Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/276026

 

Following consideration of the suspension in this case, the examiner concludes as follows.

 

Section 2(d) Advisory 

 

Application serial no. 78062751 has been abandoned. As such, the Section 2(d) advisory with regard to this mark is withdrawn.

 

Please note, Application serial no. 76238796 has registered. As such, the examiner refuses registration  as follows.

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2705257 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods/services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods/services.  The overriding concern is to prevent buyer confusion as to the source of the goods/services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). 

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq. 

 

Here, the marks are identical and are set forth as “PULSAR.”

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

Here, the registrant’s goods are “integrated circuits.” These goods are substantially similar to the applicant’s “semiconductors and parts therefor.” Therefore, given the high degree of similarity between the marks and the relatedness of the goods, the examiner concludes that confusion is likely as to the source of the goods. Accordingly, registration is refused under Section 2(d) of the Lanham Act.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Please note, this refusal applies solely to “semiconductors and parts thereof.” The stated refusal refers to the following goods and/or services and does not bar registration for the other goods and/or services.

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)   amending or deleting the goods and/or services to which the refusal pertains;

 

(2)   arguing against the refusal of the application as a whole;

 

(3)   filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition for those goods or services to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

(4)   changing the basis for the goods and/or services identified in the refusal, if appropriate (the basis may not be changed for applications filed under Trademark Act §66(a)).

 

Furthermore, the following requirements must be addressed.

 

Amendment to Identification

 

The applicant has amended its identification to:

Mechanical machines for use in the manufacturing of semiconductors and the deposition of thin layers; electronically operated machines used to manufacture semiconductor wafers and the deposition of thin layers; machines used to manufacture semiconductor wafers and the deposition of thin layers, and parts and accessories therefore, and.

 

Semiconductors and parts therefor; chemical reactors for depositing a layer on a silicon wafer in the semiconductor industry and parts therefor; apparatus for depositing a layer on a silicon wafer in the semiconductor industry and parts therefor.

 

Please note, with regard to the class 7 identification “parts and accessories” is unacceptable as indefinite. If accurate, the applicant may consider amending its identification to “replacement and structural parts therefor.”

 

With regard to the class 9 amendment, “chemical reactors” remains unacceptable. The applicant must amend its identification to state the common commercial name of the goods and its components parts, if applicable. The applicant is also advised that “apparatus for depositing a layer on a silicon wafer in the semiconductor industry and parts therefore” remains unacceptable. The applicant must amend its identification to state the common commercial name of the goods and remove the term “apparatus.” Furthermore, the applicant must clarify the nature of the parts for the goods. If accurate, the applicant may consider amending its identification to “semiconductor manufacturing machines.” Please note, such goods are classified in class 7. If the applicant adopts the suggested amendment, it must move the amendment to class 7.

Amendment Guidelines

 

Please note, if the identification concerns are the sole requirement raised in this letter and if applicant should fail to respond to this Office action within the six month time limit, then those goods designated as unacceptable will be deleted from the application and the application will then proceed forward for those goods expressly labeled as acceptable.

 

As noted above, the applicant’s goods/services are indefinite and, as such, may fall into more than the number of classes in the application. If so, the applicant must heed the following requirements: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01.   If the applicant adds a class, it must fulfill the either Section 1(a) use-basis requirements or Section 1(b) intent-to-use basis requirements for the new class. 

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP §1402.06.   Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”  This rule applies to all applications.

 

Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

John T. Lincoski /JTL/

Trademark Attorney

Law Office 113

(571)272-9436

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.gov.uspto.report/external/portal/tow.

 

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

 

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