UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

 

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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

ISSUE/MAILING DATE: 3/22/2017

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

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).

 

Identification and Classification of Goods and Services

 

The wording specified below in the identification of goods and services is indefinite and must be clarified to further specify the nature of the goods and service (see below for explanations and suggestions).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the goods and services.  If there is no common commercial or generic name for the goods and services, then applicant must describe the nature of the goods and services as well as their main purpose, channels of trade, and the intended consumer(s).

 

The wording “synthetic resins” in the identification of goods and services must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass unprocessed synthetic resins (Class 001) or semi-processed synthetic resins (Class 017).

 

Applicant may substitute the following wording, if accurate: 

 

Class 001:        Chemical products FOR ___ (SPECIFY THE CLASS 001 PURPOSE, e.g., BRIGHTENING DYESTUFFS); unprocessed plastics, ___ (SPECIFY THE CLASS 001 TYPE OF PLASTICS, e.g., PROTEIN, POLYMERIZATION) plastics, unprocessed synthetic resin, __ (FURTHER SPECIFY NATURE OF SYNTHETIC RESINS – MUST BE UNPROCESSED TO WARRANT CLASS 001 – SEMI-PROCESSED SYNTHETIC RESINS ARE IN CLASS 017) synthetic resin; ceramic compounds, NAMELY, ___ (SPECIFY, e.g., CERAMIC POWDERS USED IN MANUFACTURING); ALL OF THE above-mentioned products FOR USE IN additive manufacturing AND generative production processes; ALL OF THE above-mentioned substances in the form of granuleS and/or powder; foundry sand

 

Class 006:        Non-noble COMMON metals and their alloys; ALL OF THE above-mentioned products FOR USE IN additive manufacturing; ALL OF THE above-mentioned substances in the form of granuleS and/or powder; metal foundry CHILL-molds

 

Class 007:        Machines for additive manufacturing FOR MANUFACTURING ____ (SPECIFY WHAT IS BEING MANUFACTURED) BY USING A source of energy, in particular by means of electromagnetic radiation or particle radiation

 

Class 009:        Measuring, signal, and control devices, NAMELY, ___ (SPECIFY THE PARTICULAR CLASS 009 MEASURING, SIGNAL, AND CONTROL DEVICES); laser EQUIPMENT FOR not for medical purposes; devices for recording, transmitting, and rendering IN THE NATURE OF REPRODUCING sound and images; recorded MEDIA, NAMELY, DIGITAL MEDIA IN THE NATURE OF ___ (SPECIFY TYPES OF DIGITAL MEDIA, e.g., PRE-RECORDED VIDEO CASSETTES, DIGITAL VIDEO DISCS, DIGITAL VERSATILE DISCS, DOWNLOADABLE AUDIO AND VIDEO RECORDINGS, DVDS, AND HIGH DEFINITION DIGITAL DISCS) FEATURING __ (SPECIFY SUBJECT MATTER) and unrecorded media IN THE NATURE OF ____ (SPECIFY, e.g., BLANK DIGITAL STORAGE MEDIA, BLANK ELECTRONIC STORAGE MEDIA); data processing EQUIPMENT and computers; DOWNLOADABLE data processing programs; ALL of the above mentioned products FOR USE combination with additive manufacturing

 

Class 017:        SEMI-PROCESSED SYNTHETIC RESINS

 

Class 040:        ADDITIVE MANUFACTURING, NAMELY, production and handling of granulate or powder for additive manufacturing made of materials which are firmly compoundable, at least in the surface, in particular metals, ceramic, glass, organic substances, plastics, at least partially organically produced substances or combinations of above-mentioned substance, in particular by grounding, sieving, melting, mixing, adding of additives, compounding, chamfering, polishing of powder, surface activation, atomizing, smoothening of the surface of powder particles, water vapor treatment, thermal treatment, recycling of unspent powder or granulate; processing of devices which were manufactured by additive manufacturing and consist of materials, which are firmly compoundable, at least in the surface, in particular of metals, ceramic, glass, organic substances, plastics, at least partially organically produced substances or combinations of above-mentioned substances, in particular by brushing, blowing out, sandblasting, polishing, eroding, impregnating, coating, dyeing, annealing/ baking out, laminating, painting, galvanizing, tempering, shot peening, cleaning, powder coating, platinizing

 

Class 042:        Technological services, NAMELY, ____ (SPECIFY THE CLASS 042 TECHNOLOGICAL SERVICES, e.g., RESEARCH, DESIGN) IN THE FIELD OF ___ (SPECIFY FIELD, e.g., POLYMERIC MATERIALS, POLYMER SYNTHESIS, AND MATERIALS CUSTOMIZATION FOR MEDICAL, SCIENTIFIC, AND TECHNOLOGICAL APPLICATIONS); services of a mechanical engineer and/or an engineer and/or a chemist and/or a mechanic, NAMELY, ____ (SPECIFY THE CLASS 042 SERVICES, e.g., ENGINEERING, CHEMICAL RESEARCH, CHEMICAL ANALYSIS, MECHANICAL ENGINEERING AND RESEARCH); drafting IN THE NATURE OF CREATING and developing COMPUTER software, services of a computer scientist and/or mathematician, NAMELY, ____ (SPECIFY CLASS 042 SERVICES, e.g., RESEARCH, ANALYSIS) OF ___ (SPECIFY CLASS 042 SUBJECT MATTER, e.g., COMPUTER SOFTWARE AND SYSTEMS); installation of ____ (SPECIFY TYPE OF SOFTWARE, E.g., COMPUTER, INTERNET ACCESS, MOBILE PHONE) software

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Requirements for Combined Applications

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods and/or services that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 6 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

Verified Declaration Omitted

 

The application was unsigned, resulting in the application not being properly verified.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1).  Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.2(n), 2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §804.02.

 

To respond to this requirement online using the Trademark Electronic Application System (TEAS) response Office action form, answer “yes” to the TEAS response form wizard question #10, and follow the instructions within the form for signing.  The TEAS online form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.  For more information about a signed declaration and required verified statement and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement.

 

 

 

 

Section 44(d) Sole Basis with Intent to Perfect to Section 44(e) Presumed

 

The application specifies Trademark Act Section 44(d) as the sole filing basis.  See 15 U.S.C. §1126(d).  Although the application does not include a copy of a foreign registration or a statement that applicant intends to rely on Section 44(e) as a basis for registration, the USPTO presumes applicant is asserting Section 44(e) because Section 44(d) is a filing basis only and not a basis for registration.  TMEP §§806.01(c), 1003.04(a); see 15 U.S.C. §1126(d)-(e); 37 C.F.R. §2.34(a)(4)(iii). 

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the 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 must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(a).

 

If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis.  See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).  

 

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. §§2.62(c), 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.

 

 

/Christina Sobral/

Trademark Examining Attorney

Law Office 109

Christina.Sobral@uspto.gov

571.272.5703

 

 

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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/22/2017 FOR U.S. APPLICATION SERIAL NO. 76720019

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/22/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.