To: | Dinamo GmbH (trademarks@patentusa.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88096970 - DINAMO TYPEFACES - T-11008 |
Sent: | 12/21/2018 12:47:24 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88096970
MARK: DINAMO TYPEFACES
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Dinamo GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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EXAMINER’S AMENDMENT/PRIORITY 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: 12/21/2018
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On December 14, 2018, the trademark examining attorney and Sarah Stemer discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
IDENTIFICATION OF GOODS AND SERVICES
Applicant may adopt the following wording, if accurate:
Class 9
Information technology products, namely, __________ [applicant must specify the goods intended by the wording “information technology” using common commercial terms, e.g., computers]; software for end users to design fonts and software for development of fonts; parts and accessories for all aforementioned goods, namely, __________ [applicant must specify the type of parts and accessories using common commercial terms. This wording is overly broad and does not adequately specify the type of goods intended], in International Class 9.
Class 16
Printing house supplies, namely, __________ [applicant must specify the goods intended by the wording “script patterns, script templates” using common commercial terms], paper, __________ fonts [applicant must specify the type of fonts using common commercial terms, e.g., printing fonts, typeface fonts recorded on magnetic media], __________ [applicant must specify the type of goods intended by the wording “typographical characters” using common commercial terms. This wording is ambiguous and does not identify any recognized goods], paper and cardboard; paper models for art, namely, architectural models; paper and paper supplies for use in painting, drawing and paper sculpture, namely, __________ [applicant must specify the type of “supplies” using common commercial terms, e.g., pencils, paintbrushes]; paper and writing materials for teachers and instructors, namely, __________ [applicant must specify the type of “supplies” using common commercial terms, e.g., stationery]; parts and accessories for all aforementioned goods , namely, __________ [applicant must specify the type of parts and accessories using common commercial terms. This wording is overly broad and does not adequately specify the type of goods intended], in International Class 16.
Class 40
__________ [applicant must clarify the services intended by the wording “Typesetting services, namely, development and manufacturing of supplies for print shops.” Please note that “typesetting” is a distinct and separate service than development or manufacturing of goods. Applicant can adopt the following language: “manufacturing of typesetting supplies for print shops. “Product development of typesetting supplies for print shops” are services found in Class 42, not Class 40]; __________ [applicant must specify the services intended by the wording “printed works” using common commercial terms. This wording is ambiguous and must be substituted]; development of film in the field of photography and cinematography; duplication of audio and video recordings; distribution, renting and leasing of __________ [applicant must specify the type of goods intended for the term “supplies” in order to properly classify the rental and leasing services, e.g., printing machines and apparatus] in the field of printing, cinematography and photography, [applicant must delete duplicate entries of identical services. In this case, “and duplication of audio and video recordings” is already listed in the application]; consultation services in the field of printing, cinematography and photography, [applicant must delete duplicate entries of identical services. In this case, “and duplication of audio and video recordings” is already listed in the application], in International Class 40.
Class 41
Educational services, namely, holding seminars and workshops in the field of printing and graphic design; consultation services, namely, holding seminars and workshops in the field of printing and graphic design, in International Class 41.
Class 42
Design and development of printing fonts for use in printing and on computer interfaces; IT-services, namely, software programming and implementation of software for authentication and quality control in print shops; development of computer hardware and software for authentication and quality control in print shops; graphic design services; _________ [applicant must specify the services and the subject matter intended by the wording “distribution, renting and leasing of objects in connection with the implementation of the aforementioned services, as far as contained in this class” for services in Class 42]; Product development of typesetting supplies for print shops, in International Class 42.
TMEP section 1402.011.
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). Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
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.
SECTION 44(d) SOLE BASIS
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
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(s) and/or requirement(s) 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.
DISCLAIMER
The following disclaimer statement is added to the record:
No claim is made to the exclusive right to use “TYPEFACES” apart from the mark as shown.
See 15 U.S.C. §1056(a); TMEP §§1213, 1213.08(a)(i).
APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. TMEP §707. Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.
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.
Meier, Sharon
/Sharon A. Meier/
Trademark Attorney, LO 112
571-272-9195 - phone
571-273-9112 - fax
sharon.meier1@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.