UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/299047
APPLICANT: Dr. Johannes Heidenhain GmbH
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: IMT
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CORRESPONDENT’S REFERENCE/DOCKET NO: DT-5039
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.
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Serial Number 76/299047
Third Action
This letter responds to the applicant's communication filed on November 12, 2003.
REFUSAL OF REGISTRATION: LIKELIHOOD OF CONFUSION-SECTION 2(d)
Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2532382 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
A. Similarity of the Marks
The two marks are identical.
B. Similarity of the Goods
The applicant’s goods includes substrates, photomasks, reticles and substructures. The registrant’s goods include semiconductors, integrated circuits and memory cards. The applicant’s substrates, photo masks, reticles and substructures can be used in the registrant’s goods. Please see the attached NEXIS stories and Internet excerpts that discuss reticles, substrates and substructures as parts of semiconductors and integrated circuits.
IDENTIFICATION OF GOODS
The examining attorney maintains and makes FINAL the requirement for an acceptable and definite identification of goods.
The examining attorney accepts “components for electrical, optical measuring and control instruments, namely scale” in class 9 in the identification of goods.
“Components for electrical, optical measuring and control instruments, namely, miniature structures on glass substrates, namely, reticules and microstructures, optical calibration plates and grids, photo masks and code discs” is unacceptable as indefinite. The applicant must be more specific about what the miniature structures” are used for, i.e. as computer hardware parts, etc. The applicant may wish to consult the Acceptable Identification of Goods and Services Manual at www.uspto.gov for guidance.
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 that are not within the scope of goods set forth in the present identification.
RESPONSE
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Kim Saito/
Examining Attorney, Law Office 102
703-308-9102 ext. 130
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
MAIL-IT REQUESTED: SEPTEMBER 3, 2004 10083K
CLIENT:
LIBRARY: CMPCOM
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
RETICLES W/3 SEMICONDUCTORS
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 30
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1,8,24,26
DISPLAY FORMAT: KWIC
SEND TO: SAITO, KIM
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************02148**********************************
Copyright 2004 Gale Group, Inc.
ASAP
Copyright 2004 PennWell Publishing Corp.
Laser Focus World
January 1, 2004
SECTION: No. 1, Vol. 40; Pg. 75; ISSN: 1043-8092
IAC-ACC-NO: 113141117
LENGTH: 12650 words
HEADLINE: Review and forecast of the laser markets: Part I: nondiode lasers; Laser Marketplace 2004; Cover Story
BYLINE: Kincade, Kathy; Anderson, Stephen G.
BODY:
... inspection market. Confocal laser-scanning microscopy and other forms of optical microscopy), for example, is used in the examination of semiconductor wafers as well as the reticles and masks used to print the circuits on them. Currently, solid-state (266 nm) or frequency-doubled argon-ion lasers ( ...
Copyright 2002 Gale Group, Inc.
ASAP
Copyright 2002 PennWell Publishing Co.
Microlithography World
May 1, 2002
SECTION: No. 2, Vol. 11; Pg. 10; ISSN: 1074-407X
IAC-ACC-NO: 86505143
LENGTH: 2281 words
HEADLINE: Photomask pattern generation strategies; Cover Article; Cover Story
BYLINE: Ibsen, Kent; Harris, Michael; Fernandez, Mark
BODY:
... mix-and-match strategy for write tools can optimize the mask set for each application. With a range of reticle solutions available, the semiconductor manufacturer can choose the one that optimizes the image on the wafer for the application, and minimizes the overall nonrecurring engineering for ...
Copyright 1999 CMP Media Inc.
Electronic Engineering Times
September 27, 1999
SECTION: Product Week -- Subsystems, Pg. 164, PRODUCT NEWSLETTER
LENGTH: 182 words
HEADLINE: Canary sings early for ESD on wafers
BODY:
... at each step along the way.
The company has signed a letter of intent to work with Ion Systems, a leading supplier of electrostatic management solutions, to use Canary to deliver a comprehensive ESD reticle solution to semiconductor fabs, and allow cause-and-effect analysis of ESD in clean rooms. A paper on the technology was scheduled to be delivered at the 19th Annual BACUS Symposium on Photomask Technology and Management on ...
