UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79122807
MARK: SOLUTION
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: SOLUTION ITALY; SOCIETA' A RESPONSABILIT ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1141898
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
Office Records Search-Potential Section 2(d) Refusal for Likelihood of Confusion
This notification is limited to the following services in International Class 40 ONLY:
Custom assembling of materials for others
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
However, applicant must address the following application requirements.
1. Identification of Goods and Services
The identification of goods as submitted with the application requires the following:
1) International Class 7
Applicant submitted the following identification in Class 7 with the application:
Moulds, parts of machines; injection moulds; moulds for moulding of thermoplastic materials; moulds for moulding plastics products, parts of machines; moulds for injection moulding tools; forging moulds; injectors and injection systems for plastic and thermoplastic materials; injection moulding machines; injection plastic moulding machines; injection presses; metal stamping presses
The above bolded wording in the identification of goods in International Class 7 needs clarification because it does not identify the goods with enough specificity and it is too broad because it may identify goods in multiple International Classes. TMEP §§1402.01 and 1402.03(a).
Specifically, applicant must specify the particular products created by the molds provided by the applicant. Please note that the identification of “materials” is generally indefinite and would require further specification. Applicant must also clarify the particular nature of its “injectors” and specify the contents of the identified “injection systems.”
Applicant should also correct the spelling of the term “mold” to the American English spelling of the term.
Applicant may adopt the following identification of goods in Class 7, if accurate:
International Class 7
Machine parts, namely, molds for use in the manufacture of {indicate nature of goods being manufactured, e.g. tools, semiconductors, soaps, etc.}; machine parts, namely, injection molds for use in the manufacture of {indicate nature of goods being manufactured, e.g. tools, semiconductors, soaps, plastic sheets and rods, etc.}; molds for molding of thermoplastic materials for use in the manufacture of plastic products in the nature of {indicate nature of goods being manufactured, e.g. tools, semiconductors, soaps, etc.; machine parts, namely, injection molds for use in the manufacture of {indicate nature of goods being manufactured, e.g. tools, semiconductors, soaps, etc.}; molds for injection molding tools; forging molds; injectors in the nature of injection molding machines and injection systems comprised of {Specify the contents of the system, e.g. injection molding machines and molds therefore] for plastic and thermoplastic materials; injection molding machines; injection plastic molding machines; injection presses; metal stamping presses
2) International Class 40
Applicant submitted the following identification in Class 40 with the application:
Custom manufacture of molds for use in industry, treatment of plastic materials to produce plastic mouldings, moulding of thermoplastics, treating for stamping of metal, metal stamping, engraving of molds, custom assembling of materials for others
The above bolded wording in the identification of services in International Class 40 needs clarification because it does not identify the services with enough specificity and it is too broad because it may identify services in multiple International Classes. TMEP §§1402.01 and 1402.03(a).
Specifically, applicant must clarify the nature of its “treatment” services.
Additionally, applicant must specify that its molding services are performed for the benefit of others in order for the services to be considered services “in commerce.” See TMEP 1301.01, et. seq.
Finally, applicant should also correct the spelling of the term “mold” to the American English spelling of the term.
Applicant may adopt the following identification of services in Class 40, if accurate:
International Class 40
Custom manufacture of molds for use in industry, treatment in the nature of custom molding of plastic materials to produce plastic moldings for others, custom molding of thermoplastics for others, treating for stamping of metal, metal stamping, engraving of molds, custom assembling of materials for others
3) International Class 42
Applicant submitted the following identification in Class 42 with the application:
Computer aided part and mould design services, design of moulds for casting of metal, designing, production and testing of models and prototypes, design of 3D mathematical models, consulting in the field of mechanical design, technical testing services, technical consultancy relating to testing, research and development of new products for others, research services in the field of engineering, industrial analysis and research services, technological analysis services, analysis and evaluation of materials
The above bolded wording in the identification of services in International Class 42 needs clarification because it does not identify the services with enough specificity and it is too broad because it may identify services in multiple International Classes. TMEP §§1402.01 and 1402.03(a).
