UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

PRIORITY 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: 9/16/2015

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks 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).

 

TELEPHONE OR EMAIL RESPONSE SUGGESTED: Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

ISSUES APPLICANT MUST ADDRESS:  On September 15, 2015, the trademark examining attorney and Roberta Bren discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

SUMMARY OF ISSUES that applicant must address:

 

• Identification of Services Requires Amendment
• ADVISORY: Mark Description Will Not Be Printed

 

IDENTIFICATION OF SERVICES REQUIRES AMENDMENT

 

The wording listed below from the identification of services is indefinite and/or too broad and must be clarified for the reasons stated.  See TMEP §1402.01.

 

Class 35

 

The wording “Value engineering” is indefinite and must be clarified to indicate the nature of the services.  Because the subsequent wording “cost and schedule analysis,” “time and impact analysis,” and “peer review” appear to be types of value engineering services, applicant may simply add the word “namely” following “value engineering.”  However, the wording “quality verification” appears to describe a Class 42 service akin to quality control services, so this wording should be reclassified and clarified accordingly.  Finally, in order to ensure proper classification of some of the services listed, applicant should indicate that these services are rendered “for business purposes,” if accurate.

 

Class 37

 

The wording “engineering services in connection with the construction” is misclassified, since engineering services are in Class 42 even when they are rendered in connection with construction projects.  Because this is already encompassed by the Class 42 engineering services in the identification, the examining attorney simply suggests that this wording be deleted from Class 37.

 

Additionally, the “inspection” services must be specified as being rendered in the course of Class 37 services – such as construction and repair services – in order for this wording to be properly classified in Class 37.  For readability, the wording “all provided in the course of...” has been added following “construction management” in the suggestions below, but only the “inspection” services require this clarification.

 

The wording “damns” appears to be a typographical error, and should be corrected to “dams” in both Class 37 and Class 42, if accurate.

 

Class 42

 

The wording “mining mechanical” appears to be two types of engineering, so a comma should be inserted between these terms, if accurate.

 

The wording “program management” is indefinite and must be clarified because it could encompass types of management that would be properly classified in Class 35; if the services are project management with respect to the types of engineering projects listed immediately previously in the identification, applicant may adopt the wording suggested below.

 

Class 45

 

The wording in Class 45 is acceptable and does not require clarification or amendment.

 

Suggested Wording

 

Applicant may adopt the following identification of services, if accurate (suggested changes shown in bold typeface):

 

Class 35:

Value engineering, namely, cost and schedule analysis, time and impact analysis, and peer review services, all provided for business purposes;

 

Class 37:

Construction, inspection and construction management services, all provided in the course of the construction, repair and rehabilitation of tunnels, underground structures and utilities, shafts, dams, fisheries, pipelines, penstocks, power generating facilities, spillways and waterways;

 

Class 42:

Civil, geotechnical, environmental, mining, mechanical, electrical and hydraulic engineering services and project management services for the foregoing; design of tunnels, underground structures and utilities, shafts, dams, fisheries, spillways and waterways;  Quality assurance services in the fields of engineering and construction; Quality verification services, namely, providing quality control for others;

 

Class 45:

Alternative dispute resolution;

 

An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

ADVISORY: MARK DESCRIPTION WILL NOT BE PRINTED

 

The description of the mark is unnecessary in the present case and therefore will not be printed in the Official Gazette, in the event the mark is approved for publication, or on the registration certificate, should one issue.  See TMEP §808.03.

 

RESPONSE GUIDELINES AND PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within six months of the issue/mailing date, the following services will be deleted from the application:

 

Class 35:

Value engineering, cost and schedule analysis, quality verification, time and impact analysis, peer review; quality assurance;

 

Class 37:

Construction, inspection, construction management, engineering services in connection with the construction, repair and rehabilitation of tunnels, underground structures and utilities, shafts, damns, fisheries, pipelines, penstocks, power generating facilities, spillways and waterways;

 

Class 42:

Civil, geotechnical, environmental, mining mechanical, electrical and hydraulic engineering and program management services;

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a).  Additionally, the typographical error “damns” will be corrected to “dams” by a no-call examiner’s amendment. The application will then proceed with the following services only:

 

Class 42:

Design of tunnels, underground structures and utilities, shafts, dams, fisheries, spillways and waterways;

 

Class 45:

Alternative dispute resolution;

 

See TMEP §718.02(a).  In such case, applicant’s only option would be to file a timely petition to revive the abandoned services, which, if granted, would allow for the reinsertion of these services into the application.  See 37 C.F.R. §2.66; TMEP §§718.02(a), 1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/Wendell S. Phillips III/

Trademark Examining Attorney

Law Office 110

(571) 272-5271

wendell.phillips@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 9/16/2015 FOR U.S. APPLICATION SERIAL NO. 86651533

 

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 9/16/2015 (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.