Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  March 11, 2021

 

 

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

 

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.

 

Summary of issues:

• Classification of services requirement
• Identification of services requirement
• Multiple-class application requirements

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication.  See 37 C.F.R. §2.62(c); TMEP §707.

 

Classification of Services Requirement

 

Applicant has classified the following services in International Class 037:  “leasing of tunnels, rights to subsurface real estate, and underground structures.”  However, the proper classification for each item is as follows:  “leasing of tunnels and underground structures” in International Class 037 and “leasing of property rights to subsurface real estate” in International Class 045. 

 

Additionally, applicant has provided the application fee for only one international class.  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86(a).

 

Applicant may respond by (1) adding one or more international classes to the application, and reclassifying the above services accordingly; or (2) deleting from the application the services for all but the number of international classes for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Identification of Services Requirement

 

The wording “electrical transmission construction services” in the identification of services in International Class 037 is indefinite and must be clarified because the type of structure that is to be constructed is not clear; “electrical transmission” does not clearly identify a physical structure.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant must clarify the wording “leasing of tunnels, rights to subsurface real estate, and underground structures” in the identification of services in International Class 037 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make the nature of the tunnels and underground structures clear.  Further, this wording could identify services in more than one international class.  For example, “Leasing of real property in the nature of tunnels and underground structures” is in International Class 036 and “Leasing of property rights to subsurface real estate” is in International Class 045.

 

“Leasing services” classification depends, in principle, on the services provided by means of the leased goods, e.g., leasing of construction equipment is in International Class 037, leasing of telephones is in International Class 038, and leasing of motor vehicles is in International Class 039.  See TMEP 1401.02(a).  Further, “leasing of real property” is classified in International Class 036 and the leasing of legal rights is considered a legal service in International Class 045.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 036:  Leasing of real property in the nature of tunnels and underground structures

 

International Class 037:  Construction services, namely, underground drilling of tunnels, utility lines, and underground structures; construction of utility lines; construction of electrical transmission towers; Construction management of tunnels and underground structures for others

 

International Class 045:  Leasing of property rights to subsurface real estate

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  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 services or add 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 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  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.

 

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 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 three classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fee or restrict the application to the number of classes covered by the fee already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

Response Guidelines

 

For this application to proceed, applicant must explicitly address each requirement in this Office action.  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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06. 

 

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.    

 

 

Snabb, Sandra

/Sandra Snabb/

Examining Attorney

Law Office 120

571-272-4633

Sandra.Snabb@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA 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 March 11, 2021 for

U.S. Trademark Application Serial No. 90238629

 

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. 

 

 

Snabb, Sandra

/Sandra Snabb/

Examining Attorney

Law Office 120

571-272-4633

Sandra.Snabb@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 March 11, 2021, 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.”