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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/884800

 

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

 

Search Results

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Informalities

 

A.            Identification of Goods

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

The wording “packages for semiconductor integrated circuits” in the identification needs clarification because it is too indefinite and is not clear as to the nature of the goods.  Specifically, it is not clear if the goods are the mere packaging that the integrated circuits are sold through retail in or if the goods are a type of housing for the integrated circuits.   

 

The wording “electronic machines, apparatus and their parts” in the identification needs clarification because it is too indefinite and is not clear as to the types of goods intended.  Additionally, this wording could cover goods in other International Classes (e.g., “electronic machines for reading credit cards and recording financial operations” in International Class 009; “electronic franking machines” in International Class 016; “electronic game machines for children” in International Class 028).  Applicant must specify and correctly classify the particular types of machines, apparatuses and parts.

 

Applicant may change this wording, if accurate, to:

 

“Semiconductors; chip carriers, namely housings for semiconductor integrated circuits; lead frames for semiconductor devices; electronic machines, apparatus, and their parts, namely, computers, computer peripherals, central processing units, computer cables, computer hardware, electronic circuit boards” in International Class 009; and/or

 

“Electronic franking machines” in International Class 016; and/or

 

“Electronic game machines for children” in International Class 28.

 

TMEP §1402.01.

 

Request for Information

 

If the above suggested identification of goods and services is not accurate, the applicant is advised as follows:

 

Applicant must submit samples of advertisements or promotional materials and a photograph of the identified goods and/or services because the nature of the goods and/or services on which applicant intends to use its mark is not clear from the present record.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials and a photograph of similar goods and/or services.  In addition, applicant must describe in some detail the nature, purpose and channels of trade of the goods and/or services listed in the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(e). 

 

Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

Manual of Acceptable Identifications

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Scope

 

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

 

B.            Classification

 

Applicant must correct the classification of the goods and services in the application and amend the application to classify them in the correct International Classes.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Multiple Class Applications

 

Applicant must clarify the number of classes for which registration is sought.  If applicant accepts the suggested amended identification of goods and services, then the submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application would identify goods and/or services that are classified in at least 3 international classes, however applicant paid the fee for only 1 class(es).

 

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. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

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 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):

 

(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 (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

C.            General Inquiry on Significance

 

Applicant must specify whether “HMT” has any significance in the electronics trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).  Specifically, applicant must indicate whether “HMT” stands for “hexamethylenetetramine.”

 

 

/Jay C Besch/

Trademark Examining Attorney

Law Office 108

(571) 272-8606 voice

(571) 273-9108 official fax

jay.besch@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.