United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 79284361
Mark: SLX
|
|
|
Correspondence Address:
|
|
|
Applicant: Mycronic AB (publ)
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
International Registration No. 1527784
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
SEARCH OF USPTO DATABASE OF MARKS
IDENTIFICATION OF GOODS
Applicant may adopt the following amended identification of goods suggested by the trademark examining attorney, if they accurately reflect the nature, function, purpose, and scope of applicant's goods. The suggested identification also serves as examples of acceptable language and may be used as a guide in drafting amended language. Please note proposed changes in bold type, strikethroughs reflecting deletions, and applicant should pay particular attention to language removed or inserted by the trademark examining attorney:
International Class 007: Machines, _______ {clarify nature of “apparatus and instruments,” e.g. roller conveyors and assembly line conveyor machinery} all for manufacturing ______ {clarify “displays, monitors,” e.g. light emitting diode displays, radar displays, video monitors, computer monitors}, LCD displays and flat panel displays, and structural replacement parts of such machines; machines, _______ {clarify nature of “apparatus and instruments,” e.g. etching apparatus and cutting machines} all for manufacturing semiconductors, and structural replacement parts of such machines and apparatus; manufacturing machines for photomasks, semiconductor wafers, integrated circuits, computer chips and computer display monitors
International Class 009: Laser writers and pattern generators for producing photomasks; laser writers and pattern generators for use within the semiconductor and display panel industries; semiconductors; semiconductor chips, semiconductor integrated circuits, semiconductor memories and semiconductor devices; computer chips; _______ {clarify “flat panel displays,” e.g. flat panel display screens, flexible flat panel displays for computers}; electronic display units, namely, ______ {clarify goods, e.g. electronic display boards, electronic display screens}; monitors, namely, ______ {clarify goods, e.g. computer monitors, touchscreen monitors}; LCD displays; TV sets; measuring apparatus and instruments, namely, ______ {clarify goods, e.g. distance measuring apparatus, lasers for measuring, measuring wheels} and measuring machines, namely, ______ {clarify goods, e.g. level measuring machines, screw-thread measuring machines}; electric measuring, control and supervision apparatus, namely, ______ {clarify goods, e.g. electric measuring lasers and optical inspection apparatus} for producing photomasks for displays and semiconductors
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.
U.S. COUNSEL REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
How to respond. Click to file a response to this nonfinal Office action.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Hai-Ly Lam/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 112
Tel. 571-272-3354
hai.lam@uspto.gov
RESPONSE GUIDANCE