Copyright 1999 Information Access Company,
a Thomson Corporation Company;
ASAP
Copyright 1999 Cahners Publishing Company
Electronic News (1991)
April 26, 1999
SECTION: No. 17, Vol. 45; Pg. 31 ; ISSN: 1061-9577
IAC-ACC-NO: 54714815
LENGTH: 597 words
HEADLINE: Asyst to Acquire PST; Asyst Technologies, Progressive System Technologies; Company Business and Marketing
BYLINE: DORSCH, JEFF
BODY:
... complexity is driving the need for reticle manufacturers to attain the same automation and contamination control benefits SMIF now provides the semiconductor industry. Reticles, which are quartz substrates with patterns used in conjunction with wafer steppers to print submicron images on wafers, are sensitive to particle ...
MAIL-IT REQUESTED: SEPTEMBER 3, 2004 10083K
CLIENT:
LIBRARY: CMPCOM
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
MICROSTRUCTUR! W/3 (SEMICONDUCTOR OR "INTEGRATED CIRCUIT" OR "MEMORY CARD")
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 14
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
2,7
DISPLAY FORMAT: KWIC
MULTIPLE DOCUMENTS ON A PAGE
SEND TO: SAITO, KIM
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************02161**********************************
Copyright 2004 Gale Group, Inc.
ASAP
Copyright 2004 PennWell Publishing Corp.
Optoelectronics Report
April 1, 2004
SECTION: No. 7, Vol. 11; Pg. 7 ; ISSN: 1522-2837
IAC-ACC-NO: 114945097
LENGTH: 139 words
HEADLINE: Nano patent; Brief Article
BODY:
The patent relates to new devices for nanofabrication that enable the photoelectric transport and positioning of self-assembling DNA nanostructures (and microstructures) on a semiconductor substrate material. These devices use directed light beams to create precise electric fields on the substrate material. Charged ...
Copyright 1996 Information Access Company, a Thomson Corporation Company
ASAP
Copyright 1996 Horizon House Publications Inc.
Microwave Journal
July, 1996
SECTION: Vol. 39 ; No. 7 ; Pg. 200; ISSN: 0192-6225
LENGTH: 354 words
HEADLINE: Understanding Smart Sensors._book reviews
BYLINE: Bashore, Frank
BODY:
... output stages of a simple control system is explained. Micromachining, defined as a chemical etching process for manufacturing microstructures such as in semiconductor processing, is also described. The various micromachining processes are explained in detail. Semiconductor sensor outputs are described and the parameters used to specify ...
MAIL-IT REQUESTED: SEPTEMBER 3, 2004 10083K
CLIENT:
LIBRARY: CMPCOM
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
PHOTO MASKS W/5 (SEMICONDUCTORS OR INTEGRATED CIRCUITS)
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 9
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1,2,9
DISPLAY FORMAT: KWIC
MULTIPLE DOCUMENTS ON A PAGE
SEND TO: SAITO, KIM
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
**********************************02168**********************************
Copyright 2003 Financial Times Information
All rights reserved
Global News Wire
Copyright 2003 FDCHeMedia Inc
CEOWire
July 4, 2003
FT-ACC-NO: A2003072335-539D-GNW
LENGTH: 1090 words
HEADLINE: PHOTRONICS - CEO INTERVIEW
BYLINE: Bill Griffeth
BODY:
... tools, production techniques, essentially gettingtogether to assess the state of the industry. One of the companies at the conference is Photronics. They are a worldwidemanufacturer of photo masks, which are used to transfer circuit patterns onto semiconductor wafers.
Joining with us his outlook from his point of view is the company s CEO, Dan Del Rosario. He s in San ...
Copyright 2003 PR Newswire Association, Inc.
PR Newswire
July 1, 2003, Tuesday
SECTION: FINANCIAL NEWS
DISTRIBUTION: TO BUSINESS AND TECHNOLOGY EDITORS
LENGTH: 783 words
HEADLINE: Unitive Installs 300mm Electroplated Bumping Line;
"Without question, these technological and production capabilities establish Unitive as a leader in the evolution of 300mm technology.";
-Daniel Teng, President Unitive Semiconductor Taiwan
DATELINE: RESEARCH TRIANGLE PARK, N.C., July 1
BODY:
... technology is a photo-defined process that can form extremely small bumps and exceptionally tight pitches. "We use traditional semiconductor processing techniques to create photo masks so that we can produce much smaller structures and electroplating in those structures and end up with much finer bump pitches," ...
Copyright 1997 CMP Information Ltd
Electronics Times
April 24, 1997
SECTION: Pg. 3
LENGTH: 82 words
HEADLINE: News Digest: Photo-mask division sold
BODY:
Temic was one of the few remaining semiconductor companies still producing its own photo-masks at its Heilbronn plant in Germany. Temic says the sale is the result of its 1996 restructuring plans, aimed at improving the ...