To: | Corvus Energy, Inc. (sdp.docket@chernofflaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88212884 - CORVUS ENERGY - 9925.0002 |
Sent: | 3/4/2019 4:26:34 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88212884
MARK: CORVUS ENERGY
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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: Corvus Energy, Inc.
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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: 3/4/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the requirements below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS – NO CONFLICTING MARKS
The trademark examining attorney has searched the Office’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).
However, the applicant must address the following requirements.
IDENTIFICATION OF SERVICES MUST BE AMENDED
Portions of applicant’s identification of services is indefinite and misclassified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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). These 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 following entries are unacceptable as currently worded and/or classified.
The entry “Consultation in the field of regulatory compliance and certification of energy storage systems, energy storage hardware and software” in Class 35 (the only remaining entry following applicant’s December 7, 2018 preliminary amendment), consists of consultation with regard to energy storage systems, hardware and to software. The portions of these consultation services featuring regulatory compliance belongs in Class 45. The portions of these consultation services featuring certification belongs in Class 42.
The entry “Installing and commissioning energy storage systems, energy storage hardware and software” consists of installing and commissioning both hardware and software. While installing and commissioning hardware belongs in Class 37, doing so for software belongs in Class 42. Moreover, “energy storage systems” is overly broad in this context, as it could include both software and hardware. Accordingly, applicant must follow such wording with “, namely,” and then specify either hardware or software (as indicated in the suggestions below).
The comments from the preceding paragraph also apply to the entry, “Maintaining and repairing energy storage systems, energy storage hardware”.
The comments applied to the previous two discussed entries, also apply to the entry “Custom manufacturing of energy storage systems, energy storage hardware and software”.
The entry “Collecting, evaluating and analyzing of data from energy storage systems, and providing customer access to processed data and information from a cloud-based database system via an online portal or application programming interface” consists of multiple services, some of which need to be reworded, and some of which need to be reclassified. The second phrase, concerning “providing customer access…” is more complicated to dissect. Providing online access to information is a Class 38 service. However, the services of “application service provider featuring application programming interface (API) software” to provide access to information belongs in Class 42.
Finally, the entry “Collecting, evaluating and analyzing of data from energy storage systems and providing customer access to processed data and information” likewise contains multiple services, some of which are redundant to the services aforementioned, and which belong in Class 38. Additionally, because providing information (as opposed to providing “Access”) is classified by subject matter, applicant must specify (if “Providing information…” is to remain in Class 42) that the subject matter of the information is a Class 42 subject matter, such as “energy storage systems”).
If accurate, the applicant may adopt the following identifications of goods and services (additional wording/classes in bold, deleted wording/classes with strikethrough). See TMEP §1402.01.
· Class 45: Regulatory compliance consulting in the field of energy storage systems
Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 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).
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.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “ENERGY” in the mark because it is not inherently distinctive. This unregistrable term at best is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or 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).
The identified goods and services expressly center on “ENERGY”. Thus, this term in the applied-for mark immediately conveys such to consumers. For this reason, the term is merely descriptive and must be disclaimed.
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” 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.
RESPONDING TO THIS OFFICE ACTION
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.
Jonathon Schlegelmilch
/Jonathon Schlegelmilch/
Examining Attorney
Law Office 108
571-272-7758
jonathon.schlegelmilch@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.