UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

NOTICE OF SUSPENSION

 

ISSUE/MAILING DATE: 1/21/2011

 

 

SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reason(s) specified below.  No response is needed.  However, if you wish to respond to this notice, you should use the “Response to Letter of Suspension” form found at http://teasroa.gov.uspto.report/rsi/rsi.  The Office will conduct periodic status checks to determine if suspension remains appropriate.

 

 

The examining attorney has searched the Office records and has found no similar registered mark that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Action on this application is suspended pending the disposition of:

 

            - Application Serial No(s). 77948636

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).  See 37 C.F.R. §2.83; TMEP §§1208 et seq.  A copy of information relevant to this pending application(s) is attached.

 

Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension.  TMEP §716.03.  Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue.  If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

 

The following requirement(s) has been satisfied:  (1) the requirement to provide an acceptable identification of services in International Class 38.  TMEP §§713.02, 714.04.

 

 

The following refusal(s)/requirement(s) is/are continued and maintained:

 

1.   The requirement to provide an acceptable identification of services in International Class 35.  The applicant impermissibly broadened the identification by deleting the term “employee” from the identification, creating wording not within the scope of the identification that was set forth in the application at the time of filing.  See 37 C.F.R. §2.71(a).  Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  Id.; see TMEP §§1402.06 et seq., 1402.07.  Therefore, the term “employee” must be added back to the identification. 

 

Additionally, information about the environment and economic policy could include information classified in more than one international class.  For example, information in the field of energy efficiency is classified in International Class 35 while information about the chemical storage of energy is classified in International Class 39 and information about the generation of energy is classified in International Class 40..  The subject matter(s) of a website determine classification, and the subjects must be clearly and concisely identified.  

 

The applicant may adopt the following, if accurate:  Promoting awareness of environmental and sustainability issues and initiatives, namely: arranging and conducting employee incentive and award programs to promote environmental, economic and energy best practices; providing an internet website featuring public policy and economic information in the field of Federal government practices regarding sustainability and related fields, namely, information concerning Federal government activities affecting environmental, economic and energy policy and practices.

 

 

2.   The requirement to provide an acceptable identification of services in International Class 41.  The application impermissibly broadened the identification with the wording “other information” as the original identification was limited to “distribution of printed materials.”  Additionally, the original identification identified a periodic newsletter providing on a website.  Adding an “electronic newsletter” suggests that the applicant also provided goods in the nature of a newsletter recorded on electronic media, such as a CD.  This broadens the scope of the identification.  The applicant impermissibly broadened the identification, creating wording not within the scope of the identification that was set forth in the application at the time of filing.  See 37 C.F.R. §2.71(a).  Identifications can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  Id.; see TMEP §§1402.06 et seq., 1402.07.  Additionally, providing online information is classified based upon the subject matter.   

 

The applicant may adopt the following, if accurate:  Educational services, namely, conducting classes, seminars, conferences, and workshops in the field of Federal government practices regarding sustainability and associated related fields including green building, planning, renewable energy, sustainable communities, conservation, and other activities affecting environmental, economic and energy policy and practices, and distribution of printed materials in connection therewith in hard copy or electronic format on the same topics; providing an on-line electronic periodic newsletter in the field of Federal government practices regarding sustainability and associated related fields including green building, planning, renewable energy, sustainable communities, conservation, and other Federal government activities affecting environmental, economic, and energy policy and practices; providing an internet website featuring news and information in the nature of current event reporting field of Federal government activities as it relates to the environment in International Class 41.

 

3.   The requirement to provide an acceptable identification of services in International Class 42.  The applicant must clarify how it enables user to share, bookmark, etc., using common commercial terms.  The identification in International Class 42 must identify the particular technology service that the applicant provides to consumers.  Additionally, if the applicant is actually providing an educational service, rather than simply an information service, this must be clarified and reclassified in International Class 41. 

 

The applicant may adopt the following, if accurate:  Providing an internet website featuring technology that enables users to share, bookmark, index, store, collect and showcase content, articles, images, calendars including a calendar of Federal government events, products, projects, and other information resources in electronic form in the field of Federal government practices regarding sustainability and associated related fields including green building, planning, renewable energy, sustainable communities, conservation, and other Federal government activities affecting environmental policy and practices; computer services, namely, hosting on-line web facilities for others for organizing and conducting online interactive discussions, namely, forums in the field of Federal government practices regarding sustainability and associated related fields including green building, planning, renewable energy, sustainable communities, conversation and other Federal government activities affecting environmental policy and practices in International Class 42.

 

4.    The requirement to provide an acceptable specimen of use for the services in International Class 38.  As set forth in the First Office Action, the specimens of record were acceptable only for the services in International Classes 35, 41 and 42.  The applicant added International Class 38 to the application but failed to provide an additional specimen for said services.

 

5.     The requirement to pay for additional classes or limit the identifications to the four currently active classes is continued and maintained.  As discussed previously herein, the identifications could include services in several other international classes, however the application only has four (4) active classes.

 

 

 

If applicant has questions about the application or this Notice of Suspension, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Attorney

Law Office 110

(571) 272-9370

 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO LETTER (AN OFFICE ACTION) HAS ISSUED ON 1/21/2011 FOR

SERIAL NO. 85031874

 

Please follow the instructions below:

 

TO READ OFFICE LETTER: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office letter

 

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

 

HELP: For technical assistance in accessing the Office correspondence, please e-mail TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office letter.