Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

Serial Number  78/701830

Mark: IDEC (stylized)

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Likelihood of Confusion

Information is enclosed concerning pending Application Serial No. 78/572634.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the mark in the above noted application.  The filing date of the referenced application precedes applicant’s filing date.  If the earlier‑filed application registers, registration may be refused under Section 2(d).  37 C.F.R. §2.83.  Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.

 

Ownership of Referenced Application

If the mark in the referenced application has been assigned to applicant, then applicant must prove ownership of that mark.  TMEP §812.01.  Applicant may record the assignment with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignment has been recorded.

 

In the alternative, applicant may submit evidence of the assignment of the mark to applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by an affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.02(a).

 

Requirements

Upon receipt of applicant’s response resolving the following requirement(s), action on this application will be suspended pending the disposition of Application Serial No(s). 78/572634.  37 C.F.R. §2.83(c); TMEP §§716.02(c) and 1208.02(c).

 

Classification and Identification of Goods

First, applicant has misclassified “marking machines” which belong in Class 7, not Class 9.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  Applicant must add Class 7 to the application or delete these goods.

 

Second, the applicant’s use of commas throughout this long identification is sometimes confusing, specifically with reference to the software and its functions.  The examiner suggests replacing some of the commas with semi-colons to provide more clarity and to move “computer electronic user interfaces” and “contactors” ahead of the software on the list.  TMEP § 1402.01. 

 

The applicant may adopt the following identification, if accurate:

 

Class 7:                      Marking machines, namely one-step, two color, precision printing machine for marking small electronic parts and devices including millimeter size transistors

 

Class 9:                      Electric, electromechanical and electronic components, namely relays, switches, sockets, counters, timers, circuit breakers, annunciators, sequence controllers, terminal blocks, sensors, connectors, programmable logic controllers, explosion proof controls, security controls, control panels and indicators, interconnectors, LED or incandescent illuminated display lights, pilot lights, LED illuminated pilot lights, fluid logic controls, power supplies, operator interfaces, computer electronic user interfaces, and contactors; software for managing programmable logic controllers; software for managing O/I operator interfaces.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Classification/Insufficient Fee

The applicant identifies goods and/or services that are classified in at least two classes; however, the fees submitted are sufficient to cover one class(es) only.

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

If applicant submits the outstanding fees with a paper response, then applicant must submit $375 to cover the fees for the remaining class(es).  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 to cover the fees for the remaining class(es).  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

Fees for Adding Classes – Application Fees as of January 31, 2005

The filing fee for adding classes to an application is as follows:

 

(1)       $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)       $375 per class, when the fees are submitted with a paper response. 

 

Consolidated Appropriations Act, 2005, Pub. L. 108-447.

 

Requirements for Combined Application – Intent to Use or Section 44 Application

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b), a foreign registration under Trademark Act Section 44(e)/an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):

 

(1)     Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please feel free to telephone the assigned examining attorney.

 

 

Wendy B. Goodman

/Wendy B. Goodman/

Trademark Attorney

Law Office 103

(571) 272-9276 (phone)

(571) 273-9276 (fax)

wendy.goodman@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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