Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  September 30, 2019

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

This Office action is in response to applicant’s communication filed on 8/28/19.  The examining attorney has determined as follows:

 

• Registration is refused under Trademark Act Section 44(e) because the foreign registration is not from applicant’s country of origin.  Please see below for details.

 

• The disclaimer requirement is continued for the reasons set forth below.  TMEP §§1213, 1213.03(a).  Please see below for details.

 

• The requirement that applicant amend the identification of good/services is continued.  Please see below for details.  In the 4/23/18 Suspension Letter, the examining attorney incorrectly stated that applicant had addressed the requirement that applicant amend the identification of goods/services in a satisfactory manner.  On further consideration, the proposed amended identification is unacceptable, and the requirement must be continued.  The examining attorney regrets any inconvenience to applicant as a result of the foregoing.

 

REGISTRATION IS REFUSED UNDER TRADEMARK ACT SECTION 44(e) BECAUSE THE FOREIGN REGISTRATION IS NOT FROM APPLICANT’S COUNTRY OF ORIGIN

                                                

Registration is refused under Trademark Act Section 44(e) because the foreign registration is not from applicant’s country of origin.  See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01.  Specifically, applicant has submitted a foreign registration from Canada to support applicant’s Section 44(e) basis; however, the application shows that applicant is domiciled, incorporated, or organized in Singapore. 

 

To obtain registration under Section 44(e), an applicant must be the owner of a valid registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1002.01.  Under Section 44(c), “country of origin” is defined as the country in which an applicant (1) is domiciled, (2) has a bona fide and effective industrial or commercial establishment, or (3) is a national.  15 U.S.C. §1126(c); TMEP §1002.04.

 

Because applicant is domiciled, incorporated, or organized in a country different from the country that issued the foreign registration, applicant must establish that, as of the date of issuance of the foreign registration, the country that issued the foreign registration is also applicant’s country of origin.  See 15 U.S.C. §1126(c); TMEP §1002.04. 

 

Thus, to overcome this refusal, applicant may provide the following written statement for the record:  “Applicant has had a bona fide and effective industrial or commercial establishment in Canada as of the date of issuance of the foreign registration.”  TMEP §1002.04.  If applicant cannot assert that such country is a country of origin, applicant may delete the Section 44(e) basis and rely solely on Section 1(b) as a basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b); TMEP §806.04.

 

DISCLAIMER REQUIREMENT CONTINUED

 

In the 9/28/17 Office action, the examining attorney required that applicant disclaim exclusive rights to “NEO” apart from the mark as shown because it is merely descriptive of features or characteristics of applicant’s goods and services.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  The applicant has declined to disclaim exclusive rights to “NEO”, instead submitting various arguments in response.  The examining attorney will not address the applicant’s arguments against the disclaimer of “NEO” because the examining attorney has, on further consideration, amended the basis for the disclaimer requirement.  In view of the foregoing, the disclaimer requirement must be continued.

 

The applicant’s goods are comprised of rare metals, other precious metals, and compounds in various forms, including powder form.  These goods are comprised of rare earth elements, sometimes combined with other elements, which are used in the manufacture of neodymium magnets, also known as rare earth or neo magnets.  The examining attorney attached to the 9/28/17 Office action internet evidence, downloaded on 2/21/17, from various websites regarding neo magnets.  Please see the 9/28/17 Office action to review this evidence.   Also, the examining attorney has attached hereto additional evidence regarding neo magnets.  This evidence was downloaded on 9/29/19.

 

“NEO” is merely descriptive as applied to applicant’s goods/services because the applicant’s goods include neo powders, and applicant’s processing services involve obtaining “high purity gallium, germanium, indium, rhenium and tantalum” which are used in the manufacture of bonded neo powders, which, in turn, are used in the manufacture of neo magnets.  Please see the attached internet excerpts, downloaded on 9/29/19, in support of the foregoing.  In particular, please see the internet website excerpts attached hereto from www.neomaterials.com and from www.mqitechnology, both of which appear to be related to applicant (the latter website concerns a company called Magnequench, and this word appears in applicant’s copending application for NEO MAGNEQUENCH and Design, Ser. No. 87219769).  These website excerpts assert, for example, that “Magnequench is the industry leader in bonded neo magnetic powders, magnets and their applications” (emphasis added), and note that Neo Materials “produces, reclaims, refines and markets high value niche metals and their compounds that include gallium, indium, rehenium…[and] tantalum”, all of which are included in applicant’s International Class 40 identification of services.  Thus, the internet evidence supports the merely descriptive nature of NEO as applied to applicant’s goods, and also as applied to applicant’s material processing services.  Furthermore, applicant stated in its 3/28/18 response that “[o]ne application of some of Applicant’s goods is to create magnets.”  Therefore, the word NEO is merely descriptive as applied to applicant’s goods and services, and applicant must disclaim exclusive rights thereto apart from the mark as shown.

