UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/371172
APPLICANT: PDF Solutions, Inc.
|
|
|
CORRESPONDENT ADDRESS: MARGARET C. MCHUGH, ESQ. TOWNSEND AND TOWNSEND AND CREW LLP TWO EMBARCADERO CENTER, 8TH FLOOR SAN FRANCISCO, CA 94111-3834
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom103@uspto.gov
|
|
MARK: CV
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 018591-00150
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.
|
Serial Number 76/371172
This letter responds to the applicant’s communication filed on December 26, 2002. The amendments contained in the above-referenced response, with the exceptions cited below, are accepted and entered into the record.
The refusal based upon Section 2(e)(1) of the Trademark Act is hereby withdrawn.
The specimen does not show use of the mark for any goods/services identified in the application. The applicant’s goods are identified as “semiconductor test chips.” However, the specimen is an “info file” that is “delivered to customers along with a computer file of Applicant’s test chip so that they have the information necessary to manufacturer the test chip mask set using Applicant’s test chips.” It appears that the applicant does not sell “semiconductor test chips.” The applicant has a service of providing customized information on how the end user can manfacture semiconductor test chips. The applicant must submit a specimen showing use of the mark for the goods/services specified. 37 C.F.R. §2.56; TMEP §904. Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
Accordingly, the specimen requirement is hereby made FINAL.
The applicant may be able to overcome the refusal to register this mark by amending the application to assert a different basis for filing the application and submitting the requirements for the new basis. TMEP §§806.03 et seq.
In this case, the applicant may wish to amend the application to assert a 1(b) basis. To base the application on a bona fide intention to use the mark in commerce, the applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
This statement must be verified, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2)(i); TMEP §806.01(b).
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. §2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
Tracy Cross
/Tracy Cross/
Examining Attorney
Law Office 103
Phone: (703) 308-9103 ext. 224
Fax: (703) 746-8103
E-mail: ecom103@uspto.gov
FEE INCREASE EFFECTIVE JANUARY 1, 2003
EFFECTIVE JANUARY 1, 2003, THE FEE FOR FILING AN APPLICATION FOR TRADEMARK REGISTRATION WILL BE INCREASED TO $335.00 PER INTERNATIONAL CLASS. THE USPTO WILL NOT ACCORD A FILING DATE TO APPLICATIONS THAT ARE FILED ON OR AFTER THAT DATE THAT ARE NOT ACCOMPANIED BY A MINIMUM OF $335.00.
ADDITIONALLY, THE FEE FOR AMENDING AN EXISTING APPLICATION TO ADD AN ADDITIONAL CLASS OR CLASSES OF GOODS/SERVICES WILL BE $335.00 PER CLASS FOR CLASSES ADDED ON OR AFTER JANUARY 1, 2003.
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 E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm 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.