To: | Fuel 3D Technologies Limited (bwptotm@bannerwitcoff.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88205966 - FITSYOU - 008398.00026 |
Sent: | 2/26/2019 2:13:44 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88205966
MARK: FITSYOU
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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: Fuel 3D Technologies Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY ACTION
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: 2/26/2019
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.
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 February 26, 2019, the trademark examining attorney and Anna L. King 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 UNACCEPTABLE - REQUIREMENT
Applicant has identified the following:
“Scanners; computer software platforms; data processing equipment; computer software; computer hardware; data processing apparatus and equipment; image processors; image scanning apparatus; image processing apparatus; image transmitting apparatus; downloadable image files; image reproduction machine; image capturing and developing devices; apparatus for reproduction, transmission and recording of images; databases; databanks” in Class 009;
“Scanners for medical use; scanners for medical diagnosis; diagnostic imaging apparatus for medical use” in Class 010;
“Advertising services; marketing services; advertising analysis and consultation; updating and maintenance of data in computer databases; provision of commercial information from online databases” in Class 035;
“Design and development of computer software platforms, databases, scanners, data processing equipment, computer software, computer hardware, data processing apparatus and equipment, image processors, image scanning apparatus, image processing apparatus, image transmitting apparatus, downloadable image files, image reproduction machine, image capturing and developing devices, apparatus for reproduction, transmission and recording of images; industrial and scientific research relating to scanners, data processing equipment, computer software, computer hardware, data processing apparatus and equipment, image processors, image scanning apparatus, image processing apparatus, image transmitting apparatus, downloadable image files, image reproduction machine, image capturing and developing devices, apparatus for reproduction, transmission and recording of images; maintaining databases; electronic storage services for archiving databases, images and other electronic data” in Class 042.
Unfortunately, the italicized wording above is insufficiently definite for registration purposes. See TMEP §1402.01.
Class 009
The function, and field if field specific, of the software and software platforms must be specified and applicant must specify if the software is recorded (Class 009 goods), downloadable (Class 009 goods), or online (Class 042 or Class 041 services depending on the type of software), e.g., downloadable computer software platforms and downloadable computer software both for data processing.
The common commercial name of the processors, apparatus, machines, and devices must be identified by their common commercial names, e.g., image processors and image processing apparatus being raster image processors, image reproduction machines being photo-copying machines, image capturing and developing devices being digital cameras.
The subject matter of the downloadable image files must be specified.
The format of the databases and databanks and their subject matter must be specified, e.g., downloadable databases in the field of {indicate subject matter, e.g., sports statistics, annual rainfall statistics, etc.}, databanks in the nature of downloadable databases in the field of {indicate subject matter, e.g., sports statistics, annual rainfall statistics, etc.}.
Class 010
The particular type of scanners and diagnostic imaging apparatus must be specified, e.g., X-ray CT scanners for medical use, Electromagnetic medical diagnostic imaging apparatus.
Class 042
The nature of the databases must be specified, e.g., Maintenance of on-line databases for others.
Applicant may adopt the following, if accurate:
“Scanners; downloadable computer software platforms and downloadable computer software both for data processing; data processing equipment; computer hardware; data processing apparatus and equipment; image processors being image scanning apparatus; image processing apparatus being computers; image transmitting apparatus; downloadable image files featuring photographs; image reproduction machine being photo-copying machines; image capturing and developing devices being cameras; apparatus for reproduction, transmission and recording of images; downloadable databases in the field of {indicate subject matter, e.g., sports statistics, annual rainfall statistics, etc.}, databanks in the nature of downloadable databases in the field of {indicate subject matter, e.g., sports statistics, annual rainfall statistics, etc.}” in Class 009;
“X-ray CT scanners for medical use, Electromagnetic medical diagnostic imaging apparatus” in Class 010;
“Advertising services; marketing services; advertising analysis and consultation; updating and maintenance of data in computer databases; provision of commercial information from online databases” in Class 035;
“Design and development of computer software platforms, databases, scanners, data processing equipment, computer software, computer hardware, data processing apparatus and equipment, image processors, image scanning apparatus, image processing apparatus, image transmitting apparatus, downloadable image files, image reproduction machine, image capturing and developing devices, apparatus for reproduction, transmission and recording of images; industrial and scientific research relating to scanners, data processing equipment, computer software, computer hardware, data processing apparatus and equipment, image processors, image scanning apparatus, image processing apparatus, image transmitting apparatus, downloadable image files, image reproduction machine, image capturing and developing devices, apparatus for reproduction, transmission and recording of images; Maintenance of on-line databases for others; electronic storage services for archiving databases, images and other electronic data” in Class 042.
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).
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.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
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).
/SeanCrowley/
Examining Attorney
Law Office 116
U.S. Patent and Trademark Office
571.272.8851
sean.crowley@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.