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. 79316275
Mark: BY FAR
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Correspondence Address:
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Applicant: Solmate Ltd.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1603724
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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).
IDENTIFICATION OF GOODS AND SERVICES
Portions of the identification of goods and services are unacceptable as indefinite. The examining attorney makes the requirement for an acceptable and definite identification of goods and services.
Applicant should keep the following in mind when crafting the identification:
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
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Class 9 |
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Applicant’s Identification |
Examining Attorney’s Comments |
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Computer software; |
Must indicate if the software is recorded or downloadable. Suggestion in class 9: Recorded and downloadable computer software for {specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use} |
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3D spectacles; |
Ok in class 9 |
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USB flash drives; |
Suggestion in class 9: Blank USB flash drives; Pre-recorded USB flash drives featuring {indicate subject matter} |
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eyeglass chains; |
Ok in class 9 |
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cell phone straps; |
Ok in class 9 |
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digital photo frames; |
Ok in class 9 |
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respiratory masks, other than for artificial respiration; |
Suggestion in class 9: Respiratory masks for the prevention of accident or injury; Protective industrial respiratory masks |
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electronic tags for goods; |
Ok in class 9 |
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electronic notice boards; |
Ok in class 9 |
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electronic numeric displays; |
Ok in class 9 |
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downloadable emoticons for mobile phones; |
Ok in class 9 |
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battery chargers; |
Ok in class 9 |
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chargers for electronic cigarettes; |
Ok in class 9 |
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protective masks; |
Suggestion in class 9: dust protective masks; Protective face masks for the prevention of accident or injury |
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protective films adapted for smartphones; |
Ok in class 9 |
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interfaces for computers; |
Ok in class 9 |
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sleeves for laptops; |
Ok in class 9 |
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eyeglasses cases; |
OK in class 9 |
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cases for smartphones; |
Ok in class 9 |
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covers for tablet computers; |
Ok in class 9 |
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cell phones; |
Ok in class 9 |
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encoded magnetic cards; |
Applicant must be more specific about the type of magnetic cards. Suggestion in class 9: Magnetically encoded gift cards; Magnetically encoded key cards; Magnetically encoded identity cards; Magnetically encoded credit cards |
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computer software, recorded; |
Suggestion in class 9: Recorded computer software for {specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use} |
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notebook computers; |
Ok in class 9 |
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computer software applications, downloadable; |
Suggestion in class 9: downloadable computer software for {specify the function of software, e.g., managing bank accounts, editing photos, making restaurant reservations, etc. and, if software is content- or field- specific, the content or field of use} |
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laptop computers; |
Ok in class 9 |
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mouse [computer peripheral]; |
Suggestion in class 9: computer peripheral, namely, computer mice |
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objectives [lenses] [optics]; |
Suggestion in class 9: optical lenses |
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selfie lenses; |
Suggestion in class 9: smartphone camera lenses, namely, selfie lenses |
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mirrors [optics]; |
Suggestion in class 9: Scientific and technical apparatus, namely, optical mirrors |
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eyeglasses; |
Ok in class 9 |
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sunglasses; |
Ok in class 9 |
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goggles for sports; |
Ok in class 9 |
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eyewear; |
Ok in class 9 |
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mouse pads; |
Ok in class 9 |
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wrist rests for use with computers; |
Ok in class 9 |
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ear pads for headphones; |
Ok in class 9 |
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wearable computers; |
Applicant must be more specific about the form of the computers. Suggestion in class 9: Wearable computers in the nature of smartwatches; Wearable computers in the nature of smartglasses; Wearable computer peripherals in the nature of wireless mice |
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portable media players; |
Ok in class 9 |
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wearable activity trackers; |
Ok in class 9 |
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head guards for sports; |
Ok in class 9 |
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anti-glare glasses; |
Ok in class 9 |
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eyeglass frames; |
Ok in class 9 |
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gloves for divers; |
Ok in class 9 |
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headphones; |
Ok in class 9 |
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earpieces for remote communication; |
Ok in class 9 |
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smartglasses; |
Ok in class 9 |
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smart rings; |
Ok in class 9 |
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smartwatches; |
Ok in class 9 |
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smartphones; |
Ok in class 9 |
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sports whistles; |
Ok in class 9 |
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selfie sticks [hand-held monopods]; |
Suggestion in class 9: selfie sticks |
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tablet computers; |
Ok in class 9 |
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telecommunication apparatus in the form of jewellery; |
Suggestion in class 9: telecommunication apparatus in the nature of wireless receivers in the form of jewellery |
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hands-free kits for phones; |
Ok in class 9 |
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cameras [photography]; |
Suggestion in class 9: photography cameras |
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bags adapted for laptops; |
OK in class 9 |
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time clocks [time recording devices]; |
Suggestion in class 9: time clocks |
