UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/017354
APPLICANT: Multitest elektronische Systeme GmbH
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: INSITE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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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 79/017354
INTERNATIONAL REGISTRATION NO. 0867517
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
APPLICANT OR ATTORNEY CAN RESPOND TO PROVISIONAL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf.
NOTE: Attorneys hired to represent an applicant in a trademark matter before the Office must be eligible under 37 C.F.R. §10.14:
(1) Attorneys who are in good standing with the bar of any United States court or the highest court of any state, may practice before the Office in trademark matters.
(2) A foreign attorney not residing in the United States who is in good standing before the patent or trademark office of the country in which he or she resides, may practice before the Office in trademark matters only in cases where the patent and trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the Office. Currently, Canadian attorneys are the only foreign attorneys recognized as meeting this criterion. A foreign attorney who meets the requirements of 37 C.F.R. §10.14(c) can only represent parties located in the country in which the foreign attorney resides and practices. TMEP §602.
The Office cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
If applicant is not represented by an attorney, applicant may appoint a domestic representative who would receive correspondence from the Office and be served process or notice of proceedings affecting the application. 15 U.S.C. §1141h(d); 37 C.F.R. §2.24.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application, and has determined the following.
MEANING INQUIRY
The applicant must indicate whether INSITE has any significance in the relevant trade. 37 C.F.R. Section 2.61(b).
The wording in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods and their function or use. TMEP §1402.01. Applicant must clarify the nature and/or purpose of the goods within Class 009. If the goods cannot be clarified within Class 009, they should be deleted since reclassification is not available.
The identification of goods includes parentheses. The use of parentheses should be avoided because they may be confused with brackets, which are used to indicate matter that has been deleted from a registration.
For example, the identification may be amended in the following manner, if accurate:
Computer software for the monitoring and control of production machines in the area of semiconductor and electronics manufacturing, in particular for the mechatronic and mechanical recording, checking and evaluation of operating data from the production process in semiconductor and electronics manufacturing, especially in the area of the final inspection of semiconductor chips; computer software for creating on-line databases regarding the above-mentioned production data at variable intervals that can be freely chosen; computer software for evaluating the production data, in particular in the form of statistics, in International Class 009.
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.
The wording in the identification of services needs clarification. Applicant must amend this wording to specify the common commercial or generic name for the services. If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01.
Further, the identification of goods includes parentheses. The use of parentheses should be avoided because they may be confused with brackets, which are used to indicate matter that has been deleted from a registration.
NOTE: Applicant must clarify the nature and/or purpose of the goods within each respective Classification. If the goods cannot be clarified within the identified Classification, they should be deleted since reclassification is not available.
For example, the identification may be amended in the following manner, if accurate:
Electronic, electric, and digital transmission of data and messages, in International Class 038.
Providing temporary use of non-downloadable computer software available in data networks for the monitoring and control of production machines in the area of semiconductor and electronics manufacturing, in particular for the mechatronic and mechanical recording, checking and evaluation of operating data from the production process in semiconductor and electronics manufacturing, especially in the area of the final inspection of semiconductor chips; Providing temporary use of non-downloadable computer software available in data networks for creating on-line databases regarding the above-mentioned production data at variable intervals that can be freely chosen; Providing temporary use of non-downloadable computer software available in data networks for evaluating the production data, in particular in the form of statistics; design, development and individual adaptation of the above-mentioned computer software; installation, updating and repair of the above-mentioned computer software; all foregoing in the field of customer service; consultation for third parties with regard to the use of the above-mentioned computer software, in International Class 042.
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.
/Cheryl Clayton/
Attorney
Law Office 102
571-272-9102
HOW TO RESPOND TO THIS OFFICE ACTION:
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.