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:  October 31, 2019

 

This Office action is in response to applicant’s communication filed on September 10, 2019. This Office action is supplemental to and supersedes the previous Office action issued on March 18, 2019 in connection with this application.

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

In the previous Office action dated March 18, 2019, the previously-assigned trademark examining attorney required applicant to amend the identification and classification of goods and services and to provide additional information. Based on applicant’s response, the trademark examining attorney notes that the applicant has satisfied the information requirement. See TMEP §713.02.

 

However, the previously-assigned trademark examining attorney inadvertently omitted portions of the identification requirement relevant to the mark in the subject application. See TMEP §§706, 711.02. The requirement that applicant provide the foreign registration in order to perfect a Section 44(e) filing basis was also inadvertently omitted. The trademark examining attorney apologizes for any inconvenience caused by the delay in raising these issues. Additionally, portions of the amended identification remain indefinite, overly broad, and/or misclassified.

 

Summary of Issues:

 

• Amend Identification of Goods and Services
• Multiple-Class Application Requirements
• Foreign Registration Required

 

Applicant must respond to all issues raised in this Office action, including those initially raised in the previous March 18, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).

 

Identification of Goods and Services

 

The identification of goods and services currently reads:

 

Class 1: Unprocessed polyimide resins, unprocessed polyamide resins, unprocessed polyester resins, unprocessed polyethylene resins, unprocessed liquid crystal polymer resins, ethyl urethane, unprocessed artificial resins, unprocessed plastics, unprocessed plastics in all forms, unprocessed synthetic resins, unprocessed epoxy resins, unprocessed plastics for industrial purposes

 

Class 9: Flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable optical films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable liquid crystal protective films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of LED display panels of electronic devices; flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of OLED display panels of electronic devices; transplant electrode films for flexible displays; solar batteries; fitted glass covers for solar cells sold as a component of solar cells; flexible, rollable and foldable conductive films made of plastics or polymers for use as a component in the manufacture of OLED display panels of electronic devices; solar cell panels; solar cell plates; scratch protection fitted plastic films providing protection for the display panels of electronic devices

 

Class 17: Semi-processed glass fiber reinforced plastics; semi-processed plastic substances; flexible, rollable and foldable conductive plastic films for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable conductive polyethylene films for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable conductive rigid polyester films for use as a component in the manufacture of display panels of electronic devices; plastics in the form of sheets/films/blocks/rods/tubes for use in manufacturing; semi-processed polyimide resins; semi-processed polyamide resins

 

Class 35: Wholesale store service, retail store services, sales agency services, sales arrangement services featuring unprocessed polyimide resins, unprocessed polyamide resins, unprocessed polyester resins, unprocessed polyethylene resins, unprocessed liquid crystal polymer resins, ethyl urethane, unprocessed artificial resins, unprocessed plastics, unprocessed plastics in all forms, unprocessed synthetic resins, unprocessed epoxy resins, unprocessed plastics for industrial purposes; flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable optical films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable liquid crystal protective films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of LED display panels of electronic devices; flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of OLED display panels of electronic devices; transplant electrode films for flexible displays; solar batteries; fitted glass covers for solar cells sold as a component of solar cells; flexible, rollable and foldable conductive films made of plastics or polymers for use as a component in the manufacture of OLED display panels of electronic devices; solar cell panels; solar cell plates; scratch protection fitted plastic films providing protection for the display panels of electronic devices; semi-processed glass fiber reinforced plastics; semi- processed plastic substances; flexible, rollable and foldable conductive plastic films for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable conductive polyethylene films for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable conductive rigid polyester films for use as a component in the manufacture of display panels of electronic devices; plastics in the form of sheets/films/blocks/rods/tubes for use in manufacturing; semi-processed polyimide resins; semi-processed polyamide resins

 

The applicant has classified the following goods in class 9, but the proper classification is in class 17, with other plastic films for further manufacture: “Flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices;” “flexible, rollable and foldable optical films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices;” “flexible, rollable and foldable liquid crystal protective films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices;” “flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of LED display panels of electronic devices;” “flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of OLED display panels of electronic devices;” and “flexible, rollable and foldable conductive films made of plastics or polymers for use as a component in the manufacture of OLED display panels of electronic devices.” See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant must clarify the wording “transplant electrode films for flexible displays” and “scratch protection fitted plastic films providing protection for the display panels of electronic devices” in the identification of goods in class 9 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not specifically identify the particular goods. Further, this wording could identify goods in more than one international class. For example, “scratch protection fitted plastic films providing protection for the display panels of electronic devices, namely, mobile phones” would be in class 9 and “scratch protection fitted plastic films providing protection for the display panels of electronic devices, namely, video game consoles” would be in class 28. Additionally, the wording “transplant electrode films” appears to be a misspelling of “transparent electrode films” and should be corrected.