 

Please note that the disclaimer of NEO is required in spite of the fact that the “O” in NEO is stylized and that the mark includes a design because “marks with a distinctive design that replaces a letter or part of a letter are registrable on the Principal Register with a disclaimer of the merely descriptive, generic, or primarily geographically descriptive wording.”  TMEP §1213.05(g)(1).  Here, the word NEO is clearly seen in spite of the stylization of the letters and the design element. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “NEO” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

THE REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION OF GOOD/SERVICES IS CONTINUED

 

“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].”  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  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/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The applicant’s original identification of goods/services reads as follows:

 

IC 1:  Products (in liquid, salt, oxide, metal and/or powder form) that are comprised of rare earth elements (cerium, dysprosium, erbium, europium, gadolinium, holmium, lanthanum, lutetium, neodymium, praseodymium, promethium, samarium, scandium, terbium, thulium, ytterbium or yttrium) that may also be combined with iron, boron, cobalt and/or zirconium to form alloys with magnetic properties; rare metals (gallium, niobium, tantalum, rhenium, and other precious metals); processes for recovery of gallium and rhenium; water treatment products that contain rare earth elements (cerium, lanthanum and other rare earths)

 

IC 40: 

 

The applicant’s proposed amended identification of goods/services is as follows:

 

IC 1:  Engineered compounds in liquid, salt, oxide, metal and/or powder form comprised of various rare earth elements, namely, cerium, dysprosium, erbium, europium, gadolinium, holmium, lanthanum, lutetium, neodymium, praseodymium, promethium, samarium, scandium, terbium, thulium, ytterbium and yttrium that are mixed with other elements and used in a variety of commercial applications; Rare metals, namely, gallium, niobium, tantalum, rhenium, and other precious metals; Compounds containing rare earth elements, namely, cerium, lanthanum and other rare earth elements, namely, dysprosium, erbium, europium, gadolinium, holmium, lutetium, neodymium, praseodymium, promethium, samarium, scandium, terbium, thulium, ytterbium or yttrium in liquid and/or powder form used to remove impurities from water

 

IC 40:  Material processing, namely, obtaining high purity gallium, germanium, indium, rhenium and tantalum from secondary raw materials

 

The wording in bold in International Class 1 is beyond the scope of the corresponding wording in the original identification which mentioned the goods as being combined with iron, boron, cobalt and/or zirconium to form alloys with magnetic properties.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods in a way that is within the scope of the original identification.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Also, the material processing services in International Class 40 are also unacceptable in part because the corresponding wording in the original identification refers only to “processes for the recovery of gallium and rhenium.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the International Class 40 identification so that it is within the scope of the corresponding wording in the original application, that is, applicant must delete the references to germanium, indium and tantalum.   See TMEP §1402.01. 

 

Applicant may adopt the following wording, if accurate: 

 

IC 1:  Engineered compounds in liquid, salt, oxide, metal and/or powder form comprised of various rare earth elements, namely, cerium, dysprosium, erbium, europium, gadolinium, holmium, lanthanum, lutetium, neodymium, praseodymium, promethium, samarium, scandium, terbium, thulium, ytterbium and yttrium that may also be combined with iron, boron, cobalt and/or zirconium to form alloys with magnetic properties; Rare metals, namely, gallium, niobium, tantalum, rhenium, and other precious metals; Compounds containing rare earth elements, namely, cerium, lanthanum and other rare earth elements, namely, dysprosium, erbium, europium, gadolinium, holmium, lutetium, neodymium, praseodymium, promethium, samarium, scandium, terbium, thulium, ytterbium or yttrium in liquid and/or powder form used to remove impurities from water

 

IC 40:  Material processing, namely, obtaining high purity gallium and rhenium from secondary raw materials

 

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.

 

GENERAL RESPONSE GUIDELINES

                                                                                                            

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

How to respond to this non-final action:  Click to file a response to this nonfinal Office action

 

 

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@uspto.gov

 

 

 

ADDITIONAL 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.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 30, 2019 for

U.S. Trademark Application Serial No. 87219765

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Nancy L. Clarke/

Examining Attorney

Law Office 102

Tel. (571) 272-9253

E-mail:  nancy.clarke@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 30, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”