To: | ADLINK TECHNOLOGY INC. (mailroom@bskb.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77818802 - NANOX - 5871-0102US1 |
Sent: | 12/14/2009 5:56:13 AM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/818802
MARK: NANOX
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CORRESPONDENT ADDRESS: JAMES M. SLATTERY (REG. NO. 28,380) |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: ADLINK TECHNOLOGY INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 12/14/2009
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.
LIKELIHOOD OF CONFUSION REFUSAL
Applicant seeks to register the mark NANOX for, “Circuit boards; Circuit boards provided with integrated circuits; Computer expansion boards; Computer motherboards and daughterboards; Daughterboards; Computer hardware and software sold as a unit for testing of embedded computer systems; Computer; Electronic instruments for use in remote inspection and measurement of industrial components using remote visual devices; Environmental monitoring system comprised of meters and sensors that measure pressure, humidity, temperature and includes alarm and reporting functions; Environmentally friendly automation systems, namely, embedded operating systems and PC based software, for monitoring specified conditions and controlling respective innovative devices within a designated area.”
Registrant has registered the mark NANOX for “Scientific electronic apparatus and instruments, namely, precision micro positioning systems, that are, motorized drive systems, namely, power supply units, control units, position controls, speed controls, force controls, and analog and digital interface modules, that precisely control the location and movement of stages, namely, wafer holders and transporters, using piezoelectric properties; single-axis and multi-axis actuating and positioning systems with piezo-drive systems, comprising linear motors for microscopes, stages, namely, wafer holders and transporters for wafer handling that may be controllably motorized using piezoelectric properties, and linear stages, namely, camera part holders and transporters for precision movement of camera parts; piezo-tilting platforms for optical elements and active optics, namely, motorized platforms using piezoelectric properties for holding, transporting, and tilting optical elements and active optics; electronic data processing systems, comprising a mechanical guiding system for more axis movement, namely, power supply units, control units, position controls, speed controls, force controls, and analog and digital interface modules for mechanical guidance using piezoelectric properties; computer and computer software for operating actuating and positioning systems; electric controllable mechanical shifting equipment, namely, precision positioning systems and actuators and control units for such equipments; electronic integrated displacement sensors for mechanical positioning systems using piezoelectric properties; encapsulated and unencapsulated piezomultilayer-actuators; piezo-engines, namely, power supply units, control units, position controls, speed controls, force controls, and analog and digital interface modules using piezoelectric properties for precise adjustment in optics, semiconductor handling and inspection systems and for precision alignment and handling systems; piezo-ultrasonic transducers. micro positioning stages, namely, motorized wafer holders and transporters using piezoelectric properties for optical waveguides and fiber optics; multi mode switches for optical waveguides; optical apparatus and instruments, namely, spectrometers, optical and semiconductor inspection systems comprising a mechanical guiding system using piezoelectric properties, namely, power supply units, control units, position controls, speed controls, force controls, and analog and digital interface modules; blank optical data storage carriers.”
The goods are legally equivalent in part and otherwise closely related. Applicant’s “computer” necessarily includes registrant’s “computer for operating actuating and positioning systems computers.” Applicant’s “Computer hardware and software sold as a unit for testing of embedded computer systems; Electronic instruments for use in remote inspection and measurement of industrial components using remote visual devices; Environmental monitoring system comprised of meters and sensors that measure pressure, humidity, temperature and includes alarm and reporting functions; Environmentally friendly automation systems, namely, embedded operating systems and PC based software, for monitoring specified conditions and controlling respective innovative devices within a designated area” is closely related to registrant’s semiconductor hanlding and inspection systems since the goods are presumed to be for use in the same field.
When the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii).
MARK ON SPECIMEN DIFFERS FROM MARK IN DRAWING
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). The mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1).
The drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. However, amending the mark in the drawing to conform to the mark on the specimen would be a material alteration in this case because the mark on the specimen creates a different commercial impression from the mark on the drawing. Specifically, the additional letter and number combinations create meaning in addition to the term NANOX.
Therefore, applicant must submit the following:
(1) A substitute specimen showing use in commerce of the mark on the drawing. See TMEP §807.12(a).; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “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 filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
CLOSING
/Tracy L. Fletcher/
Examining Attorney
Law Office 115
U.S. Patent and Trademark Office
Telephone: (571) 272-9471
Facsimile: (571) 273-9471
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.