Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the following issues as outlined below:

1) Signed Declaration Omitted;

2) Filing Basis Unclear—Section 44(d) Priority Claimed and Foreign Registration Submitted, but Section 44(e) Not Claimed;

3) Clarification of Identification of Goods Required;

4) Clarification of Entity Information Required.

15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search of the Office Records

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

1) Signed Declaration Omitted

The application was not signed and verified, both of which are application requirements. See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). Therefore, applicant must verify the statements specified further below in a signed affidavit or declaration under 37 C.F.R. §2.20. See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).

If applicant responds to this Office action online via the Trademark Electronic Application System (TEAS), applicant may satisfy this requirement by answering “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and following the instructions within the form for signing. See 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).

If applicant responds to this Office action on paper, via regular mail, applicant may satisfy this requirement by providing the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature. See 37 C.F.R. §§2.20, 2.33(a), (b)(2), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b).

STATEMENTS: The undersigned is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be entitled to use the mark in commerce; applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the application filing date; the facts set forth in the application are true and accurate; and to the best of the undersigned’s knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.

DECLARATION: The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

2) Filing Basis Unclear—Section 44(d) Priority Claimed and Foreign Registration Submitted, but Section 44(e) Not Claimed

The filing basis of the application is unclear. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §2.32(a)(5); TMEP §806. Here, applicant has claimed priority under Section 44(d) and has also submitted a foreign registration, but the applicant has not clearly indicated a filing basis.

An application may be filed based on any of the following:

(1) Use of the mark in commerce under Trademark Act Section 1(a);

(2) A bona fide intention to use the mark in commerce under Section 1(b);

(3) A claim of priority, based on a foreign application filed within six months of the U.S. application, under Section 44(d); and/or

(4) A foreign registration of a mark in the applicant’s country of origin under Section 44(e).

15 U.S.C. §§1051(a)-(b), 1126(d)-(e); TMEP §806.01(a)-(d).

Therefore, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. TMEP §806.

Depending on the circumstances, applicant may be entitled to assert more than one basis for filing. When claiming more than one basis, applicant must (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis; and (3) separately list each basis, followed by the goods or services to which that basis applies. 37 C.F.R. §2.34(b)(2); TMEP §806.02(a).

Although multi-basis applications are permitted, applicant cannot assert both use in commerce and intent to use for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

An application based on an earlier-filed foreign application for the same mark and the same goods or services must include the following:

(1) A timely “claim of priority,” that is, a claim of priority that has been filed within six months of the filing date of the foreign application;

(2) The filing date and foreign country of the first regularly filed foreign application or a statement that the U.S. application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority;

(3) The serial number of the foreign application upon which the priority claim is based; and

(4) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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 as of the application filing date.”

15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4); TMEP §806.01(c); see 37 C.F.R. §2.193(e)(1); Paris Convention for the Protection of Industrial Property art. 4, Mar. 20, 1883, http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html.

An application based on a foreign registration must include the following:

(1) A true copy, a photocopy, a certification, or a certified copy of a registration of the mark in applicant’s country of origin. A copy of a foreign registration must be a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. Applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party or extend reciprocal registration rights to nationals of the United States by law. TMEP §1002.01.;

(2) An English translation of the foreign registration if the foreign certificate of registration is not written in English. The translator should sign the translation. TMEP §1004.01(b).; and

(3) The following statement, verified in an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods or services as of the application filing date.”

See 15 U.S.C. §1126(b), (e); 37 C.F.R. §§2.34(a)(3), 2.193(e)(1); TMEP §806.01(d).

3) Clarification of Identification of Goods Required

Applicant must clarify the wording “paste compositions, in particular, past compositions for use in the manufacture of microcircuits, resistors, and other electronic compositions” in the identification of goods by specifying the type of paste. See TMEP §1402.01. Applicant has specified the use for the paste, but of what it is composed.

The identification of goods is indefinite and must be clarified because it includes the open-ended wording “in particular.” See TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with “namely.”

Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.

The following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions so long as they are accurate. If applicant does not adopt a suggestion, then applicant must amend the identification so that it is as specific as the suggestions and language found in the Manual of Acceptable Identifications of Goods and Services.

International Class 1—Chemicals used in industry; paste compositions, namely, paste compositions being made from {applicant must specify what makes up the paste compositions, for example, “plastics” or “silicone resins”} for use in the manufacture of microcircuits, resistors, and other electronic components.

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

4) Clarification of Entity Information Required

Applicant’s business name includes the foreign business designation “GmbH & Co. KG”; however, applicant set forth “limited liability” as the entity type in the application. This business designation is generally considered the equivalent of a “limited partnership.” See TMEP app. D. Therefore, applicant must clarify the entity type in the application. See TMEP §803.03(i). Applicant may satisfy this requirement by amending the entity type to one of those immediately listed above from TMEP Appendix D for this business designation, as appropriate. See id.

Alternatively, if applicant maintains that the entity type in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “limited liability company” in this instance than to the entity types listed in TMEP Appendix D. See id.

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. TMEP §§1201, 1201.02(b).

Response Guidelines

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/Marilyn D. Izzi/

Marilyn D. Izzi

Trademark Examining Attorney

Law Office 112

P: (571) 270-1523

F: (571) 273-1523

marilyn.izzi@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.