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

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 3/4/2016

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on January 29, 2016.

 

In a previous Office action dated July 29, 2015, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) for a merely descriptive mark.

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL:

 

• Trademark Act §2(e)(1) Refusal – Merely Descriptive

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

A mark is merely descriptive if “it immediately conveys knowledge of a quality, feature, function, or characteristic of [an applicant’s] goods or services.”  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)).

 

Applicant has applied to register EPROBE and design for “Semiconductor capital equipment namely, an electron beam inspection and metrology tool” and “Engineering and consulting services in the fields of semiconductor chip design and fabrication”.

 

The proposed mark is a combination of descriptive terms that immediately conveys a characteristic or feature of the applicant’s goods and which are also used in the performance of the applicant’s services.

 

First, as the evidence of record shows, the letter “e” is a recognized abbreviation for electron and thus merely descriptive of the applicant’s goods and services. While, applicant argues that the letter “e” is used as an abbreviation for a number of words as they relate to the semiconductor industry, descriptiveness is considered in relation to the relevant goods and/or services.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).  “That a term may have other meanings in different contexts is not controlling.”  In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)); TMEP §1209.03(e). In this instance, the goods of the applicant are electron inspection and metrology tools. Therefore, in relation to the goods, “e” or “electron” describes a feature of the goods, namely that they use electrons or an electron beam to inspect, measure, or test. Accordingly, the letter “e” is merely descriptive of the applicant’s goods because those in the semiconductor industry will understand “e” to mean electron. Additionally, as it relates to the services in the semiconductor industry, the letter “e” is merely descriptive since those seeking engineering and consulting services will understand “e” to mean that applicant’s engineering and consulting services are knowledgeable in the use of electrons in conjunction with the design, fabrication, and or quality control of semiconductor chips.

 

While applicant argues that the letter “e” also applies to other words which may be relevant to the semiconductor industry, the primary use of the letter “e” in the semiconductor industry is to identify electron(s). In applicant’s response, it was stated that an EPROBE is a “contactless wafer scanning inspection device” (see applicant’s response pg 10).  Accordingly, applicant has attached evidence from the applicant’s industry which shows those in the semiconductor industry who manufacture or discuss wafer scanning inspection tools use the letter “e” to identify electron(s).

 

·       http://www.hermes-microvision.com/Corporate/

·       http://www.kla-tencor.com/front-end-defect-inspection/es805-series.html

·       http://semiengineering.com/speeding-up-e-beam-inspection/

 

This evidence shows that even despite the possibility that “e” would refer to a term other than electron(s), the applicant’s industry would first understand “e” to refer to electron(s) and would immediately recognize that it describes a core feature of how certain goods in that industry operate, i.e. by using electron beams, or how services related to the use of such equipment is performed. Accordingly, the term “e” is merely descriptive when identifying electron inspection and metrology tools.

 

Next, the term probe is also merely descriptive of the goods and services of the applicant. While the applicant states its goods are not electron probes as identified in the evidence attached in the initial action, the applicant does not dispute that the definition, “any of various testing devices or substances”, merely describes what the goods of the applicant are and their function, namely contactless wafer scanning tools that use electrons/electron beams to inspect, measure or test other goods. Further, the term probe also means “a careful examination or investigation of something”. It is noted that applicant states that an EPROBE is a “contactless wafer inspection device” (emphasis added). Accordingly, those in the semiconductor industry will understand the term probe to merely describe the function and/or purpose of goods and services which provide a careful examination or investigation of wafers and/or their inspection tools.

 

In further support of the descriptiveness of the term PROBE, the attached evidence from Wikipedia shows that wafer testing often uses a wafer prober. Specifically stating, “A wafer prober is a machine used to test integrated circuits”. The evidence further states, “the development of non-contact (RF) probes for identification of known tested die (KTD) and known good die (KGD) are critical to overcoming system yield. This evidence reinforces the notion that those in the semiconductor industry understand the term probe to refer to both contact and contactless inspection devices used in association with wafers.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable.  In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and services.  Specifically, “E” and “PROBE” each describe an essential quality and nature of the goods and services. As the evidence of record reflects and is discussed above, the term “E” is commonly used to mean “Electron” and the term PROBE is defined as “any of various testing devices or substances” or “a careful examination or investigation of something”. The combination of the two terms does not change the descriptive nature of the mark. The term EPROBE still describes the goods and how they work, namely, a contactless wafer inspection tool which utilizes electrons in its performance. Further, EPROBE merely describes the engineering and/or consulting services of the applicant which customize, utilize, or refer to wafer scanning devices which utilize electrons in their operation.

 

The fact that the two terms are joined together to for a compound term does not obviate the descriptiveness of the mark. Regarding the presence or absence of a space between the two descriptive terms, whether unitary or two separate words, the commercial impression is the same, namely, an electron probe.  See, e.g.,  In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987) (“Whether compounded as “screen wipe” -- two words -- or “screenwipe” -- one word -- either is ordinary grammatical construction. See Webster's Third New International Dictionary 28a (1976). Nothing is left for speculation or conjecture in the alleged trademark.”); See, also, e.g.,  In re L.C. Licensing Inc., 49 USPQ2d 1379, 1381 (TTAB 1998); Harvey Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119 (TTAB 1976) (“the marks “DATALOK” and “DATA . LOK”, although used by the parties in different graphic presentations, create the same general commercial impression and are, for all purposes herein, legally identical”).

 

Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use.  See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).  Descriptiveness of a mark is not considered in the abstract.  In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.

 

Therefore, because the mark is comprised entirely of terms that merely describe the applicant’s goods and services, the mark is descriptive of the goods and related services. In view of the above, registration is refused under Trademark Act Section 2(e)(1).

 

PROPER RESPONSE TO A FINAL ACTION

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

(2)       An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

/Christopher M. Nunley/

Trademark Examining Attorney

Law Office 117

(571) 270-3782

christopher.nunley@uspto.gov

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/4/2016 FOR U.S. APPLICATION SERIAL NO. 86613977

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/4/2016 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.