Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

International Registration No. 1472418

 

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.

 

INTRODUCTION

 

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.

 

SUMMARY OF ISSUES:

• PARTIAL REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
• POTENTIAL REFUSAL – PRIOR-PENDING APPLICATION
• REQUIREMENT – AMENDMENT TO MARK DESCRIPTION AND COLOR CLAIM
• PARTIAL REQUIREMENT – AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES

 

I.                   PARTIAL REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION

 

THIS PARTIAL REFUSAL APPLIES ONLY TO

THE GOODS AND SERVICES SPECIFIED THEREIN

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 5583798, 5461361, and 4356006.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.  This partial refusal does not apply to “Machine tools; laser cutting torches; laser welding devices; laser engraving machines; laser drills for stone work; laser engraving machines for working on wood” in International Class 007, “…laser scalpels other than for medical use; laser pointers” in International Class 009, “Education, training in the field of industrial, medical and scientific laser technologies; …; colloquiums in the field of industrial, medical and scientific laser technologies” in International Class 041 and “Scientific and technological services as well as research and design services relating thereto; industrial research and analysis services; …” in International Class 042.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Applicant has applied for registration on the Principal Register of the special form mark AMPLITUDE in standard characters for use in connection with goods identified as “Machine tools; laser cutting torches; laser welding devices; laser engraving machines; laser drills for stone work; laser engraving machines for working on wood” in International Class 007, “Scientific apparatus and instruments; lasers not for medical use, in particular solid-state lasers and short-pulse lasers; diagnostic apparatus and instruments not for medical use in particular for characterizing laser and electro-optical systems; machines incorporating a laser, namely, laboratory apparatus or instruments incorporating a laser, namely, laser machining machines, machines for chemical and physical element analysis by laser ablation; laser measuring systems; laser level measuring apparatus; power lasers; laser scalpels other than for medical use; laser pointers” in International Class 009 and “Lasers for medical use; lasers for cosmetic use; lasers for ophthalmic use; lasers for dental use; lasers for medical use in particular solid-state lasers and short-pulse lasers; laser instruments and installations for medical use; laser scalpels for medical use; medical instruments equipped with lasers; laser pointers for medical use; laser beam instruments for medical use; laser cutting tools for medical use; apparatus for the application of laser rays for medical and surgical use and for dental purposes; medical apparatus for improving skin quality using laser light; lasers for medical use, in particular solid-state and short pulse lasers” in International Class 010 and services identified as “Education, training in the field of industrial, medical and scientific laser technologies; organization of conferences, seminars; colloquiums in the field of industrial, medical and scientific laser technologies” in International Class 041 and “Scientific and technological services as well as research and design services relating thereto; industrial research and analysis services; scientific and industrial research related to lasers and optoelectronic techniques; engineering services related to lasers and optoelectronic techniques; research and development of new products for others in the field of laser and electro-optics; design and development of software” in International Class 042.  However, the following registrants have acquired registration on the Principal Register of the following marks for use in connection with the following goods and services.

 

Mark	Reg. No.	IC	Identification
AMPLITUDE	5583798	042	“Software as a service (SAAS) services featuring software for product analytics and product analytics reporting.”
AMPLITUDE ANTERIOR APPROACHE	5461361	010	“Surgical, dental and medical apparatus and instruments for surgical purposes, artificial limbs; orthopedic articles, namely, splints, prostheses, artificial implants, furniture especially made for medical use, surgical cutlery; ancillary equipment intended for computer-assisted surgery, namely, endoscopic equipment for medical purposes.”
		042	“Scientific research in the field of surgical apparatus and instruments, surgical prostheses; design and development of prostheses and implants.”
AMPLITUDE STUDIOS	4356006	009	“Scientific apparatus and instruments, namely, sensing and signaling devices for measurement and quality control of materials processing by laser…”
		041	“Education services, namely, conducting live or on-line classes, seminars, workshops, tutoring, mentoring in the field of computer programs and video games;… educational services, namely, arranging and conducting of training workshops, educational colloquiums, educational conferences, educational congresses, seminars, and educational symposiums in the field of computer programs and video games…”
		042	“Design and development of computers and software, design of computer systems, computer game software, video game software, audiovisual game software, educational game software and production in the nature of designing, developing and computer programing of the aforementioned game software, advice on planning and implementing computer equipment for others….”

 

 

1.                  Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

In the case of the registrant’s mark AMPLITUDE, the entirety of the registrant’s mark is incorporated within the applicant’s special form mark.  Further, in the case of the registrants’ marks AMPLITUDE STUDIOS and AMPLITUDE ANTERIOR APPROACHE, the entirety of the literal element of the applicant’s mark AMPLITUDE is incorporated within the registrants’ marks.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

The addition of a design element in the applicant’s mark does not obviate the likelihood of confusion.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

As such, the marks are confusingly similar for purposes of likelihood of confusion.

