To: | Energy Intelligence Group, Inc. (rlockwood@sgrlaw.com) |
Subject: | TRADEMARK APPLICATION NO. 78805264 - EI - 026617.035 |
Sent: | 12/28/2006 9:44:33 AM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/805264
APPLICANT: Energy Intelligence Group, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: EI
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CORRESPONDENT’S REFERENCE/DOCKET NO: 026617.035
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 78/805264
THIS IS A FINAL ACTION
This letter responds to applicant’s communication filed on December 18, 2006. Applicant’s substitute specimen for International Class 016 was received and made of record. Applicant’s amended identification of goods was received and made of record. Upon review, the following requirement is continued and made final.
In the Office Action, the examining attorney stated that the recitation of services was unacceptable as indefinite because it may have contained services that were classified in other International Classes.
In response, the applicant contends that the Class 042 recitation set forth in the original application is included in its entirety in the Class 042 recitation of Applicant's former registration for a different version of the mark, Registration No. 2282793 (cancelled). The applicant states that the present recitation in Class 042 should be acceptable.
The recitation remains indefinite. Effective January 1, 2002, the 8th edition of the Nice Agreement governing the classification of goods and services divided prior International Class 42 into four service mark classes. The examining attorney suggests the following recitation:
“Providing information in the field of natural gas distribution,” in International Class 039;
“Providing information in the field of production of energy,” in International Class 040;
“Providing on-line publications, namely, newsletters, books, and reports in the field of oil, petroleum, natural gas and energy,” in International Class 041;
“Providing information in the field of petroleum exploration,” in International Class 042.
Please remember that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services. Identifications are examined in accordance with Rules of Practice and USPTO policies and procedures in effect on the application filing date. TMEP §1402.14. However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed.
Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. Id.
For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm/html, which is continually updated in accordance with prevailing rules and policies. See TMEP §§702.03(a)(iv) and 1402.04.
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Steven Jackson/
Steven W. Jackson
Trademark Attorney
Law Office 107
Phone: 571-272-9409
Fax: 571-273-9107
HOW TO RESPOND TO THIS OFFICE ACTION:
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.