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  76/466173

 

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

 

No Conflicting Mark Noted

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods

The wording “silicon substrates and semi-conductors substrates for microelectronics, for micro-mechanics and all related activities” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “pure non-metallic silicon substrates sold in [indicate form, e.g., gel, ingots or slices] for the manufacture of semiconductors, integrated circuits, and sensors,” in INT. CLASS 1, if accurate.  TMEP §1402.01.

 

The wording “magnetic recording medias, optical media, digital media, electronic media, silicon wafers; semi-conductors; silicon wafers and semi-conductors for printed circuits and integrated circuits and all related activities; components for microelectronic purposes and for micro-mechanic purposes; material substrates for microelectronics and micro-mechanics, for flat panel displays, for integrated optical wave guides, for sensors, for integrated circuits cards and smart cards, for magnetic identity cards; micro-machining” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “blank magnetic recording media, namely, computer disks and magnetic tape; blank optical media, digital media, and electronic media, namely, recordable DVDs, recordable CDs, recordable/rewriteable DVDs, recordable/rewriteable CDs, computer hard drives; silicon wafers; semi-conductors; silicon wafers and semi-conductors for printed circuits and integrated circuits; components, namely, [specify components by common commercial name, e.g., computer hardware] for microelectronic purposes and for micro-mechanic purposes; material substrates, namely, [specify substrates by common commercial name, e.g., electro-optical film or semiconductor substrates] for microelectronics and micro-mechanics, namely, for use in the manufacture of flat panel displays, integrated optical wave guides, sensors,  integrated circuits cards and smart cards, and for magnetic identity cards; conductor silicon wafers for micro-machining applications,” in INT. CLASS 9, if accurate.  TMEP §1402.01.

 

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.

 

Recitation of Services

The wording “treatment of materials, namely mechanical, chemical and physical treatments and machining of material surfaces; material substrates processing for microelectronics and all related activities; treatment of silicon wafers and of semi-conductors; magnetization; polishing treatment of silicon wafers and of semi-conductors, silicon layer, semi-conductor or component transfer on any support” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “services for the treatment of semiconductor materials substrates and silicon wafers for the manufacture of integrated circuits, namely, modification of mechanical, physical, chemical, electrical properties of semiconductor materials substrates and silicon wafers by thermal treatment, ion implantation, chemical treatment, chemical-mechanical-polishing treatment and all treatment used in the semi conductor industry,” in INT. CLASS 40, if accurate.  TMEP §1402.11.

 

The wording “scientific, technological, technical and industrial research; material testing and laboratory activities for others; research and development of new products for others; research and development of new products in particular in the field of silicon wafers and in the field of semi-conductors for integrated circuits and all related activities; engineering and surveying, in particular in the field of silicon wafers and in the field of semi-conductors for integrated circuits and all related activities” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “scientific, technological, technical and industrial research in the field of [indicate specific field, e.g. microelectronics, bacteriology, chemistry]; material testing services for others; laboratory research in the field of [indicate specific field, e.g. microelectronics, bacteriology, chemistry]; research and development of new products for others; research and development of new products for others in the field of silicon wafers and in the field of semi-conductors for integrated circuits; engineering and surveying in the field of silicon wafers and in the field of semi-conductors for integrated circuits,” in INT. CLASS 42, if accurate.  TMEP §1402.11.

 

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 services that are not within the scope of the services recited in the present identification.

 

Drawing

The drawing is not acceptable because it contains shading or the color gray and will not reproduce satisfactorily.  The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52.  TMEP §807.07(a).

 

The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

Dual Basis Application

The applicant has filed relying on its claim of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and on a foreign registration under Section 44(e), 15 U.S.C. §1126(e).  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.  The applicant must advise the examining attorney, however, if the applicant intends to rely solely on the foreign registration as the basis for registration. 

 

Unless the applicant indicates otherwise, this Office will presume that the applicant wishes to rely on Section 1(b) as well as on Section 44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed. 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/Curtis French/

Trademark Attorney

Law Office 115

ecomm115@uspto.gov

703-308-9115 ext. 250

 

 

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.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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