To: | Metro CAD, Inc. (wes@schwielaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88243490 - MMT - METRO.002T |
Sent: | 3/28/2019 1:52:09 PM |
Sent As: | ECOM123@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88243490
MARK: MMT
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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: Metro CAD, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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: 3/28/2019
The referenced application has been reviewed by the assigned Trademark Examining Attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The Examining Attorney has reviewed the Preliminary Amendment dated March 11, 2019 and notes that the amendment is acceptable.
SEARCH OF OFFICE’S DATABASE OF MARKS
SUMMARY OF ISSUES TO WHICH APPLICANT MUST RESPOND:
ADVISORY – PRIOR-FILED PENDING APPLICATION
In response to this Office action, Applicant may present arguments in support of registration by addressing the issue of the potential conflict between Applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits Applicant’s right to address this issue later if a refusal under Section 2(d) issues.
AMENDED IDENTIFICATION OF GOODS REQUIRED
Therefore, Applicant must delete “sales” from the identification and indicate with greater specificity the nature of the goods, e.g., microscopes in Class 9 or the services in International Class 35; e.g., “retail store services featuring _____,” “wholesale distributorships featuring _____,” and “on-line wholesale and retail store services featuring _____.”
Additional portions of the wording in the identification of goods are unacceptable because they contain over-broad and indefinite language and, thus, the goods may encompass more than one international class and the nature of these goods is unclear, as set forth below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The USPTO requires applicants to identify goods and services with specificity in order to provide public notice, to enable the USPTO to classify the goods and services properly, and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d). The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and services covered by the mark. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007). Applicant may refer to the suggested amended identification of goods and services below.
Overall Identification
Applicant may adopt the following form of identification, if accurate:
Class 9 – Microscopes; Measurement microscopes; Microscope accessories being {specify goods by common name, e.g., parts of microscopes, prisms, reflectors}; Scales; Balances; Laboratory furniture, including furniture for cleanrooms
Class 7 – Oilless scroll air compressors
Class 11 – Cleanrooms; Cleanroom walls and cleanroom fixtures being structural parts of cleanrooms; Fume hoods being {specify goods by common name, e.g., ventilation hoods for laboratories}
Class 35 – {Specify nature of services by common name, e.g., retail store services} featuring microscopes, measurement microscopes, microscope accessories, scales, balances, cleanrooms and controlled environment areas in the nature of cleanroom walls, cleanroom fixtures, cleanroom furniture, oilless scroll air compressors, and laboratory equipment being laboratory furniture and fume hoods
Note: If Applicant adds one or more classes to the application, then Applicant must comply with the Multiple Class Application Requirements set forth in this Office action.
Scope Advisory
ID Manual Online
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 is strongly encouraged to consult the ID Manual.
CLARIFICATION OF NUMBER OF CLASSES REQUIRED –
MULTIPLE CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and services based on use in commerce that are classified in at least four classes; however, Applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 35. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
For this application to proceed, Applicant must explicitly address each requirement in this Office action. 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.
ASSISTANCE
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.
/Samantha Sherman/
Examining Attorney
Law Office 123
(571) 270-0903
Samantha.Sherman@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.