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 04, 2022

 

The abandoned application has been revived on petition.  Prior to its abandonment of the application, an Office action had issued on 08/05/21, which applicant claimed was never received.  Therefore, applicant is granted six months from the issue date of this immediate Office action to respond to both the (a) refusal(s) and/or requirement(s) raised in the previous outstanding Office action and (b) new issue(s) raised below.  See TMEP §1714.01(a)(i). 

 

View the previous Office Action.  For more information about the requirement(s) and/or refusal(s) in the outstanding Office action, view and/or download a copy of the 08/05/21 Office action as follows:

 

(1)        Go to the Trademark Status and Document Retrieval (TSDR) database.

 

(2)        Select “US Serial, Registration, or Reference No.” from the drop-down menu box and enter the serial number of this application.

 

(3)        Click on “Documents” to view the list of documents filed and/or issued in this application.

 

(4)        Click on the document titled “Offc Action Outgoing” with a “Create/Mail Date” of 08/05/21 to view the Office action.

 

(5)        Click on the “Download PDF” button in the top right corner of the screen to download or print the Office action. 

 

If applicant is unable to view the Office action after following the above instructions, please e-mail TSDR@uspto.gov for further assistance.

 

New Issue(s).  In addition to the issues raised in the previous Office action, applicant must also respond to the new issue(s) raised below.

 

Please note that this mark recently was revived and upon conducting additional review of the application, the undersigned has determined that the identification of goods/services must be further amended.  Please consider allowing the undersigned to complete an examiner’s amendment to advance this application. 

 

The undersigned proposes the following amendments:

 

1)      “Monitoring” services as identified require additional clarification, e.g., for others for cost accounting purposes.  Please see the id manual for clarification.

2)      “help desk services” and “service desk services”  are properly classified in class 042 and not class 037.  Remove the references to consultancy services that are related to these services. 

3)      “diagnostics services” and “analytics services” are unclear and require clarification, e.g., “computer diagnostics services” and “computer systems analytics”. 

4)      “website design services” should clearly be for others

5)      Remove the reference to “correct energy deviations” as they are likely properly classified in class 040. 

 

Proposed Amended Identification of Goods/Services

 

Class 035:  Energy usage management services, namely, remote monitoring for others for cost accounting purposes and managing energy consumption for client facilities and buildings, detecting energy deviations on a near real time basis; Energy usage demand management services, namely, analytics based demand management and monitoring services for others for cost accounting purposes, managing peak demand and participating in demand response; Consultancy services for the aforementioned services; Advisory services in 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 help 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[misclassified; should be class 042]; 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 in the nature of energy generation service; 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 computer 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 computer systems analytics services and providing assistance to clients for meeting regulatory and company set-compliances; Scientific and technological services, namely, research, testing, analysis and 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 for others, 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; Integrated Maintenance Services for facility and building energy systems, namely, computer technology support services in the nature of help 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 provided in an ecologically-friendly manner

 

 

 

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 March 04, 2022 for

U.S. Trademark Application Serial No. 90504639

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·         Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·         Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.