UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 2/6/2013

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE RECORDS – SUPPLEMENTAL SEARCH ADVISORY

 

The trademark examining attorney has searched the Office’s database of registered and pending marks in International Class 9 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).

 

Please note, however, that a supplemental search may be conducted and additional issues may be raised upon receipt of the applicant’s response clarifying the nature of the goods and services.

 

MEANING OF THE MARK – ADDITIONAL INFORMATION REQUIRED

 

The nature of the goods on which applicant uses its mark is not clear from the present record and additional information is required.  An applicant can be required to provide more information if it is necessary for proper examination of the application.  37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003).

 

Therefore, applicant must submit samples of advertisements or promotional materials and/or a photograph of the identified goods.  In addition, applicant must describe in detail the nature, purpose and channels of trade of the goods.

 

In addition, applicant must explain whether “ENGO” has any meaning or significance in relation to the goods and/or services or in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND/OR SERVICES

 

The identification of goods and/or services is indefinite and must be clarified in order to determine proper classification.  See TMEP §1402.01.  Specifically, the applicant has classified all of the goods and/or services in International Class 9.  While the wording “dynamic VAR compensator for power distribution grids,” is indefinite, it appears to identify goods falling in Class 9.  However, the wording “communications and coordination of dynamic VAR compensator units for power distribution grids” and “collection of dynamic VAR compensator units for aggregated and optimized system-wide impact to distribution grids” appears to identify services falling in classes other than International Class 9.

 

Accordingly, the applicant must clarify the nature of all of the goods and/or services and classify the services in the proper classes.  In addition, the applicant must amend the application to either limit the application to goods or services falling in a single class, or add classes to the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The applicant may adopt the following identification, if accurate:   

 

“voltage regulators, namely, dynamic VAR compensators for use in regulating voltage in power distribution grids,” in International Class 9;

 

“communications services, namely, electronic transmission of information for use in coordinating the function of dynamic VAR compensator units for power distribution grids,” in International Class 38.

 

“transportation services, namely, collection of dynamic VAR compensator units used in making aggregated and optimized system-wide impacts to distribution grids,” in International Class 39.

 

Additions Not Allowed:  An applicant may amend an identification of goods 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 et seq. 

 

On-line Acceptable Identification of Goods and Services Manual:  For the applicant’s reference the examining attorney provides the following address for the identification of goods and services manual on the United States Patent and Trademark Office’s web site:

 

http://tess2.gov.uspto.report/netahtml/tidm.html

 

The applicant may wish to consult the on-line identification manual for a listing of acceptable common names of goods and services.  While the list is not exhaustive, the manual should give the applicant direction regarding proper international classification and information and specificity required in the applicant’s identification of goods and/or services.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that may be classified in three (3) or more classes; however, the fees submitted are sufficient for only one (1) class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the single class covered by the fee already paid, or (2) submit the fees for the additional classes. 

 

The filing fees for adding classes to an application are as follows:

 

(1)  A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).

 

(2)  A $375 fee per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

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).

 

QUESTIONS REGARDING USE OF THE ONLINE RESPONSE SYSTEM

 

If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at the following address:

 

http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp.

 

The applicant can email technical questions to TEAS@uspto.gov.

 

QUESTIONS REGARDING OUTSTANDING REFUSALS OR REQUIREMENTS

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. 

 

Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Martha L. Fromm/

Trademark Examining Attorney

Law Office 106

(571)272-9320

Martha.Fromm@USPTO.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/6/2013 FOR U.S. APPLICATION SERIAL NO. 85743780

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/6/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.