NACHI has another way for members to make money while asleep.

[Russell Spriggs]

Amazing, Chris; Thanks for making that.
I may just stick with the other thing, though, as it will do no good on a brochure or a printed out Insp report.

[wforsyth]

So how are you handling the fact that the phrase Neighborhood Environmental Report is trademarked?

[Russel Ray]

Hey, Wendy.

You handled it just like you should handle it, by using initial capital letters. You can also use the ™ symbol or, if it is registered instead of trademarked, the ® symbol at the end of the phrase.

[Nick Gromicko]

Wendy "Neighborhood Environmental Report" is neither an applied for nor registered Trademark. One could apply for the mark but the wording is so descriptive (commonly used words) that it would be like trademarking "auto dealer" or "attorneys at Law" or "National Association of Home Inspectors".... all national associations of home inspectors like NACHI and ASHI are NAHIs and so you would have to apply for it with the condition that you make no claim to the exclusive use of the mark (like NAHI did in their application)... so there is no point in it. What good is a Trademark if you can't claim exclusive use of it?

[wforsyth]

In the article about Pillar and Post, the author uses the trademark in reference to the Neighborhood Environmental Report that P and P offers.

[Nick Gromicko]

The mere use of a term by an author in an article does not create a registered Trademark.

[wforsyth]

One would assume that the author is using it because it has been researched and found to be trademarked.

Have you explored the trademark issue?

[Nick Gromicko]

I wouldn't assume that. www.uspto.gov

[Nick Gromicko]

Document Description: Offc Action Outgoing
Mail / Create Date: 06-Jun-2006

UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 78/765743

APPLICANT: Environmental Data Resources, Inc.



*78765743*

CORRESPONDENT ADDRESS:

DANIEL T. CLARK, ESQ.
RICH MAY, A PROFESSIONAL CORPORATION
176 FEDERAL ST
BOSTON, MA 02110-2214

RETURN ADDRESS:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451




MARK: EDR NEIGHBORHOOD ENVIRONMENTAL REPORT



CORRESPONDENT’S REFERENCE/DOCKET NO: N/A

CORRESPONDENT EMAIL ADDRESS:

Please provide in all correspondence:

1. Filing date, serial number, mark and
applicant's name.
2. Date of this Office Action.
3. Examining Attorney's name and
Law Office number.
4. Your telephone number and e-mail address.

OFFICE ACTION


RESPONSE TIME LIMIT: TO AVOID ABANDONMENT,THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.

MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

Serial Number 78/765743


The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

Search Results

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.

However, the following requirement(s) must be addressed.


Identification Of Goods


The identification of goods is unacceptable as indefinite because some of the terms are overly broad so that the goods are vague and/or could fall into a different international class. Suggestions and explanations are incorporated into the identification proposed below. TMEP §1402.01. The applicant may adopt the following identification, if accurate:

Downloadable electronic publications in the nature of reports providing a review of government records to ascertain the existence of specific parcels of property or adjoining parcels of properties. International Class 9.

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

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

Disclaimer


The applicant must disclaim the descriptive wording “ENVIRONMENTAL REPORT” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because Applicant offers environmental reports in electronic format. Thus, the term merely indicates the nature of the goods.

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use ENVIRONMENTAL REPORT apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

Ownership of Prior Registrations


If applicant is the owner of U.S. Registration Nos. 2276493, 76593036, 2816536, and others then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:

Applicant is the owner of U.S. Registration Nos. 2276493, 76593036, 2816536, and others.


/S. David Sterkin/
Trademark Attorney
U.S. Patent and Trademark Office
Law Office 110
(571) 272-5494
david.sterkin@uspto.gov


HOW TO RESPOND TO THIS OFFICE ACTION:

• <LI class=MsoNormal style="tab-stops: list .5in; mso-list: l0 level1 lfo1">ONLINE RESPONSE: You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.uspto.gov/teas/index.html. If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS. NOTE: Do not respond by e-mail. THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE: To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name. NOTE: The filing date of the response will be the date of receipt in the Office, not the postmarked date. To ensure your response is timely, use a certificate of mailing. 37 C.F.R. §2.197.

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.uspto.gov/external/portal/tow.

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.uspto.gov/main/trademarks.htm

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.



This document may be displayed as a PDF file containing images without text. You may view online or save the entire document using the file download icon to the upper right. [required PDF viewer] FAQ: Are you seeing only the first page of this PDF document?

If you need help:

• Call the Trademark Assistance Center at 571.272.9250 for help on trademark matters.
• Send questions about USPTO programs to the USPTO Contact Center (UCC).
• If you have technical difficulties or problems with this application, please e-mail them to Electronic Business Support Electronic Applications or call 1 800-786-9199.

[wforsyth]

Okay, not to be a pain or anything, but...

So it says that they have to disclaim the phrase environmental report. NOT "Neighborhood Environmental Report".

So I would say most likely you are going to have a trademark infringement issue on your hands in the future.

But God willing...you won't.

[Nick Gromicko]

??? Huh? No one has ever even applied for that mark, not that one could get it registered even if one did apply for it.

[whandley]

Doesn't this state they've applied for the "Mark" as Wendy suggested?


SERIAL NO: 78/765743
APPLICANT: Environmental Data Resources, Inc.



*78765743*

CORRESPONDENT ADDRESS:

DANIEL T. CLARK, ESQ.
RICH MAY, A PROFESSIONAL CORPORATION
176 FEDERAL ST
BOSTON, MA 02110-2214

RETURN ADDRESS:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451




MARK: EDR NEIGHBORHOOD ENVIRONMENTAL REPORT


I've sent an email to EDR's California representative asking the following:

a) Are they E & O and Liability Insured for operations in California?

b) Do they guarantee the accuaracy and content of the report for operations in California?

c) Does their insurance include home inspection firms as additional insured. Just as we name real estate agents in our insurance policies?

d) Can they send me a sample report or post it here on the NACHI BB?

I'll keep you informed....

[Bruce M. Graham]

I don't name realtor as additional insured, no way.

[whandley]

Hey Bruce,

What insurance carrier do you use? Additional insured for realtors comes standard with my policy from Marion Allen Insurance.

[Nick Gromicko]

Will, no it doesn't say that they applied for the mark "Neighborhood Environmental." The mark they applied for starts with a non-descriptive 3 letter acronym "EDR NEIGHBORHOOD ENVIRONMENTAL REPORT."

So no, they didn't apply for the mark. And the one they applied for has not been registered (see above).

One cannot acquire exclusive use of common words by simply filing a Trademark application of the words preceded by a non-descriptive acronym. If that were true, ZEROX could trademark "ZEROX copy machines" and then no one could use the phrase "copy machines." See?