UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/475195
APPLICANT: S.O.I.TEC SILICON ON INSULATOR TECHNOLOG ETC.
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CORRESPONDENT ADDRESS: BREWSTER TAYLOR LARSON & TAYLOR, PLC 1199 NORTH FAIRFAX STREET, SUITE 900 ALEXANDRIA, VIRGINIA 22314
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom115@uspto.gov
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MARK: SOITEC
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/475195
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
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.
The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit the foreign registration. Of course, the application must be in condition for publication in all other respects. Moreover, while 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 wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).
If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.