UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

 

INTERNATIONAL REGISTRATION NO. 1449190

 

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL 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 partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

 

This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following goods and services in the application: 

 

IC 7: parts and accessories for embossers not included in other classes, including embossing rolls, crease rolls, embossers with heating for thermal treatment of embossing materials

 

IC 40: embossing of calenders; embossing on all media, including thin sheets

 

IC 42: optimization of embossing tools; technological consulting services for obtaining improved aesthetic, physical and mechanical embossing results; process design for reading markings or security elements embossed or generated by laser structuring or photo-lithography; design of processes for reading markings for identification and/or authentication purposes; design of hidden decorations or markings using light diffraction, in particular of security elements or methods of encrypting and decrypting information; design of aesthetic, technical or physical effects, especially on jewelry, watches, pharmaceuticals, food or valuable products

 

See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS: NO CONFLICTING MARKS

 

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).

 

SUMMARY OF ISSUES:

 

• REQUIREMENT: IDENTIFICATION OF GOODS & SERVICES CLARIFICATION

 

REQUIREMENT: IDENTIFICATION OF GOODS & SERVICES CLARIFICATION

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

First, the wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Second, the identification of goods is indefinite and must be clarified because some of the wording is too broad making the nature of the goods identified unclear.  Applicant must clarify the identification by specifying the type of goods, in the assigned international class, as is shown in the suggested identification below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Third, the identification of services is indefinite and must be clarified because some of the wording is too broad making the nature of the services identified unclear.  Applicant must clarify the identification by specifying the nature of the services, in the assigned international class, as is shown in the suggested identification below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Fourth, applicant has included the term “and/or” or “or” in the identification of services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified services.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Fifth, descriptions of goods and services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. 

 

The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

SUGGESTED IDENTIFICATION

 

Instructions and suggested changes are shown in bold text.  Applicant may adopt the following identification, if accurate: 

 

IC 7: Embossing machines; embossers for embossing thin sheets, thin foils of aluminum, thin sheets of polymers, thin laminates comprising paper, polymers, or both; embossing machines for embossing laminated sheets, sheets of metal, metal-coated paper or metal-coated laminated products; installations comprising a packaging machine and an embossing machine synchronized with the packaging machine; parts and accessories for embossers not included in other classes, namely, embossing rolls being {specify the nature of the embossing rolls, e.g., structural parts for embossing machines}, crease rolls being {specify the nature of the crease rolls, e.g., structural parts for embossing machines}, embossers with heating for thermal treatment of embossing materials; machine tools for the mechanical, chemical or photo-lithographic structuring of embossing rolls; machine tools for non-rotational relief structuring, in particular by laser ablation; machine tools for the macroscopic or microscopic structuring of thin sheets by laser, in particular for creating aesthetic effects, diffractive light effects, mechanical or tactile effects, physical effects, security features or a combination thereof; machine tools for structuring of surfaces by direct laser beam printing, particularly for creating aesthetic effects, special optical effects or security features; machine tools for structuring of the surface of a metal object by direct laser beam printing, particularly for creating aesthetic effects, special optical effects or security features; printing ferrules, not hand-operated

 

IC 40: Engraving; engraving of embossing rolls; embossing services, namely, embossing of {specify what is being embossed, e.g., words, designs and images} on calenders; laser engraving of materials in submicron, micrometric or macrometric sizes for aesthetic, technical, physical or safety purposes; {specify the nature of the services for embossing on all media, including thin sheets, e.g., embossing services, namely, embossing words, designs or images on [indicate goods being embossed]}

 

IC 42: Design of embossing tools and {specify the nature of the optimization of embossing tools, e.g., development of embossing tools to optimize features}; technological consulting services for obtaining improved aesthetic, physical and mechanical embossing results, namely, {specify the nature of the technological consulting services for obtaining improved aesthetic, physical and mechanical embossing results, e.g., technological consultation in the technology field of [identify the field, e.g., computer hardware systems], technology consultation in the field of embossing}; process design for reading markings and security elements embossed or generated by laser structuring or photo-lithography; design of processes for reading markings for identification and authentication purposes; design of hidden decorations and markings using light diffraction, in particular of security elements and methods of encrypting and decrypting information; design of aesthetic, technical and physical effects, especially on jewelry, watches, pharmaceuticals, food and valuable products

 

IDENTIFICATION ADVISORIES

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

FAILING TO RESPOND WILL RESULT IN PARTIAL ABANDONMENT OF APPLICATION:  If applicant does not respond to this Office action within the six-month period for response, the goods and services International Classes 7, 40, and 42 identified above, in the beginning of this Office action, will be deleted from the application. 

 

In such case, the application will then proceed only with the following goods and services International Classes 7, 40, and 42: 

 

IC 7: Embossing machines; embossers for embossing thin sheets, thin foils of aluminum, thin sheets of polymers, thin laminates comprising paper, polymers, or both; embossing machines for embossing laminated sheets, sheets of metal, metal-coated paper or metal-coated laminated products; installations comprising a packaging machine and an embossing machine synchronized with the packaging machine; machine tools for the mechanical, chemical or photo-lithographic structuring of embossing rolls; machine tools for non-rotational relief structuring, in particular by laser ablation; machine tools for the macroscopic or microscopic structuring of thin sheets by laser, in particular for creating aesthetic effects, diffractive light effects, mechanical or tactile effects, physical effects, security features or a combination thereof; machine tools for structuring of surfaces by direct laser beam printing, particularly for creating aesthetic effects, special optical effects or security features; machine tools for structuring of the surface of a metal object by direct laser beam printing, particularly for creating aesthetic effects, special optical effects or security features; printing ferrules, not hand-operated

 

IC 40: Engraving; engraving of embossing rolls; laser engraving of materials in submicron, micrometric or macrometric sizes for aesthetic, technical, physical or safety purposes

 

IC 42: Design of embossing tools

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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 U.S. commonwealths or U.S. territories.  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. 

 

ADVISORY: RESPONDING TO THIS OFFICE ACTION

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

OFFICE ACTION QUESTIONS: Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Tina Brown/

Trademark Examining Attorney

Law Office 118

E: tina.brown@uspto.gov

T: 571-272-8864

 

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.