 

2.                  Similarity of the Goods and Services

 

The goods and services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In the case of the registrant’s mark AMPLITUDE, the application uses broad wording to describe “industrial research and analysis services,” which presumably encompasses all services of the type described, including registrant’s more narrow “Software as a service (SAAS) services featuring software for product analytics and product analytics reporting.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

In the case of the registrant’s mark AMPLITUDE ANTERIOR APPROACHE, the registration uses broad wording to describe “Surgical, dental and medical apparatus and instruments for surgical purposes...; orthopedic articles, namely, … surgical cutlery; ancillary equipment intended for computer-assisted surgery, namely, endoscopic equipment for medical purposes,” which presumably encompasses all goods of the type described, including applicant’s more narrow “Lasers for medical use; lasers for cosmetic use; lasers for ophthalmic use; lasers for dental use; lasers for medical use in particular solid-state lasers and short-pulse lasers; laser instruments and installations for medical use; laser scalpels for medical use; medical instruments equipped with lasers; laser pointers for medical use; laser beam instruments for medical use; laser cutting tools for medical use; apparatus for the application of laser rays for medical and surgical use and for dental purposes; medical apparatus for improving skin quality using laser light; lasers for medical use, in particular solid-state and short pulse lasers.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Moreover, the application uses broad wording to describe “Scientific and technological services as well as research and design services relating thereto; industrial research and analysis services,” which presumably encompasses all services of the type described, including registrant’s more narrow “Scientific research in the field of surgical apparatus and instruments, surgical prostheses; design and development of prostheses and implants.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Further, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and services are related.

 

Finally, in the case of the registrant’s mark AMPLITUDE STUDIOS, the application uses broad wording to describe “Scientific apparatus and instruments; lasers not for medical use, in particular solid-state lasers and short-pulse lasers; diagnostic apparatus and instruments not for medical use in particular for characterizing laser and electro-optical systems; machines incorporating a laser, namely, laboratory apparatus or instruments incorporating a laser, namely, laser machining machines, machines for chemical and physical element analysis by laser ablation; laser measuring systems; laser level measuring apparatus; power lasers…,” which presumably encompasses all services of the type described, including registrant’s more narrow “Scientific apparatus and instruments, namely, sensing and signaling devices for measurement and quality control of materials processing by laser…”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the application uses broad wording to describe “organization of conferences, seminars,” which presumably encompasses all services of the type described, including registrant’s more narrow “Education services, namely, conducting live or on-line classes, seminars, workshops, tutoring, mentoring in the field of computer programs and video games;… educational services, namely, arranging and conducting of training workshops, educational colloquiums, educational conferences, educational congresses, seminars, and educational symposiums in the field of computer programs and video games…”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Lastly, the application uses broad wording to describe “design and development of software,” which presumably encompasses all services of the type described, including registrant’s more narrow ““Design and development of computers and software, design of computer systems, computer game software, video game software, audiovisual game software, educational game software and production in the nature of designing, developing and computer programing of the aforementioned game software, advice on planning and implementing computer equipment for others….”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Moreover, the goods and services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and services are related.

 

Thus, the goods and services of the applicant are related to the goods or services of the registrants.

 

Conclusion

 

The applicant’s mark and the registrants’ marks are similar and the goods and services of the applicant are related to the goods or services of the registrants; therefore, it is likely that consumers would be confused, mistaken, or deceived as to the source of the goods and services of the applicant.  As such, the applicant’s mark creates a likelihood of confusion with the registrants’ marks, and registration on the Principal Register is refused, pursuant to Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  Applicant should note the additional, potential ground for refusal below.

 

II.                POTENTIAL REFUSAL – PRIOR-PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 87790341 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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.

 

Upon receipt of applicant’s response resolving the following requirements and the aforementioned partial refusal, action on this application will be suspended pending the disposition of U.S. Application Serial No. 87790341.  37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).

 

III.             REQUIREMENT – AMENDMENT TO MARK DESCRIPTION

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  Additionally, applicant must provide an amended color claim that references all the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Specifically, the following colors have been omitted:  black.  A complete color claim must list all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. 

 

The following description is suggested, if accurate:  The mark consists of the stylized black wording “AMPLITUDE” below an incomplete orange triangle wherein a space is present between where the bottom line of the orange triangle would intersect with the bottom right corner of the orange triangle.

                                                    

The following color claim is suggested:  “The colors black and orange are claimed as a feature of the mark.”

