UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/512130
APPLICANT: Helix Technology Corporation
|
|
CORRESPONDENT ADDRESS: JOHN L. DUPRE HAMILTON, BROOK, SMITH & REYNOLDS, P.C. P.O. BOX 9133 CONCORD, MASSACHUSETTS 01742-9133
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
|
MARK: TRUEBLUE
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 0100.0243-00
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 76/512130
The assigned examining attorney has reviewed the referenced application and determined the following.
PRIOR PENDING APPLICATION
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial no. 76/464309. There may be a likelihood of confusion between the applicant’s mark and the mark noted above under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant’s filing date. If the earlier filed application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP §§1207.01 et seq..
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
Applicant seeks to register the mark “TRUEBLUE.” The prior pending application is for the mark “TRUEBLUE.” The marks are identical in spelling, appearance and pronunciation.
Applicant’s services are described as “replacement parts services for fab manufacturing equipment; customer support and training services for fab manufacturing equipment; operational data monitoring and analysis services for fab manufacturing equipment; maintenance, repair and upgrade services for fab manufacturing equipment.” Application Serial No. 76/464309 is for “integrated circuits, semiconductor chips, light emitting diodes, transistors, semiconductors and semiconductor elements.” These goods and services are highly similar and thus, are of a type that could be expected to come from the same source.
If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue. The election to file or not to file a response to this issue at this time in no way limits the applicant’s right to address this issue at a later point. However, the applicant must respond to the following informalities in a timely manner.
RECITATION OF SERVICES UNACCEPTABLE
The current recitation of services is unacceptable because the term “replacement parts services for fab manufacturing equipment; customer support and training services for fab manufacturing equipment; operational data monitoring and analysis services for fab manufacturing equipment; maintenance, repair and upgrade services for fab manufacturing equipment” is indefinite. The applicant must indicate the specific nature of the services. The applicant may amend the recitation, if accurate to:
1. Repair and maintenance services for fab manufacturing equipment, namely semiconductors. (Class 37);
2. Training in the use and operation of fab manufacturing equipment. (Class 41)
3. Technical support services, namely, troubleshooting of fab manufacturing equipment problems; consultation in the field of fab manufacturing equipment, namely, operational data analysis services. (Class 42);
4. Electronic monitoring services in the field of fab manufacturing equipment. (Class 45)
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.
For your assistance and convenience, the “Acceptable Identifications of Goods and Services Manual” may be searched at the Office’s global network computer website address of http://www.gov.uspto.report/web/menu/tm.html.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
FEE INCREASE ADVISORY
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.
/Caroline E. Wood/
Trademark Examining Attorney
Law Office 110
Formal responses only: ecom110@uspto.gov
(703) 308-9110 ext. 197
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.