Specifically, applicant must clarify that the designing, production and testing of models and prototypes is merely part of product research and development, as the production and fabrication of prototypes for others is a service in International Class 40.
Applicant must also clarify the nature of its “technical testing services,” “industrial analysis and research services,” “technological analysis services,” and “analysis and evaluation of materials.”
Finally, applicant should also correct the spelling of the term “mold” to the American English spelling of the term.
Applicant may adopt the following identification of services in Class 42, if accurate:
International Class 42
Computer aided part and mold design services, design of molds for casting of metal, product design and development, namely, designing, production and testing of models and prototypes, and design of 3D mathematical models; consulting in the field of mechanical design, technical testing services, namely, testing in the field of machinery design, technical consultancy relating to testing, research and development of new products for others, research services in the field of engineering, industrial scientific and product analysis and research services, technological scientific analysis services, namely, analysis and evaluation of materials being product research
In summary, applicant may adopt the following identification of goods and services, if accurate:
International Class 7
Machine parts, namely, molds for use in the manufacture of {indicate nature of goods being manufactured, e.g. tools, semiconductors, soaps, etc.}; machine parts, namely, injection molds for use in the manufacture of {indicate nature of goods being manufactured, e.g. tools, semiconductors, soaps, plastic sheets and rods, etc.}; molds for molding of thermoplastic materials for use in the manufacture of plastic products in the nature of {indicate nature of goods being manufactured, e.g. tools, semiconductors, soaps, etc.; machine parts, namely, injection molds for use in the manufacture of {indicate nature of goods being manufactured, e.g. tools, semiconductors, soaps, etc.}; molds for injection molding tools; forging molds; injectors in the nature of injection molding machines and injection systems comprised of {Specify the contents of the system, e.g. injection molding machines and molds therefore] for plastic and thermoplastic materials; injection molding machines; injection plastic molding machines; injection presses; metal stamping presses
International Class 40
Custom manufacture of molds for use in industry, treatment in the nature of custom molding of plastic materials to produce plastic moldings for others, custom molding of thermoplastics for others, treating for stamping of metal, metal stamping, engraving of molds, custom assembling of materials for others
International Class 42
Computer aided part and mold design services, design of molds for casting of metal, product design and development, namely, designing, production and testing of models and prototypes, and design of 3D mathematical models; consulting in the field of mechanical design, technical testing services, namely, testing in the field of machinery design, technical consultancy relating to testing, research and development of new products for others, research services in the field of engineering, industrial scientific and product analysis and research services, technological scientific analysis services, namely, analysis and evaluation of materials being product research
Reminder: Identifications can be amended only to clarify or limit the goods and services; adding to or broadening the scope of the goods or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07(a), 1904.02(b). In addition, for applications filed under Trademark Act Section 66(a), amendments to the identification are limited to goods and services in the international class designated in the application as filed. See TMEP §§1402.03(d), 1402.07(a).
Thus, applicant can only amend the identification to include goods and services that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.
For assistance with identifying and classifying goods 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. See TMEP §1402.04.
3. Additional Information Required—Inquiry As to Significance
The nature of the goods and services set forth in the application is unclear and additional information is required. An applicant can be required to provide more information if it is necessary for proper examination of the application. 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e); see In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Therefore, applicant must submit samples of advertisements or promotional materials for each identified class of goods and services. If such materials are not available, then applicant must submit samples of advertisements or promotional materials for similar goods and services. In addition, applicant must describe in detail the nature, purpose and channels of trade of the goods and services.
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions:
Note: Additional requirements may arise as a result of applicant’s submitted documentation and answers to the inquiries above.
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Nicholas A. Coleman/
Examining Attorney
Law Office 115
Phone: (571) 272-4917
Email: nicholas.coleman@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.