UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88194309
MARK: ELECTRANET
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Enchanted Rock, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/26/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2935007. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is THE ELECTRANET (in standard character form) for services currently identified as “Creating and implementing systems and processes for optimizing energy revenue” in International Class 36; “Energy brokerage services; brokerage of energy, namely, selling electricity for others; energy investment services in the nature of put and call options” in International Class 36; “Construction and construction planning of energy microgrids, energy storage systems, and backup energy sources; installation of energy microgrids, energy storage systems, and backup energy sources; construction and maintenance of equipment for on-site energy generation and operation for others” in International Class 37; and “Technical planning and consulting regarding microgrid and backup energy sources; design, planning, development, installation, operation, maintenance, and security of microgrid and backup energy sources” in International Class 42.
Registrant’s mark is THE ELECTRINET (Reg. No. 2935007) for “Conducting research and development for others and providing consulting services, all with respect to achieving a power delivery system to meet the future needs of the United States” in International Class 42.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Here, applicant’s mark, ELECTRANET, is nearly identical to the dominant feature of registrant’s mark, ELECTRINET. The slight difference in sound created by the substitution of an “A” or an “I” fails to create a distinct commercial impression sufficient for obviating the likelihood of confusion. Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
Given the nearly identical dominant terms, the marks at issue create a highly similar overall commercial impression which is sufficient for finding a likelihood of confusion.
Relatedness of Services:
The compared services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Here, applicant’s creation and implementation of systems and processes for optimizing energy revenue, energy brokerage, energy investment services, construction, installation and maintenance of energy microgrids, storage systems, backup energy sources and technical planning, design, development, operation and security of microgrids and backup energy sources and registrant’s research and development for others and providing consulting services, all with respect to achieving a power delivery system to meet the future needs of the United States are closely related because the same entity commonly provides applicant’s and registrant’s goods and services, under the same mark.
The third-party Internet evidence shows that the applicant’s services and the registrant’s services are closely related and travel through similar trade channels to the same class of consumers.
Thus, upon encountering registrant’s mark used for conducting research and development for others and providing consulting services, all with respect to achieving a power delivery system to meet the future needs of the United States and applicant’s mark used for creating and implementing systems and processes for optimizing energy revenue; energy brokerage services; brokerage of energy, namely, selling electricity for others; energy investment services in the nature of put and call options; construction and construction planning of energy microgrids, energy storage systems, and backup energy sources; installation of energy microgrids, energy storage systems, and backup energy sources; construction and maintenance of equipment for on-site energy generation and operation for others; technical planning and consulting regarding microgrid and backup energy sources; design, planning, development, installation, operation, maintenance, and security of microgrid and backup energy sources, consumers are likely to be confused and mistakenly believe that the respective services emanate from a common source.
Given the foregoing, registration is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
IDENTIFICATION OF SERVICES
Class 35
The wording “Creating and implementing systems and processes for optimizing energy revenue” is unacceptable as indefinite because it is not clear if the services are for business purpose or another purpose. Applicant must further specify the nature and function of the services. If the services are not for business services, applicant most likely must re-classify the services according to their purpose.
Class 36
The wording “brokerage of energy, namely, selling electricity for others” is unacceptable as indefinite and misclassified. The services are likely retail electricity provider services that are properly classified in Class 35. Applicant must further specify the nature and function of the services and classify the services accordingly.
The wording “energy investment services in the nature of put and call options” is unacceptable as indefinite because applicant must specify the function of the services and must specify that the services are for the benefit of others.
Class 37
The wording “and backup energy sources” is unacceptable as indefinite. Applicant must specify the nature of the sources. Further, applicant must specify that the installation services do not include software installation.
The wording “construction and maintenance of equipment for on-site energy generation and operation for others” is unacceptable as indefinite and overly broad because the construction of goods is likely the manufacture of goods, which is classified in Class 40. Further, the nature of the “operation” services is not clear and must be deleted or further clarified.
Class 42
The wording “Technical planning and consulting regarding microgrid and backup energy sources” is unacceptable as indefinite and overly broad because technical planning and consulting services are classified according to the subject matter of the services. However, technological planning and consulting are properly classified in Class 42.
The wording “design, planning, development, installation, operation, maintenance, and security of microgrid and backup energy sources” is unacceptable as indefinite and overly broad. Applicant must further specify the nature and function of the services and classify the services accordingly. Are the planning services technological planning? If so, the services are proper in Class 42. Please note, installation and maintenance of hardware services are generally in Class 37 and are already classified accordingly. Security services may be classified in Class 45, depending on the nature and function of the services. Finally, applicant must specify the nature of the backup energy sources.
Applicant may adopt any or all of the following suggested amendment, if accurate:
- International Class 35: Business consulting in the field of creating and implementing systems and processes for optimizing energy revenue; retail electricity provider services that allow customers to purchase electricity
- International Class 36: Energy brokerage services; energy investment services, namely, management and brokerage in the field of put and call options for others
- International Class 37: Construction and construction planning of energy microgrids, energy storage systems, and backup energy sources being {indicate nature of sources}; installation of energy microgrids, energy storage systems, and backup energy sources being {indicate nature of sources}, excluding software; maintenance of equipment for on-site energy generation for others
- International Class 40: custom manufacture of equipment for on-site energy generation
- International Class 42: Technological planning and consulting regarding microgrid and backup energy sources; design, technological planning, development, of microgrid and backup energy sources being {indicate nature of sources}
- International Class 45: providing security surveillance of microgrid premises for others
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. See TMEP §1402.04.
ADVISORY - MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 fee already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 4 classes. 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.
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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
RESPONSE GUIDELINES
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.
/Tara L. Bhupathi/
Examining Attorney
Law Office 124
571-272-5557
tara.bhupathi@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.