Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

NONFINAL OFFICE ACTION

 

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).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

 

Issue date:  November 13, 2019

 

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On November 6, 2019, the examining attorney and Kristen Traina, an attorney of the same firm as the attorney of record, 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 §708.05.

 

Summary of Issues

 

• Identification of Goods and Services Amendment Required
• Multiple-Class Application Requirements

 

Identification of Goods and Services Amendment Required

 

The identification for software in International Class 9 and applicant’s software services in International Class 42 are indefinite and must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  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).

 

Applicant must clarify the following portions of the identification of goods and/or services in the below specified International Classes because each is indefinite and too broad:

 

• In Class 9, “electric measuring, monitoring and control apparatus and instruments for the transportation, distribution and supply of electrical energy” – this wording could encompass, for example:  “electronic monitors and monitor modules for monitoring electric current and electrical signals” and “apparatus and instruments for conveying, distributing, and controlling electric current” in Class 9, or “auxiliary power units for supplying electrical power to heat and power generators” in Class 7.

 

• In Class 42, “services featuring software for booking and making payment for use of charging stations for electric vehicles” this wording could encompass, for example:  “online transportation reservation services in the nature of making bookings for electric vehicles” in Class 39, or “Software as a service (SAAS) services featuring software for enabling users to book and make payment for use of charging stations for electric vehicles” in Class 42.

 

See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Applicant may adopt the following wording, if accurate (bolded text indicating suggested changes): 

 

In Class 4, Electrical energy; lubricating oils and greases for use with electric vehicles

 

In Class 7, Electronic and electrical installations, apparatus and installations, namely, generators for generating electricity

 

In Class 9, Charging stations for electric vehicles; battery charging devices for motor vehicles; batteries for electric vehicles; apparatus and instruments for collecting, conducting, switching, transforming, accumulating, regulating or controlling electric current; downloadable computer programs for creating searchable databases of information, administration of databases in the nature of database management, and for enabling users to implement data analysis and produce reports of data all in the fields of energy use, energy efficiency, energy saving, cost analysis, energy analysis and invoice management; downloadable computer software applications for administration of databases in the nature of database management, and for enabling users to implement data analysis and produce reports of data all in the fields of energy use, energy efficiency, energy saving, cost analysis, energy analysis and invoice management; electric measuring, monitoring and control apparatus and instruments for the transportation, distribution and supply of electrical energy all in the nature of electronic monitors and monitor modules for monitoring electric current and electrical signals and apparatus and instruments for conveying, distributing, and controlling electric current; downloadable computer software applications for enabling users to make payments for electric vehicle charging, lubricants and automotive products

 

In Class 37, Charging station services for electric vehicles; installation, maintenance and repair of charging stations for electric vehicles

 

In Class 39, Distribution and transmission of electricity; distribution and supply of energy

 

In Class 42, Software as a service (SAAS) services featuring software for creating searchable databases of information, administration of databases in the nature of database management, and for enabling users to implement data analysis and produce reports of data all in the fields of energy use, energy efficiency, energy saving, cost analysis, energy analysis and invoice management; Software as a service (SAAS) services featuring software for enabling users to book charging stations for electric vehicles and make payment for use of charging stations for electric vehicles; providing temporary use of non-downloadable cloud-based software for monitoring energy consumption data, calculating energy costs, storing and retrieving energy consumption data

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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 goods and/or 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.

 

Applicant must also respond to the following requirement(s).

 

Multiple-Class Application Requirements

 

The application identifies goods and/or services that are classified in at least seven classes; however, applicant submitted fees sufficient for only six classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

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.

 

Further, 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). 

 

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.

 

Conclusion.  Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

How to respond.  Click to file a response to this nonfinal Office action.

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.  

 

 

 

/Joshua S. Toy/

Trademark Examining Attorney

Law Office 120

571-272-4856

joshua.toy@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 13, 2019 for

U.S. Trademark Application Serial No. 88569535

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Joshua S. Toy/

Trademark Examining Attorney

Law Office 120

571-272-4856

joshua.toy@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 13, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”