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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT
EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/16/2018
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.
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 Results
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).
Disclaimer
Applicant must disclaim the wording “NANO” because it merely describes an
ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark.
See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
Presumably, the goods and services are in the field of nanotechnology and nanomedicine. See the
attached dictionary evidence. Therefore, the wording merely describes features of the goods and services.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the
marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug.
Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not
physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A.
1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP
§1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “NANO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic
Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
Identification of Services
The wording “providing subscriptions to journals and reviews” in the identification of
services is indefinite and must be clarified because the services must be identified with more specificity. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01. Applicant may substitute the following wording, if accurate: “Arranging of subscriptions of the publications of others in
the nature of journals and reviews” in Class 35.
The wording “providing educational information and services” in
the identification of services is indefinite and must be clarified because applicant must specify the subject matter of the information. In addition, the subject
matter of the information determines the classification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute
the following wording, if accurate: “Providing educational information in the academic field of science for the purpose of academic study” in Class
41.
The wording “providing of training” in the
identification of services is indefinite and must be clarified because applicant must specify the field or subject matter of the training. See 37 C.F.R.
§2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Providing of training in the field of
science” in Class 41.
The wording “arranging and conducting of
colloquiums, workshops, congresses, conferences, and symposiums in the fields of science technology and medicine” in the identification of services is indefinite and must be clarified because it is
too broad and may be classified in more than one international class. If the services are for business purposes, it is classified in Class 35. If the services are for educational purposes, it is classified in Class 41. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Arranging and conducting of colloquiums, workshops, congresses, conferences, and
symposiums for educational purposes in the fields of science, technology, and medicine” in Class 41.
The wording “publishing
services” in the identification of services is indefinite and must be clarified because applicant must specify what is being published. See 37 C.F.R.
§2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Publishing of books” in Class
41.
The wording “providing electronic publications” in the identification of services is indefinite and must be clarified because applicant must specify the nature and
subject matter of the publication. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording,
if accurate: “Providing non-downloadable electronic publications in the nature of books in the field of science, technology and medicine” in Class
41.
The wording “publication of research materials online” in the identification of services is indefinite and must be clarified because the nature of the research materials
must be specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if
accurate: “Publication of on-line research materials, namely, on-line books” in Class 41.
The wording “providing on-line educational information from a computer database or the internet” in the identification of services is indefinite and must be clarified
because applicant must specify the subject matter of the information. In addition, the subject matter of the information determines the classification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Providing on-line educational information from a computer database in the academic field of science, technology, and medicine for the purpose of academic study” in Class
41.
The wording “providing on-line, searchable databases in the fields of science, technology and medicine” in the identification of services is indefinite and must be
clarified because it is too broad and may be classified in more than one class. The classification depends on the service-related subject matter of the
database. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Providing an on-line searchable database in the fields of science, technology and medicine for scientific research purposes” in Class
42.
The wording “scientific, medical and technological research and design services” in the identification of services is indefinite and must be clarified because the
services must be identified with more specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the
following wording, if accurate: “Scientific and medical research; Technology research in the field of _______ (specify field, e.g., medical instruments)” in Class
42.
The wording “hosting platforms on the Internet for educational purposes” in the identification of services is indefinite and must be clarified because the purpose must
be identified with more specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following
wording, if accurate: “Providing a web hosting platform for _______ (indicate purpose or intended user, e.g., organizing conferences)” in Class
42.
The wording “providing online database information indexing and abstracting software tools” in the identification of services is indefinite and must be clarified because
the services must be identified with more specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute
the following wording, if accurate: “Providing a website featuring on-line non-downloadable software tools for database information indexing and abstracting” in
Class 42.
The wording “providing online database search tools” in the identification of services is indefinite and must be clarified because the services must be identified with
more specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if
accurate: “Providing online database search tools, namely, provision of Internet search engines for searching online databases” in Class
42.
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’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).
Description of the
Mark
The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design
elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.
Therefore, applicant
must provide a more complete description of the applied-for mark. The following is suggested:
The
mark consists of the stylized wording “NANO”. The letter “N” consisting of a geometric design of intersecting circles appears to the left of “NANO”.
Assistance
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All
relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the
deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may
not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Cimmerian Coleman/
Trademark Examining Attorney
Law Office 102
571-272-9146
cimmerian.coleman@uspto.gov
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.