To: | BOB LITTER'S FUEL AND HEATING CO., INC. (mmartin-jones@porterwright.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77922381 - VMP - 14007989-753 |
Sent: | 4/29/2010 3:30:24 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/922381
MARK: VMP
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: BOB LITTER'S FUEL AND HEATING CO., INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 4/29/2010
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
A. Section 2(d) Refusal- Likelihood of Confusion
Similarity of the Marks
The marks of the respective parties are identical, “VMP”.
Comparison of the Services—Identical Services
While the parties have used different language to describe their services, the services identified are identical in nature, namely, both parties provide services designed to aid the management of one’s energy usage. A determination of whether there is a likelihood of confusion is made solely on the basis of the services identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see TMEP §1207.01(a)(iii). If there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).
As such, the services of the parties are presumed to be identical.
In the present case, the parties are using identical marks in connection with potentially identical services marketed to the same end consumer through the same trade channels. Therefore, registration is refused under Section 2(d) of the Trademark Act.
B. Potential Additional Likelihood of Confusion Refusal
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
Applicant should note the following additional ground for refusal.
C. Specimen Refusal—Does Not Show Use with Identified Services
In this case, the specimen consists of a printout of applicant’s website. On the specimen, applicant states:
“Introducing our new “Vapor Management Program” or “VMP”. In the past, the standard in the propane industry was to fill the propane tank and bill the customer for the delivery. Were now offering a little twist to that theme, Litter’s now has a program whereby a customer can have a vapor meter hooked up to their propane supply line and only pay for what they've used instead of paying for the gas that is delivered to the propane tank. The intent of using the vapor meter is to align the customers billing to match their consumption. With the VMP program, every time a propane delivery is made you don't have to break the piggy bank.”
Based on the above paragraph, it appears applicant provides propane tanks containing a meter so that the customer may monitor its own energy usage. To the extent that the specimen demonstrates use of the mark in connection with a service, it is a propane delivery or distribution service, not an energy usage management service. The specimen does not demonstrate that applicant is managing anything. Thus the specimen does not demonstrate that applicant is engaged in energy usage management.
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for each class of services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a service mark for the identified services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
/Nicholas A Coleman/
Examining Attorney
Law Office 115
Office: 571-272-4917
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.
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. Responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
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.