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:4/21/2016

 

As generally discussed with Aaron D. Hendelman (including on April 8, 2016, while examining applicant’s companion applications 86/853,164 CHEMETRY & 86/888,256 CHEMETRY & Design for the identical goods/services), the assigned examining attorney has also reviewed the referenced application and determined the following.

 

I.  SEARCH STATEMENT:

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, the applicant must respond to the following issue(s).

 

II.  MERELY DESCRIPTIVE – in part for Classes 1, 9 & 42:

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods/services in part for Classes 1, 9 & 42.  Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

The applicant applied to register the mark SHUTTLE for various chemicals (including the broad ‘industrial chemicals’)[1] in Class 1, chemical producing/measuring goods in Class 9, and licensing/scientific consulting services regarding chemical processes in Class 42.

 

The term SHUTTLE colloquially means in part “any of several devices having a…to-and-fro action,” but in the field of chemistry means “[a]ny other item that moves repeatedly back and forth between two positions, possibly transporting something else with it between those points (such as, in chemistry, a molecular shuttle).”  [emphasis added] Please see attached.

 

“A molecular shuttle in supramolecular chemistry is a special type of molecular machine capable of shuttling molecules or ions from one location to another. This field is of relevance to nanotechnology in its quest for nanoscale electronic components and also to biology where many biochemical functions are based on molecular shuttles.” [emphasis added]  Please see attached evidence from http://en.wikipedia.org/wiki/Molecular_shuttle.

 

‘Molecular Machines’ are defined as “…complex biomolecules, proteins, nucleic acids, and carbohydrates that consume energy in order to perform specific functions. The concerted action of all those machines underlies all the activities of the living cell.” See attached http://www.worldscientific.com/worldscibooks/10.1142/8111.  That is, basically, complex chemical compounds.

 

And, finally, please also see the applicant’s own attached website http://chemetrycorp.com/shuttle/ which states (despite the tm), “We pioneered a new technology platform that combines electrochemical and catalytic processes to produce caustic soda and a suite of chlorinated chemicals. This membrane based technology avoids chlorine gas with a metal chloride shuttle reaction between the two integrated processes.  In the conventional production method, salt and water are electrochemically split through the chlor-alkali process to produce chlorine gas, sodium hydroxide and hydrogen gas. The Shuttle™ process also electrochemically splits salt and water, but the platform avoids the required energy associated with the production of chlorine gas.” [emphasis added]

 

While all of the above is detailed and technical in nature, but, to summarize, it appears that within molecular chemistry, a shuttle compound is a type of molecular machine (i.e., a chemical compound)[2] that transports molecules and the like between two places.  This, thus, it appears could include (at minimum) applicant’s ‘industrial chemicals’ in Class 1 which could encompass chemicals functioning as molecular shuttles (i.e., molecular chemical compound machines) or applicant’s other chemicals.

 

Accordingly, applicant’s mark refers to the quality, characteristic or feature of the applicant’s goods/services in part for Classes 1, 9 & 42, and is therefore merely descriptive.  As stated in the identification, as discussed above, and based on the attached evidence, applicant intends to produce/provide chemicals that could act as molecular shuttles, cells/membranes that could produce molecular shuttles, instruments for measuring such shuttle reactions, and licensing/scientific consulting regarding chemical processes that could deal with molecular shuttles.

 

Please note that, this refusal will be withdrawn if the applicant deletes Classes 1, 9 & 42.

 

-  SUPPLEMENTAL REGISTER – Upon Use:

 

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 801.02(b) and 816.

 

Please note that, an application filed based on an intention-to-use under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), is only eligible for registration on the Supplemental Register upon a timely filing of an acceptable ‘amendment to allege use’ under 37 C.F.R. Section 2.76 or a ‘statement of use’ under 37 C.F.R. Section 2.88.  37 C.F.R. Section 2.47(c); TMEP section 1102.03.  Further, when such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. Section 2.75(b); TMEP section 206.01.

 

 However, in the meantime, the applicant must respond to the following informalities.

 

III. IDENTIFICATION OF GOODS/SERVICES - Indefinite in Part (those filed in-part in Class 42):

 

As discussed in detail in regards to the above noted companion applications filed for the same identification of goods/services as the instant application, the instant identification is, therefore, also unacceptable as indefinite for the Class 42 services in part for the same reasons, namely, because it lacks sufficient specificity and because the goods/services fall into additional classes.  See TMEP §1402.01.

 

Specifically, the IC 42 wording ‘consulting related to industrial chemical processes’ can be either in IC 42 if “scientific” consulting or in IC 40 if “manufacturing” related consulting and ‘consulting related to the construction of plants for manufacturing industrial chemicals’ is in IC 37 where all construction services are classified.  As the applicant may be aware, ‘consulting’ services are classified in the Class where the underlying services that are being consulted upon fall (here ‘IC 37 construction, IC 40 manufacturing & IC 42 scientific’).  Although, technically the ‘consulting related to industrial chemical processes’ services may fall under another Class once clarified.

 

Consequently, applicant must amend the identification to make it definite along the lines suggested below.  Accordingly, applicant may adopt the following identification, if accurate:

 

-        Consulting related to the construction of plants for manufacturing industrial chemicals, in International Class 37;

 

-        Consulting related to industrial chemical manufacturing processes, in International Class 40; and

 

-        Licensing of designs and technologies related to industrial chemical processes; scientific consulting related to industrial chemical processes, in International Class 42.

 

Please note that, the Class 1 & 9 goods and the “Licensing of designs and technologies related to industrial chemical processes” services in Class 42 are acceptable as filed.

 

PLEASE NOTE:  The applicant is advised that the above suggestions may not be a complete listing of amended specifications available to the applicant.  Given the indefinite nature of the goods/services, the examining attorney is unable to suggest a more comprehensive amended identification for the applicant’s consideration and possible adoption in responding to this Office Action.  It is the applicant's duty and prerogative to identify the goods and services. TMEP section 1402.01(e).

 

PTO ONLINE SEARCHING MANUAL:

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Please also note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

IV.  CLASSIFICATION OF GOODS/SERVICES:

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to International Class(es) 1, 9, 37, 40 & 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

V.  ADDITIONAL CLASSES:

 

If the applicant prosecutes this application as a combined, or multiple-class, application, the applicant must comply with each of the following:

 

(1)  The applicant must list the goods/services by international class (as listed above); and

        

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  The applicant has already submitted a filing fee for three classes.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b)/Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.  Please also view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp.

 

VI.  CONCLUSION:

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

karan.chhina@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.