 

Applicant must correct the punctuation in the identification of “plastics in the form of sheets/films/blocks/rods/tubes for use in manufacturing” in class 17 and in the entire class 35 identification to clarify the individual items in the list of goods and services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services. TMEP §1402.01(a). An applicant should not use colons, periods, exclamation points, and question marks in an identification. Id. In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets. Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.

 

The use of semicolons in the class 35 identification, therefore, makes it unclear whether the following goods are intended to be different identifications or part of the list of featured goods for applicant’s retail services. In addition to clarifying this punctuation, the examining attorney recommends that applicant simplify the list of featured goods into general categories.

 

Finally, the wording “sales agency services” and “sales arrangement services” in the identification of services in class 35 is indefinite and must be clarified because it is unclear whether this refers to a type of retail store service or to a type of advertising service. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may adopt the following identification, if accurate (changes in bold, reclassified wording in italics):

 

Class 1: Unprocessed polyimide resins, unprocessed polyamide resins, unprocessed polyester resins, unprocessed polyethylene resins, unprocessed liquid crystal polymer resins, ethyl urethane, unprocessed artificial resins, unprocessed plastics, unprocessed plastics in all forms, unprocessed synthetic resins, unprocessed epoxy resins, unprocessed plastics for industrial purposes

 

Class 9: Solar batteries; fitted glass covers for solar cells sold as a component of solar cells; solar cell panels; solar cell plates; scratch protection fitted plastic films providing protection for the display panels of electronic devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems and personal digital assistants

 

Class 17: Semi-processed glass fiber reinforced plastics; semi-processed plastic substances; flexible, rollable and foldable conductive plastic films for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable conductive polyethylene films for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable conductive rigid polyester films for use as a component in the manufacture of display panels of electronic devices; plastics in the form of sheets, films, blocks, rods, and tubes for use in manufacturing; semi-processed polyimide resins; semi-processed polyamide resins; flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable optical films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable liquid crystal protective films made of plastics or polymers for use as a component in the manufacture of display panels of electronic devices; flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of LED display panels of electronic devices; flexible, rollable and foldable reinforced films made of plastics or polymers for use as a component in the manufacture of OLED display panels of electronic devices; transparent electrode films made of plastics or polymers for use as a component in the manufacture of flexible displays; flexible, rollable and foldable conductive films made of plastics or polymers for use as a component in the manufacture of OLED display panels of electronic devices

 

Class 28: Scratch protection fitted plastic films providing protection for the display panels of electronic devices, namely, video game consoles, hand-held video game units

 

Class 35: Wholesale store service, retail store services, sales agency services in the nature of retail services through direct solicitation by salespersons, and sales arrangement services in the nature of arranging auction sales, all featuring unprocessed and semi-processed plastics, polymers, and resins, solar panel components, and components for manufacture of electronic display panels; sales agency services in the nature of promoting the goods of others in the fields of unprocessed and semi-processed plastics, polymers, and resins, solar panel components, and components for manufacture of electronic display panels

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See 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.

 

Multiple-Class Application Requirements

 

The application potentially includes goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application potentially includes goods and services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 4 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

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).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Fees

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

Foreign Registration Required

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).

 

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, an 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, 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 has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 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), 806.04(b).

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

Advisory – Responding to a Non-Final Office Action

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. 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.

 

Click to file a response to this nonfinal Office action 

 

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.  

 

 

 

 

 

/Sara Anne Helmers/

Sara Helmers

Trademark Examining Attorney

Law Office 126

571-270-3639

Sara.Helmers@uspto.gov

 

 

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 October 31, 2019 for

U.S. Trademark Application Serial No. 88237312

 

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. 

 

 

/Sara Anne Helmers/

Sara Helmers

Trademark Examining Attorney

Law Office 126

571-270-3639

Sara.Helmers@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 October 31, 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.”