Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77922381 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Revised Amendment

The Examining Attorney rejected the proposed amendment to the identification stating that the amendment was beyond the scope of the original wording.  Applicant has amended the recitation to:

 

energy usage management services in the nature of remotely monitoring customers’ propane tank levels to manage delivery of propane

 

The present amendment does not broaden the scope of the original services; therefore applicant requests entry of the proposed amendment to the identification of services.

 

Refusal to register under Section 2(d)

The Examining Attorney rejected the application based on a likelihood of confusion with the mark in U.S. Registration No. 3005955 for VMP for “business services providing visibility, manageability and predictability in managing energy consumption and associated cost”.

 

While each mark is the same, a consumer viewing applicant’s mark and the mark of the registration could clearly differentiate the source.  While the marks are similar as to appearance, their connotation and commercial impression are very different.  Registrant’s mark stands for visibility, manageability and predictability.  The registration provides a commercial impression of conserving energy.  Applicant’s mark stands for vapor management program.  The commercial impression of applicant’s mark is to measure propane to manage the delivery of propane to customers.

 

The services of applicant’s mark and the registration are not the same or related.  The registered mark’s recitation is for business services – consulting.  Applicant’s mark is for measuring propane and managing the delivery of propane.

 

The customers of registrant and applicant are not the same or similar.  Customers marketed to under the registered mark would be sophisticated businesses that seek visibility, manageability and predictability in managing energy consumption.  Customers of applicant purchasing services under applicant’s mark are propane users looking for efficient timing of the delivery of their propane.  Neither customer group would purchase the respective services on impulse.

 

Specimen

Examiner states that the specimen does not show the recited services.  Applicant has submitted a new specimen demonstrating use of the proposed mark in connection with the amended services in response to the Examining Attorney’s refusal of the original specimen.

 

Conclusion

Based upon the remarks above, Applicant submits that the all matters of this application have been addressed.  Applicant also submits that the application is now in condition to be passed to publication and such action is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Energy usage management
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/00/2009 and first used in commerce at least as early as 06/00/2009, and is now in use in such commerce.

Proposed:
Tracked Text Description: Energy usage management; Energy usage management services in the nature of remotely monitoring customers' propane tank levels to manage delivery of propaneClass 035 for Energy usage management services in the nature of remotely monitoring customers' propane tank levels to manage delivery of propane
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/00/2009 and first used in commerce at least as early as 06/00/2009, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 035. The specimen(s) submitted consists of flyer advertizing services.
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPU0-24208154168-165019064_._VMP.pdf
Converted PDF file(s) (1 page)
Specimen File1

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /mrmj/      Date: 05/14/2011
Signatory's Name: Melanie Martin-Jones
Signatory's Position: Attorney of record; Ohio bar member

Response Signature
Signature: /mrmj/     Date: 05/14/2011
Signatory's Name: Melanie Martin-Jones
Signatory's Position: Attorney of record; Ohio bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77922381
Internet Transmission Date: Sat May 14 16:55:16 EDT 2011
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201105141655165
14603-77922381-4809d38feb4fcce8a7e0d74b9
a9214ee25-N/A-N/A-20110514165019064187