To: | Cebu Power and Light LLC (cebupowerandlight@edocket.io) |
Subject: | U.S. Trademark Application Serial No. 88724169 - HELIUM - N/A |
Sent: | December 15, 2020 02:58:39 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88724169
Mark: HELIUM
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Correspondence Address:
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Applicant: Cebu Power and Light LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 15, 2020
This Office action supersedes the previous Office action issued on Dec. 15, 2020 in connection with this application. The assigned trademark examining attorney inadvertently included an error with respect to the applicant name and owner of the foreign application and did not attach the associated evidence. See TMEP §§706, 711.02.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
Applicant must address all issues raised in this Office action.
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.
SEARCH OF USPTO DATABASE OF MARKS DEFERRED
The applicant should note the following refusal and requirements:
CLAIM OF SECTION 44(d) PRIORITY DENIED – INFORMATION REQUIRED UNDER 37 C.F.R. §2.61(b)
The claim of priority under Trademark Act Section 44(d), 15 U.S.C. §1126(d), is denied because the record suggests the applicant in the present application was not the owner of the foreign application upon which the claim of priority is based as of the U.S. application filing date. See TMEP §1005. The applicant is required to provide additional information concerning this Section 44(d) priority claim. 37 C.F.R. §2.61(b).
The U.S. application sets forth the owner as Cebu Power and Light LLC, a New York Limited Liability Company, while the foreign application sets forth the owner as ENDEAVOR SYSTEMS LIMITED, a United Kingdom entity. See the attached evidence from Canada’s trademark office website. In an application with a claim of priority filed under Section 44(d), the applicant must be the owner of the foreign application on the filing date of the U.S. application. TMEP §1005; see In re De Luxe, N.V., 990 F.2d 607, 609, 26 USPQ2d 1475, 1477 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1690-91 (TTAB 1991). Accordingly, applicant must establish ownership of the foreign application on the date of filing in the United States to retain the priority filing date. TMEP §1005; see 37 C.F.R. §2.61(b).
Specifically, the applicant must respond to the following:
· Was the foreign application upon which the Section 44(d) priority claim was made assigned to the applicant on or before the filing date of the U.S. application?
o If not, the applicant must so-specify.
o If so, the applicant must submit either (1) a copy of an assignment document, (2) certification from the foreign trademark office that reflects applicant’s ownership of the foreign application and the date of the assignment, or (3) a printout from the intellectual property’s office website that shows the foreign application was assigned to applicant on or before the filing date of the U.S. application.
37 C.F.R. §2.61(b); see also TMEP §§814, 1005, 1006. The failure to comply with an Office requirement is grounds for refusal of registration. In re Carlton Cellars, LLC, 2020 USPQ2d 10150 (TTAB 2020).
If applicant can prove the foreign application was assigned to applicant on or before the filing date of the U.S. application, the Section 44(d) basis can be retained. See TMEP §1005. In this case, the effective filing date of the application will remain the date on which the foreign application was first filed in the foreign country. See 37 C.F.R. §2.83(a); TMEP §1208.01.
Alternatively, if the applicant cannot prove that it was the owner of the foreign application on the U.S. application filing date, the effective filing date change to the U.S. application filing date. Accordingly, the examining attorney will delete the priority claim from the Trademark database and conduct a new search of the USPTO’s record for conflicting marks. See TMEP §§206.04, 1005.
If applicant did not own the foreign application or registration on or before the date of filing in the United States, applicant is not entitled to the Section 44(d) priority filing date or Section 44(e) as a basis for registration. TMEP §§1005, 1006. In that case, the applicant must rely solely on Section 1(b) as the basis for registration. See TMEP §806.04-.04(b).
Applicant should note the following additional requirements.
SIGNED DECLARATION REQUIRED
The application was unsigned, resulting in the application not being properly verified. See TMEP §804. Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2)-(c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii); TMEP §804.02.
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).
For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.
Applicant should note the following additional requirements.
IDENTIFICATION OF GOODS AND SERVICES
Applicant must amend this wording to specify the common commercial or generic name of the goods and services. See TMEP §1402.01. If the goods and services have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses and describe or explain the nature of the services using clear and succinct language. See id.
