To: | Power Monitors, Inc. (bhipdocket@bakerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88347120 - SEEKER - 106092.20028 |
Sent: | August 22, 2019 11:14:40 AM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88347120
Mark: SEEKER
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Correspondence Address: |
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Applicant: Power Monitors, Inc.
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Reference/Docket No. 106092.20028
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: August 22, 2019
This Office action is in response to applicant’s communication filed on July 12, 2019.
In a previous Office action dated June 4, 2019, the applicant was required to satisfy the following requirement: Amend the identification of goods.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
In the response to Office action dated July 12, 2019, the applicant submitted an amended identification; however, this identification did not satisfy all the requirements of a definite identification.
IDENTIFICATION OF GOODS REQUIREMENT
The amended identification of goods is indefinite and must be clarified because the wording exceeds the scope of the original identification and does not make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant’s amendment for “electronic equipment” expands the scope of the goods beyond the original application, and the amendment for “computer software” does not make clear whether the software is downloadable or non-downloadable.
In this case, the application originally identified the goods as follows:
“Inverter control, voltage measurement and recording equipment and associated software for use in residential, commercial, retail, industrial, and substation applications”.
However, the proposed amendment identifies the following goods:
“Electronic equipment for measuring voltage, current, and power, for inverter control, and for recording voltage, current and power data in residential, commercial, retail, industrial settings and in substations; computer software for the operation of, and use with, electronic equipment for measuring voltage, current and power for inverter control, and for recording voltage data in residential, commercial, retail, industrial settings and in substations".
The wording “electronic equipment for measuring voltage, current, and power, for inverter control, and for recording voltage, current and power data in residential, commercial, retail, industrial settings and in substations” is beyond the scope of the original identification because applicant has expanded the identified equipment and added additional measurements of current and power to the equipment, which was not present in the original identification.
Specifically, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software. TMEP §1402.03(d). Further, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable. See id. Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The following are examples of acceptable identifications in International Class 9: “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications in International Class 41: “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.” Finally, the following are acceptable identifications in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”
Applicant may adopt the following identification, if accurate, with changes highlighted in bold:
Class 09: Electronic equipment for measuring and recording voltage and for inverter control in residential, commercial, retail, industrial settings and in substations; Downloadable computer software for the operation of, and use with, electronic equipment for measuring voltage, current and power for inverter control, and for recording voltage data in residential, commercial, retail, industrial settings and in substations
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.
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).
Galante, Josh
/Josh Galante/
Trademark Examining Attorney
Law Office 127
(571) 272-4310
josh.galante@uspto.gov
RESPONSE GUIDANCE