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.  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.

 

SUMMARY OF ISSUES:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Services
• Advisory – Multi-Class Application Requirements
• Request for Information

 

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.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

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.

 

Comparison of Marks:

 

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).

 

Further, applicant’s deletion of “THE” fails to create a distinct commercial impression because, when comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks.  See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).

 

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 services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

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 attached Internet evidence, consisting of webpage screenshots from Ameresco, Power Brokers, Stanley Energy, PowerStar, Scott Madden, MAN Energy Solutions, Black & Veatch, Martin Energy Group and Blattner Energy, establishes that the same entity commonly provides the relevant services and markets the services under the same mark. In addition, the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Finally, the services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

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

 

If applicant adopts the suggested amendment of the services, then applicant must amend the classification to add International Classes 40 and 45.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

 

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted services may not later be reinserted.  See TMEP §1402.07(e).

 

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

 

The application identifies services in more than one international class; 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 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

 

To permit proper examination of the application, applicant must explain whether the wording in the mark “ELECTRANET” has any significance in the energy trade or industry or as applied to applicant’s services, 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 comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/26/2019 FOR U.S. APPLICATION SERIAL NO. 88194309

 

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 2/26/2019 (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.