U.S. Application Serial No. 79375026
Mark: IDISIL
| Correspondence Address:
Evonik Industries AG LIC-IP Management Postcode 84/339 63457 GERMANY |
Applicant: Evonik Operations GmbH
Reference/Docket No. N/A
Correspondence Email Address:
International Registration No. 1093829
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).
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney has searched the USPTO database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
SUMMARY OF ISSUES:
IDENTIFICATION OF GOODS - AMENDMENT REQUIRED
Applicant must clarify the wording in the identification of goods for the reasons set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
International Class 001
The wording "Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry" is unacceptable as indefinite because it could include "fungicides, herbicides, insecticides and parasiticides" in Class 5. Applicant must amend this wording to clarify that the chemicals do not include "fungicides, herbicides, insecticides and parasiticides." See id. See suggested amendment below.
The wording "s
ilicones" is unacceptable as indefinite because it could include a variety of different Silicones in various classes, such as silicone fluids or unprocessed silicone resins in Class 1, silicone-based personal lubricants in Class 5, silicone sealants in Class 17, among others. Applicant must amend the wording to clarify the nature of the goods.
See id. See suggested amendment below.
The wording "
catalysts
" is unacceptable as indefinite because it implicates a wide variety of goods in Class 1. Applicant must amend the wording to clarify the nature of the goods.
See id. See suggested amendment below.
The wording "
chemical preparations for use as filling material for rubber and rubber and rubber substitute materials, respectively plastics
" is unacceptable as vague and indefinite because it is unclear whether applicant is referring to plastics as being the chemical preparations or something else.
Applicant must amend the wording to clarify the nature of the goods.
See id. See suggested amendment below.
Applicant identifies various items using the wording chemicals, which is unacceptable as indefinite because it implicates a variety of goods. Applicant must either further specify these items and/or clarify that the chemicals are industrial or for use in manufacturing. See id. See suggested amendment below.
The wording "
tanning substances
" is unacceptable as indefinite because it could refer to tanning preparations for the tanning of skin in Class 3, or tanning agents for the use in manufacture of leather in Class 1. Applicant must amend the wording to clarify the nature of the goods. See id. See suggested amendment below.
International Class 003
The wording "
Bleaching preparations and other substances for laundry use
" is unacceptable as indefinite because it implicates a wide variety of goods in Class 3, as well as items in Class 5, such as laundry sanitizer tablets. Applicant must amend the wording to clarify the nature of the goods.
SUGGESTED AMENDMENTS
Applicant may adopt the following amendments, if accurate:
International Class 001: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry except fungicides, herbicides, insecticides and parasiticides, silicic acids, aluminium oxide, titanium dioxide, kieselgur, zirconium oxide, silicates, unprocessed silicone resins, silicon, catalysts for chemical and biochemical processes, chemicals for use in the semiconductor industry, metal and non-metal oxide compounds, for use in the electronics industry, chemical preparations for the manufacture of paints and lacquers, chemicals for use in the manufacture of batteries, chemical preparations for use as filling material for rubber and rubber and rubber substitute materials in the nature of unprocessed plastics, industrial chemicals for thickening liquids of all kinds, in particular for oils and gel type fatty substances, industrial chemicals for thickening liquids for acids and stripping pastes as well as for paints, inks and lacquers, chemicals for thickening liquids for cosmetic and pharmaceutical preparations and for making alcoholic and non-alcoholic beverages, industrial chemical auxiliaries for preventing the formation of lumps and for aiding pour ability, separating agents being chemicals for use in the manufacture of plastic films, chemical preparations for use in the manufacture of electronic components, especially for the manufacture of integrated circuits; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances for use in the manufacture of leather; adhesives used in industry; chemical auxiliaries for the manufacture of cosmetics
International Class 003: Bleaching preparations for laundry use; substances for laundry use,
namely, _______________{specify, e.g., laundry detergent, starch for laundry purposes, laundry sizing, etc.}; cleaning,
polishing, scouring and abrasive preparations, metal and non-metal compounds for use as abrasives; soaps; perfumery, essential oils, cosmetics, cosmetic preparations for baths, bath salts, not for
medical purposes, hair lotions; dentifrices
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See 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.
Applicant should note the below requirement.
ENTITY TYPE AND CITIZENSHIP OMITTED
Applicant must specify its legal entity type and national citizenship or foreign country of organization or incorporation, as applicant did not include this information in the application. See 37 C.F.R. §§2.32(a)(3)(i)-(v), 2.61(b); TMEP §§803.03, 803.04. This information is required for all U.S. trademark applications, including those filed under Trademark Act Section 66(a). See 37 C.F.R. §7.25(a)-(b); TMEP §1904.02(a).
Acceptable legal entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See TMEP §§803.03 et seq. If applicant’s legal entity type is an individual, applicant must so specify and provide his or her national citizenship. 37 C.F.R. §2.32(a)(3)(i); TMEP §803.03(a). If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c). If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04.
Applicant should note the below requirement.
APPLICANT'S 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).
Applicant should note the below requirement.
U.S. COUNSEL REQUIRED
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 outside of the United States or its territories. 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/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.
How to respond. Click to file a response to this nonfinal Office action.