UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/371172
APPLICANT: PDF Solutions, Inc.
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CORRESPONDENT ADDRESS: MARGARET C. MCHUGH, ESQ. TOWNSEND AND TOWNSEND AND CREW LLP TWO EMBARCADERO CENTER, 8TH FLOOR SAN FRANCISCO, CA 94111-3834
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom103@uspto.gov
If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
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MARK: CV
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CORRESPONDENT’S REFERENCE/DOCKET NO: 018591-00150
CORRESPONDENT EMAIL ADDRESS:
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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 76/371172
Applicant is requesting reconsideration of a final refusal dated March 10, 2003.
After careful consideration of the law and facts of the case, the examining attorney must deny the request for reconsideration and adhere to the final action as written since no new facts or reasons have been presented that are significant and compelling with regard to the point at issue.
An application for registration under §1(a) of the Trademark Act must include one specimen showing use of the mark as used on or in connection with the goods, or in the sale or advertising of the services in commerce. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a). If an application under §1(a) is filed without a specimen, the examining attorney will require that the applicant submit one specimen for each class, with an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce on the filing date of the application. TMEP § 904.
In this case, the goods are “semiconductor test chips.” According to the September 15, 2003 response, the applicant provides its customers with a GDSII computer file to be able to manufacture test chips. The applicant states that it does not manufacture the test chips itself. Thus, the applicant does not provide the goods. The applicant provides the computer program to make the chips, and not the actual chips. Accordingly, the applicant’s specimen is unacceptable, as the mark is not used on or in connection with the goods.
Accordingly, applicant’s request for reconsideration is denied. The time for appeal runs from the date the final action was mailed. 37 C.F.R. Section 2.64(b); TMEP Section 715.03(c). The application will be sent back to the Trademark Trial and Appeal Board for resumption of the appeal.
Tracy Cross
/Tracy Cross/
Examining Attorney
Law Office 103
Phone: (703) 308-9103 ext. 224
Fax: (703) 746-8103
Email: ecom103@uspto.gov