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:  August 05, 2021

 

 

The assigned examining attorney has reviewed the referenced application and determines as follows:

No Conflicting Marks

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Summary of Issues Below:

(1)   Amend the recitation of services

(2)   Inquiry regarding the mark

 

 

 

 

Identification of Goods/Services

 

Applicant’s description of goods/services is unacceptable because it is indefinite.  §1402.1. 

 

Applicant’s Current Identification Of Goods/Services

 

Class 035:  Energy usage management services, namely, remote monitoring and managing energy consumption for client facilities and buildings, detecting and correcting energy deviations on a near real time basis; Energy usage demand management services, namely, analytics based demand management and monitoring services, managing peak demand and participating in demand response; Consultancy services for the aforementioned services; Advisory services in relation to energy efficiency, namely, device based analytics services and providing assistance to clients for meeting regulatory and company set-compliances; all of the foregoing services provided in an ecologically-friendly manner

 

Class 037:  Integrated Maintenance Services for facility and building energy systems, namely, remote service desk services for handling maintenance requests, resolution and field dispatch, alarm monitoring, and data driven condition based maintenance to drive significant reduction in maintenance cost; Consultancy Services for the aforementioned services; computer consultancy services, namely, consultation about the repair of computer hardware; all of the foregoing services provided in an ecologically-friendly manner

 

 

Class 042:  Integrated Operations Services, namely, remote diagnostics services in the field of building energy systems; Advisory Services in the field of scientific testing, analysis, and evaluation of energy provision and usage to assure compliance with industry standards, namely, device based analytics services and providing assistance to clients for meeting regulatory and company set-compliances; Scientific and technological services, namely, research, testing, analysis and infrastructure design in the field of sustainable energy generation, distribution and consumption; Industrial Analysis and Research Services in the field of sustainable energy generation, distribution and consumption; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer technology consultancy services; website design services for the compilation of websites, graphic design services for the compilation of websites, graphic illustration services for others for the compilation of websites, writing of computer software for the compilation of websites, technical writing for others for the compilations of websites; all of the foregoing services provided in an ecologically-friendly manner

 

 

Applicant must clarify the identification of goods/services as follows:  See TMEP §1402.01.

 

 

(1)   “Correcting energy deviations on near real time basis” is unclear and therefore indefinite.  “Correcting” is defined as “to alter or adjust so as to bring to some standard or required condition”.  Please see the attached, captured 08/05/21.  The correction of energy deviations may fall within the following:  Distribution of energy is class 039.  Energy generation services are class 040; Energy recycling services, namely, capturing and conversion of wasted energy into electricity and useful steam is class 040; Waste-to-energy generation services is class 040; energy auditing is class 042; Consulting services in the fields of energy measurement to improve energy efficiency is class 042.

(2)   “Integrated Maintenance Services for facility and building energy systems, namely, remote service desk services for handling maintenance requests, resolution and field dispatch, alarm monitoring, and data driven condition based maintenance to drive significant reduction in maintenance cost” requires clarification.  Please note that maintenance services are properly classified in class 037, however, the remote desk services are not clearly defined as maintenance services.  Please consider amending the recitation of services as “computer technology support services in the nature of held desk services” in class 037. 

(3)   “Advisory services in relation to energy efficiency” is unclear and could refer to a field of use, which clearly falls within class 035 or a use or purpose, which could create an ambiguity as may be classified in multiple classes, e.g., regulatory services in class 045. 

 

 

Suggested Acceptable Identification Of Goods/Services

 

Applicant is encouraged to adopt the suggested language, if accurate. 

 

 

Class 035:  Energy usage management services, namely, remote monitoring and managing energy consumption for client facilities and buildings, detecting and correcting energy deviations on a near real time basis; Energy usage demand management services, namely, analytics based demand management and monitoring services, managing peak demand and participating in demand response; Consultancy services for the aforementioned services; Advisory services in relation to the field of energy efficiency, namely, device based analytics services and providing assistance to clients for meeting regulatory and company set-compliances; all of the foregoing services provided in an ecologically-friendly manner

 

 

 

Class 037:  Integrated Maintenance Services for facility and building energy systems, namely, computer technology support services in the nature of held desk services, in particular remote service desk services for handling maintenance requests, resolution and field dispatch, alarm monitoring, and data driven condition based maintenance to drive significant reduction in maintenance cost; Consultancy Services for the aforementioned services; computer consultancy services, namely, consultation about the repair of computer hardware; all of the foregoing services provided in an ecologically-friendly manner

 

 

Class 040:  Correcting energy deviations on near real time basis in the nature of energy generation services; Energy recycling services, namely, capturing and conversion of wasted energy into electricity and useful steam to correct energy deviations on near real time basis; Waste-to-energy generation services to correct energy deviations on near real time basis

 

 

Class 042:  Integrated Operations Services, namely, remote diagnostics services in the field of building energy systems; Advisory Services in the field of scientific testing, analysis, and evaluation of energy provision and usage to assure compliance with industry standards, namely, device based analytics services and providing assistance to clients for meeting regulatory and company set-compliances; Scientific and technological services, namely, research, testing, analysis and infrastructure design in the field of sustainable energy generation, distribution and consumption; Industrial Analysis and Research Services in the field of sustainable energy generation, distribution and consumption; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer technology consultancy services; website design services for the compilation of websites, graphic design services for the compilation of websites, graphic illustration services for others for the compilation of websites, writing of computer software for the compilation of websites, technical writing for others for the compilations of websites; all of the foregoing services provided in an ecologically-friendly manner; Energy auditing to correct energy deviations on near real time basis; Consulting services in the fields of energy measurement to improve energy efficiency and to correct energy deviations on near real time basis

 

 

Please Review The ID Manual For Guidance

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Scope Advisory

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Classification of Goods

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 035, 037, 040, 042.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

Multiple Class Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

 

 

Inquiry of the Mark

 

To permit proper examination of the application, applicant must explain whether the wording “Ecoenergy” and/or “Insights” in the mark has any significance in the relavant trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

 

 

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

 

 

/Nakia D. Henry/

Trademark Attorney (Law Office 129)

Phone:  (571) 272-7208

Fax:  (571) 273-7208

E-mail:  nakia.henry@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 August 05, 2021 for

U.S. Trademark Application Serial No. 90504639

 

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. 

 

 

/Nakia D. Henry/

Trademark Attorney (Law Office 129)

Phone:  (571) 272-7208

Fax:  (571) 273-7208

E-mail:  nakia.henry@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 August 05, 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.”