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dressmakers' measures; |
Suggestion in class 9: dressmakers’ measures, namely, measuring tapes, measuring rulers |
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virtual reality headsets; |
Ok in class 9 |
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eyeglass cords |
Ok in class 9 |
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Class 35 |
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Applicant’s Identification |
Examining Attorney’s Comments |
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Advertising; |
Suggestion in class 35: advertising services |
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business management, organization and administration; |
Suggestion in class 35: business management; business organization consultancy; business administration |
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office functions; |
Suggestion in class 35: providing office functions |
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administrative processing of purchase orders; |
Ok in class 35 |
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administration of consumer loyalty programs; |
Suggestion in class 35: Administration of a customer loyalty program which provides {specify methods or incentives, e.g., free or discount automobile parts if customers maintain their vehicles at an automobile dealership, etc.} |
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updating of advertising material; |
Ok in class 35 |
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public relations; |
Ok in class 35 |
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corporate communications services; |
Applicant must explain what these services are |
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marketing; |
Suggestion in class 35: marketing services |
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sales promotion for others; |
Ok in class 35 |
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online advertising on a computer network; |
Ok in class 35 |
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search engine optimization for sales promotion; |
Ok in class 35 |
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website traffic optimization; |
Ok in class 35 |
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organization of exhibitions for commercial or advertising purposes; |
Ok in class 35 |
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auctioneering; |
Ok in class 35 |
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organization of trade fairs; |
Ok in class 35 |
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provision of an online marketplace for buyers and sellers of goods and services; |
Ok in class 35 |
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publicity material rental; |
Ok in class 35 |
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rental of advertising time on communication media; |
Ok in class 35 |
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rental of advertising space; |
Ok in class 35 |
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pay per click advertising; |
Ok in class 35 |
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shop window dressing; |
Ok in class 35 |
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providing business information; |
Ok in class 35 |
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demonstration of goods; |
Ok in class 35 |
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presentation of goods on communication media, for retail purposes; |
Identification deleted in 2011. Suggestion in class 35: Providing television home shopping services in the field of general consumer merchandise |
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marketing research; |
Ok in class 35 |
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business research; |
Ok in class 35 |
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publication of publicity texts; |
Ok in class 35 |
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radio advertising; |
Ok in class 35 |
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distribution of samples; |
OK in class 35 |
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dissemination of advertising matter; |
Ok in class 35 |
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direct mail advertising; |
Suggestion in class 35: direct mail advertising services |
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development of advertising concepts; |
Ok in class 35 |
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outdoor advertising; |
Ok in class 35 |
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promotion of goods and services through sponsorship of sports events; |
Ok in class 35 |
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bill-posting; |
Ok in class 35 |
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advertising by mail order; |
Ok in class 35 |
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television advertising; |
Ok in class 35 |
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writing of publicity texts; |
Ok in class 35 |
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telemarketing services; |
Ok in class 35 |
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commercial administration of the licensing of the goods and services of others; |
Ok in class 35 |
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business project management services for construction projects; |
Ok in class 35 |
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gift registry services; |
Ok in class 35 |
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layout services for advertising purposes; |
Ok in class 35 |
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modelling for advertising or sales promotion; |
Ok in class 35 |
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price comparison services; |
Ok in class 35 |
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targeted marketing |
Suggestion in class 35: targeted marketing services |
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Class 43 |
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Applicant’s Identification |
Examining Attorney’s Comments |
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Services for providing food and drink; |
Suggestion in class 43: providing of food and drink |
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temporary accommodation; |
Suggestion in class 43: providing temporary accommodation |
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bar services; |
Ok in class 43 |
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rental of meeting rooms; |
Ok in class 43 |
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food and drink catering; |
Ok in class 43 |
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cafeteria services; |
Ok in class 43 |
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snack-bar services; |
Ok in class 43 |
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café services; |
Ok in class 43 |
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restaurant services; |
Ok in class 43 |
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self-service restaurant services; |
Ok in class 43 |
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canteen services; |
Ok in class 43 |
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hotel services |
Ok in class 43 |
U.S.-LICENSED ATTORNEY
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories must be represented 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); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as Bulgaria. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. 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); TMEP §604.01.
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
How to respond. Click to file a response to this nonfinal Office action.
Kim Saito
/Kim Saito/
Examining Attorney LO 124
571.272.9214
kim.saito@uspto.gov
RESPONSE GUIDANCE