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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 12/3/2018

 

 

 

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).

 

ISSUES APPLICANT MUST ADDRESS:  On November 26 and 30, 2018, the trademark examining attorney and Anna Kuhn 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.

 

DISCLAIMER REQUIREMENT

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “ENERGY SERVICES” because it is not inherently distinctive.  These unregistrable terms at best are merely descriptive of the function, purpose, and use of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

This wording appears in applicant’s identification of goods and services.  Thus, the wording merely describes applicant’s goods and services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “ENERGY SERVICES” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIRE AMENDING

 

The wording used to describe portions of applicant’s goods and services needs clarification because it is indefinite and could include goods and services in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2), (b)(2); see 15 U.S.C. §1053.  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).  The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

The identifications and classifications of goods and services are unacceptable for the following reasons:

 

• In Class 9, the wording “solar concentrators” is indefinite because the nature of the goods is unclear. Applicant must amend this entry to specify the nature of the goods and how they function.

 

• In Class 36, a portion of the wording in the entry for “Financing services, namely, solar electric system leases, solar power purchase agreements, and financing loans for the purchase and installation of solar power systems” is misclassified. In particular, applicant’s use of the term “leases” is misclassified because the leasing of particular tangible goods is classified according to the type of equipment or system. In this case, solar electric systems are properly classified in Class 40, thus, the leasing of these items would also be classified in Class 40. To cure this deficiency, applicant may (1) delete the wording “solar electric system leases,” (2) add Class 40 with these particular services, or (3) delete the other wording in the current entry for services in Class 36 and reclassify the services for “solar electric system leases” in Class 40.

 

• In addition, in Class 42, the wording “Technical planning of solar energy based power plants; technical planning of photovoltaic and solar collector installations; technical planning, design and development of solar photovoltaic systems” has been deleted from the ID Manual because “technical planning” could include construction planning in Class 37. Thus, this wording is no longer considered definite for services in Class 42. Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14.  The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.

 

·       The examining attorney suggests examples of acceptable wording and classification below.

 

If accurate, and inserting specific information where directed, the applicant may adopt any or all of the following identifications of goods and services.  See TMEP §1402.01.  PLEASE NOTE:  The applicant has currently paid for any eight (8) classes of its choosing (suggestions in bold).

 

• Class 6: Mounting systems for solar collectors comprised of structural supports and mounting rails, made of metal, for rooftop stabilization and stabilization on the ground, solar collector supports made of metal, and clamps made of metal; solar panel mounts made of metal.

 

• Class 9: Solar panels for production of electricity; flexible solar panels for production of electricity; photovoltaic cells; modules, namely, photovoltaic modules and solar cell modules; panels, namely, photovoltaic panels and solar cell panels; solar batteries; batteries for storing electricity produced from solar panels; solar cells; programmable controllers and actuators that track the sun, enabling concentrating optics to maximize solar energy input; photovoltaic solar-thermal hybrid modules; electronic sensors for measuring solar radiation; apparatus for converting solar radiation to electrical energy, namely, photovoltaic roofing members and photovoltaic cladding panels; silicon wafers; solar wafers; inverters; photovoltaic inverters; solar inverters; converters; photovoltaic converters; solar energy converters; photovoltaic panel mounting system, comprised of solar panels, connectors, and also including mounting rails, and a mounting structure, for use in providing heating and cooling load reduction and generating electricity, all sold as a unit; software for inventory management; computer software and computer hardware used in connection with solar-based energy systems to monitor and track energy consumption and energy generation and to manage energy usage and energy cost; software for inventory management concerning solar-based energy systems; power electronics, namely, power line conditioners, power optimizers, namely, electronic devices for maximizing energy from photovoltaic modules; voltage regulators.

 

• Class 11: Solar heat collection panels; solar collectors and mounting systems for solar collectors comprised of structural supports and mounting rails for stabilization on the ground and for rooftop stabilization, solar collector supports, and clamps, all sold as a unit with solar collectors.

 

• Class 19: Roofing, not of metal, incorporating solar cells; mounting systems for solar collectors comprised of structural supports not of metal, attachment features, namely, mounting rails not of metal, for rooftop stabilization and beautification, and for stabilization on the ground; solar collector supports not of metal, and clamps, not of metal; solar panel rails not of metal for rooftop mounting.

 

• Class 35: Energy usage management services for use in connection with solar-based energy systems; energy usage and energy generation information management services for use in connection with solar-based energy systems; home energy assessment services to provide energy efficiency and energy management services for use in connection with solar-based energy systems; business consulting and advisory services in the field of energy efficiency, energy usage information and management, and management of energy costs, all in connection with solar-based energy systems.

 

• Class 36: Financing services, namely, solar power purchase agreements, and financing loans for the purchase and installation of solar power systems.

 

• Class 37: Installation, cleaning, repair, and maintenance of solar energy based power systems and alternative energy products for residential and commercial use; installation, repair, and maintenance of solar energy systems, solar collectors and solar heat collection panels; installation of facilities to produce solar energy, installation of ground-mounted and roof-mounted solar panel systems.

 

• Class 40: Leasing of solar electric systems for the production of electricity.

 

• Class 42: Planning and layout design services for solar energy based power plants, photovoltaic and solar collector installations, and solar photovoltaic systems; technology consultation in the field of photovoltaic cells, photovoltaic modules and solar cell modules; remote monitoring, metering and data analysis of energy generation, energy usage and energy management in connection with solar-based energy systems; energy usage monitoring in the nature of data analysis; solar engineering services; temporary use of non-downloadable computer software for use in connection with solar-based energy systems, to monitor and track energy generation and energy usage, and to manage energy usage and energy costs.

 

The applicant should note the following when amending the identifications and/or classifications.

 

·       The applicant may use different wording of its own when amending the identifications and/or classifications of goods and services.  The applicant must follow the guidelines discussed herein to ensure specificity and accuracy.  Please note that while identifications of goods or services can be clarified or limited by amendment, it is impermissible to add to or broaden the scope of the goods or services beyond those originally listed in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

·       Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14.  The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14. 

 

·       For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services that may fall into more than one international class (see above); therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

/Matthew D. McClellan/

Trademark Examining Attorney, Law Office 121

Phone: (571) 272-5148

Matthew.McClellan@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 12/3/2018 FOR U.S. APPLICATION SERIAL NO. 88132835

 

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 12/3/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.