of Goods

 

The identification of goods is: 

 

Class 09:  Computer software; computer hardware; computer software and networking equipment, namely, network hardware and software for developing, securing, monitoring and managing machine to machine networks; computer software and networking equipment, namely, network hardware and software for securing, monitoring and managing energy in the public utilities, gas utilities, electric utilities and water utilities industries; computer software and networking equipment, namely, network hardware and software for data collection applications, namely distribution automation and demand side management applications; communications networking systems consisting of computer hardware and software, radio frequency wireless communications technology, one-way and two-way automated meter reading devices and other monitoring and control devices for use in the energy and utility fields; computer hardware and software for use in transmitting data one-way and two-way between a data computing network and remote communications devices, namely, wireless network repeaters, routers, personal computers, laptop computers, cellular phones and handheld computers; electronic interface modules for receiving and transmitting energy-related information and requests between and among commodity meters, electronic devices and a host computer over a wide area network and a local area network; computer database management software used for receiving and monitoring energy usage information from multiple remote commodity meters in the public utilities, gas utilities, electric utilities and water utilities industries; electric utility meters, namely, gas meters, electric meters, and water meters; network interface cards; gateway routers in the nature of computer control hardware; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring data; advanced meter communications devices, namely, transmitters, receivers and antennas used to collect, store and process consumption data, distribution automation data, demand response data and other information in the energy and utility fields, including electric, water, gas, solar, coal, thermal and nuclear energy

 

The wording used to describe the goods is indefinite and must be clarified.  See TMEP §1402.01.

 

The applicant may adopt the following language, if accurate:

 

Class 09:  Computer software namely <Must specify field and function of software>; computer hardware; computer software and networking equipment, namely, network hardware and software for developing, securing, monitoring and managing machine to machine networks; computer software and networking equipment, namely, network hardware and software for securing, monitoring and managing energy in the public utilities, gas utilities, electric utilities and water utilities industries; computer software and networking equipment, namely, network hardware and software for data collection applications, namely distribution automation and demand side management applications; communications networking systems consisting of computer hardware and software for<specify>, radio frequency wireless communications technology namely<Specify the technology>, one-way and two-way automated meter reading devices and other monitoring and control devices for use in the energy and utility fields; computer hardware and software for use in transmitting data one-way and two-way between a data computing network and remote communications devices, namely, wireless network repeaters, routers, personal computers, laptop computers, cellular phones and handheld computers; electronic interface modules for receiving and transmitting energy-related information and requests between and among commodity meters, electronic devices and a host computer over a wide area network and a local area network; computer database management software used for receiving and monitoring energy usage information from multiple remote commodity meters in the public utilities, gas utilities, electric utilities and water utilities industries; electric utility meters, namely, gas meters, electric meters, and water meters; network interface cards; gateway routers in the nature of computer control hardware; electronic devices, namely, radio frequency repeaters used in long range communication for tracking and monitoring data; advanced meter communications devices, namely, transmitters, receivers and antennas used to collect, store and process consumption data, distribution automation data, demand response data and other information in the energy and utility fields, including electric, water, gas, solar, coal, thermal and nuclear energy

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        Applicant must list the goods and/or services by international class; and

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

If the applicant has any questions or needs assistance regarding this action, please telephone the assigned examining attorney.

 

 

/Frank J Lattuca/

Trademark Examining Attorney

Law Office 109

Tel: (571) 270-1518

Fax:  (571) 273-9109

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77853677) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 1/28/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77853677&doc_type=OOA&mail_date=20100128 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 1/28/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.