 

IV.             PARTIAL REQUIREMENT – AMENDMENT TO IDENTIFICATION OF GOODS AND SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO

THE GOODS AND SERVICES SPECIFIED THEREIN

 

This partial requirement does not apply to “laser welding devices; laser engraving machines;… laser engraving machines for working on wood” in International Class 007, “…lasers not for medical use, in particular solid-state lasers and short-pulse lasers; diagnostic apparatus and instruments not for medical use in particular for characterizing laser and electro-optical systems;…  laser measuring systems;… laser scalpels other than for medical use; laser pointers” in International Class 009, “Lasers for medical use;… lasers for medical use in particular solid-state lasers and short-pulse lasers; laser instruments and installations for medical use; laser scalpels for medical use;… laser pointers for medical use; laser beam instruments for medical use; laser cutting tools for medical use…” in International Class 010 and “…engineering services related to lasers and optoelectronic techniques; research and development of new products for others in the field of laser and electro-optics; design and development of software” in International Class 042.

 

The applicant must clarify some of the wording in the identification of goods and services because such wordings are indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  These wordings are indefinite because such wordings do not make clear the exact nature, function, or type of the goods or services.  Applicant must amend the identification to specify the common commercial or generic name of the goods or services.  See TMEP §1402.01.  In the case of goods, if the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.  In the case of services, if the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Moreover, the identification of goods included an instance of duplicative entries. Applicant is advised to delete or modify the duplicate entry in the identification of goods and services in International Classes 010 listed below.  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant should note that any wording in bold, in italics, underlined or in ALL CAPS below offers guidance and shows the changes being proposed for the identification of goods.  If there is wording in the applicant’s version of the identification of goods which should be removed, it will be shown with a line through it such as this: strikethrough.  When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.

 

Applicant may substitute the following wording, if accurate: 

 

Class 007:        “Machine tools, namely, ____ {specify type of machine tools, e.g., gear cutters, chasers, broaches, jaws for using in the precision clamping of work pieces}; laser cutting torches in the nature of laser welding machines; laser welding devices; laser engraving machines; Drilling machines, namely, laser drills for stone work; laser engraving machines for working on wood.”

 

Class 009:        “Scientific apparatus and instruments, namely, ___ {specify type of scientific apparatus and instruments, e.g., lasers for the treatment of metal surfaces to repel water, lasers for measuring purposes, lasers-beam emitting device which projects right angles for construction purposes}; lasers not for medical use, in particular solid-state lasers and short-pulse lasers; diagnostic apparatus and instruments not for medical use in particular for characterizing laser and electro-optical systems; machines incorporating a laser, namely, laboratory apparatus or instruments incorporating a laser, namely, laser machining machines  for ____ {specify purpose of laser machining machines, e.g., the treatment of metal surfaces to repel water, measuring purposes, projecting right angles for construction purposes}, and machines for chemical and physical element analysis by laser ablation; laser measuring systems; laser level measuring apparatus; power lasers not for medical use; laser scalpels other than for medical use; laser pointers.”

 

Class 010:        “Lasers for medical use; lasers for cosmetic use treatment of ____ {specify parts of the body to be treated cosmetically by lasers, e.g., the face, skin, hair follicles};  lasers for medical use, namely, for ophthalmic use; lasers for medical use, namely, for dental use; lasers for medical use in particular solid-state lasers and short-pulse lasers; laser instruments and installations for medical use; laser scalpels for medical use; medical instruments equipped with lasers, namely, ____ {specify type of medical instruments equipped with lasers, e.g., endoscopic equipment for medical purposes}; laser pointers for medical use; laser beam instruments for medical use; laser cutting tools for medical use; apparatus for the application of laser rays for medical and surgical use and for dental purposes in the nature of lasers for medical use; medical apparatus in the nature of lasers for medical use for improving skin quality using laser light; lasers for medical use, in particular solid-state and short pulse lasers.”

 

Class 041:        “Education services, namely training ____ {specify group being trained, e.g., doctors, scientists} in the field of industrial, medical and scientific laser technologies; organization of conferences and , seminars in the field of _____ {specify field of conferences and seminars, e.g., industrial, medical and scientific laser technologies}; Organizing colloquiums in the field of industrial, medical and scientific laser technologies.”

 

Class 042:        “Scientific and technological services, namely, as well as research and design services relating thereto in the field of _____ {specify field of research and design, e.g., lasers and optoelectronic techniques}; industrial research and analysis services in the field of _____ {specify field of research, e.g., lasers and optoelectronic techniques}; scientific and industrial research related to in the field of lasers and optoelectronic techniques; engineering services related to lasers and optoelectronic techniques; research and development of new products for others in the field of laser and electro-optics; design and development of software.”

 

Applicant’s goods and 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 services or add goods and 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 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 or services will further limit scope, and once goods and 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 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 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.

 

ASSISTANCE

 

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 and requirements 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. 

 

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 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. 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Daniel Travis Bice/

D. Travis Bice

Trademark Examining Attorney

Law Office 128

Telephone: (571) 272-3385

Email: Daniel.Bice@USPTO.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.