Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

PRIORITY ACTION

 

OFFICE SEARCH:  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. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  78/345609

 

The following issues were discussed in communication with SOGoldsmith@duanemorris.com on Monday July 19, 2004.

 

 

1.         Identification (and classification) of goods/services.

The identification of goods/services is unacceptable as indefinite or overbroad.  TMEP §1402.01.  The applicant may adopt the following identification (and classification), if accurate:

Class 42––PRODUCT research, custom design and testing FOR NEW PRODUCT DEVELOPMENT, and TECHNOLOGY consultation services regarding electrical and electronic products, semiconductors, semiconductor systems, semiconductor cell libraries, wafer and integrated circuits

 

Class 35––BUSINESS research, and BUSINESS consultation services regarding electrical and electronic products, semiconductors, semiconductor systems, semiconductor cell libraries, wafer and integrated circuits

 

This Office’s Acceptable Identification of Goods & Services Manual is accessible at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/manual.html (searchable using Ctrl+F).  The applicant should also 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/services that are not within the scope of the goods/services set forth in the present identification.

 

2.         Fee.

If the applicant prosecutes this application as a multiple- (rather than as a single-) class application, the applicant must comply with each of the following:

(a)  The applicant must specifically identify the goods/services in each class and list the goods/services by international class in ascending numerical order.  TMEP §1403.01.

(b)  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(b); 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.

 

3.          Prior registrations.

The applicant must submit the following statement:

The applicant is the owner of U.S. Registration Nos. 1869425, 2042335, 2227071, and others.

 

4.         Disclaimer.

The applicant must, as shown below, disclaim the descriptive wording “COMPATIBLE” apart from the mark. Trademark Act § 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it merely describes an ingredient, quality, characteristic, function, feature (i.e., compatibility), purpose, or use of the applicant’s goods or services.

The computerized printing format for the Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

No claim is made to the exclusive right to use “COMPATIBLE” apart from the mark as shown.

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

•           Responding to this Office Action.

To respond formally using the Office’s online Trademark Electronic Application System (TEAS), the applicant should use the “Form Wizard” at http://eteas.gov.uspto.report/V2.0/oa200/WIZARD.htm.

To respond formally via regular mail, the applicant should mail, to the Return Address listed above, correspondence bearing the serial number, law office, and examining attorney’s name on the upper right corner of each page. 

To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.  For inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney.

/J. Brendan Regan/

Examining Attorney, Law Office 113

(703) 308-9113x420 • brendan.regan@uspto.gov

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER & NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

                                                    APPENDIX TO OFFICE ACTION

 

-----Original Message-----

From: Goldsmith, Susan [mailto:SOGoldsmith@duanemorris.com]

Sent: Monday July 19, 2004 6:13 PM

To: Regan, Brendan

Cc: Sabo, Marlene

Subject: RE: TM App Ser No 78345605 and 78345609

 

 

Brendan -

 

Thanks.  I will check with the client on the ID issue and get back to

you as soon as I can.

 

/Susan Goldsmith/

Susan Okin Goldsmith

Duane Morris LLP

100 College Road West, Suite 100

Princeton, NJ 08540

office - 609-919-4430

fax 609-919-4401

cell 908-803-2575

 

 

-----Original Message-----

From: Regan, Brendan [mailto:Brendan.Regan@USPTO.GOV]

Sent: Monday, July 19, 2004 6:08 PM

To: Goldsmith, Susan

Subject: TM App Ser No 78345605 and 78345609

 

 

Hello,

 

I am the examining attorney assigned to the above-captioned new

applications.  I can immediately approve them for publication if you

authorize me to enter an Examiner Amendment that:

  1. claims ownership of "Reg. Nos. 1869425, 2042335, 2227071, and

others";

  2. disclaims "COMPATIBLE";* and

  3. [for '609 only] amends the ID slightly to "PRODUCT research, custom

design and testing FOR NEW PRODUCT DEVELOPMENT, and TECHNOLOGY

consultation services regarding electrical and electronic products,

semiconductors, semiconductor systems, semiconductor cell libraries,

wafer and integrated circuits" (because without such modifiers, which I

tried to keep as broad as possible, these could be BUSINESS services

that belong in 035 -- thus the ID, as written, is overbroad).

Thanks in advance for your response.

/Brendan/

 

___

* See, e.g.,

http://tarr.gov.uspto.report/servlet/tarr?regser=registration&entry=2751945 and

http://tarr.gov.uspto.report/servlet/tarr?regser=serial&entry=78207072.

 

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