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 may adopt the following wording, if accurate:
IC 009: Computer hardware; Computer hardware and peripheral devices and {specify type, e.g., downloadable, recorded} computer software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; Computer software, namely, downloadable computer software for word processing, {specify type, e.g., downloadable, recorded} computer software for document management, for database integration, for producing financial models, for use in database management; {specify type, e.g., downloadable, recorded} computer software for authorizing access to databases; {specify type, e.g., downloadable, recorded} computer software for creating searchable databases; {specify type, e.g., downloadable, recorded} computer software for use in customer relationship management (CRM); {specify type, e.g., downloadable, recorded} computer software to automate data warehousing; {specify type, e.g., downloadable, recorded} computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer software, namely, {specify type, e.g., downloadable, recorded} communications software for connecting computer network users; {specify type, e.g., downloadable, recorded} computer software for use in providing multiple user access to a global computer information network; {specify type, e.g., downloadable, recorded} e-commerce software to allow users to perform electronic business transactions via a global computer network; {specify type, e.g., downloadable, recorded} computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, {delete duplicate function “for controlling and managing access server applications,”} for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; {specify type, e.g., downloadable, recorded} computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; {specify type, e.g., downloadable, recorded} computer games; computer games downloadable from a global computer network; {specify type, e.g., downloadable, recorded} computer games for use on mobile and cellular phones; {specify type, e.g., downloadable, recorded} computer software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use; computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads; interface cards for data processing equipment in the form of printed circuits; computer networking hardware and data communications equipment, namely, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs; computer memory devices, namely, flash memory cards, flash memory expansion modules, memory boards, random access memory cards and secure digital (SD) memory cards; electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals; electronic circuits and printed electronic circuits; electric wires for communication equipment; graphite and fuel cell electrodes; telephones; radio, television and satellite aerials; batteries, namely, electric storage batteries, galvanic batteries, general purpose batteries, solar batteries, and batteries for cell phones, watches and cameras; microprocessors; computer keyboards; motion picture films being video recordings featuring music and artistic performances, education in the field of {specify, e.g., art}, entertainment being {specify type e.g., plays}, fashion, sports and culture {specify type, e.g., events}
IC 035: Provision of {specify type, e.g., business} information and advisory services relating to e-commerce; provision of information relating to market studies; provision of market research information; {delete duplicate entry of “provision of information and advisory services relating to e-commerce”}; advertising and business management consultancy; personnel recruitment; personnel management consulting; advertising agency services; advertising the goods and services of others; mediation of contracts for purchase and sale of products and services; advertising services for promoting the brokerage of stocks and other securities for others; advertising services of a radio and television advertising agency; negotiation of business contracts for others; business management and organization consultancy; computerized file management; rental of advertising space; rental of advertising space on web sites; leasing of office equipment; rental of office machinery and equipment; market analysis and research services; market research studies; computer database management services; retail store services featuring clothing, books, computer equipment, computer software, furniture, grocery items, jewellery, food, cosmetics, toys, automobile parts and audio equipment
IC 041: providing temporary use of on-line, non-downloadable computer games; providing temporary use of on-line, non-downloadable computer games for use on mobile and cellular phones;
IC 042: providing temporary use of on-line, non-downloadable computer software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; providing temporary use of on-line, non-downloadable computer software for document management, for database integration, for producing financial models, for use in database management; providing temporary use of on-line, non-downloadable computer software for authorizing access to databases; providing temporary use of on-line, non-downloadable computer software for creating searchable databases; {providing temporary use of on-line, non-downloadable computer software for use in customer relationship management (CRM); providing temporary use of on-line, non-downloadable computer software to automate data warehousing; providing temporary use of on-line, non-downloadable computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; providing temporary use of on-line, non-downloadable computer software, namely, communications software for connecting computer network users; providing temporary use of on-line, non-downloadable computer software for use in providing multiple user access to a global computer information network; providing temporary use of on-line, non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer network; providing temporary use of on-line, non-downloadable computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; providing temporary use of on-line, non-downloadable computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; {specify type, e.g., downloadable, recorded} computer software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use
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 should note the following additional requirements.
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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 2 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
The USPTO changed the federal trademark rules to eliminate the TEAS Regular application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.
/Sarah E. Kunkleman/
Sarah E. Kunkleman
Trademark Examining Attorney
Law Office 105
571-272-6151
sarah.kunkleman@uspto.gov
RESPONSE GUIDANCE