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: 3/24/2019

 

 

 

 

 

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.  

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.   Nevertheless, the applicant must respond to the following issue(s).

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

 

The identification of goods and services is indefinite and must be clarified because all goods and/or services are not identified with the requisite clarity and specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant should identify all good and services with specificity by common commercial name.  Additionally, while “passive components” is a term of art, the wording “passive electronic components” is suggested so that the nature of the goods/services is clearer. 

 

Additionally, the identification names services which are misclassified and/or properly classified in a class not presently included in the application.  Downloadable publications are properly classified as goods in class 9.  Websites featuring non-downloadable videos and/or non-downloadable publications are properly classified in class 41.  Applicant may therefore adopt any or all of the following identification of goods/services, if accurate:

International Class 9; Electric components, namely, resistors and resistor networks, low value electric resistors, electric shunt resistors and electric current sensory resistors all used in electrical circuits, potentiometers, capacitors, plasma displays, surge arrestors, antennas, chokes, connectors, lighting and transient suppressors, crystal frequency timers, filters, transformers, electrical indicators, inductor coils, electrical and electronic networks involving both active and passive circuit elements for use in electronic equipment, electrical cables, printed circuit boards, amplifiers and direct and alternating electric power supply units for primary use in testing of electronic equipment and delay lines; oscillators; electronic light emitting diode and liquid crystal displays; electronic plasma display panels; thermistors; electrical strain gage transducers; stress analysis systems primarily comprised of transducers that utilize ultrasonic oscillations to test for stress and fatigue in metal and metal structures and transducers that utilize ultrasonic oscillations to treat and reduce stress and fatigue of metals and metal structures; semiconductor components, namely, semiconductor chips, transistors, diodes, voltage surge suppressors and rectifiers; diode arrays; thyristors; integrated circuits; low profile DC/DC converters; computer software for use in weighing systems for the purpose of monitoring weight in industrial processes; downloadable data books and technical reports in the field of semiconductor devices and passive electronic components

International Class 35; Employment recruiting services; providing a website where users can obtain information about employment opportunities; online wholesale store services featuring semiconductor devices and passive electronic components;  wholesale services by direct solicitation through sales agents and distributors directed to end-users featuring semi-conductor devices and passive electronic components;

International Class 40; Custom manufacture and assembly of semiconductor devices and passive electronic components;

International Class 41; Providing a website featuring on-line non-downloadable videos in the field of semiconductor devices and passive electronic components; Providing a website featuring non-downloadable publications in the nature of data books and technical reports in the field of semiconductor devices and passive electronic components;

International Class 42; Research, design, and engineering for semiconductor devices and passive electronic components; custom design, engineering and testing semiconductors and passive electronic components; design, development, and testing services for others in the field of semiconductor devices and passive electronic components; technical consulting services in the field of semiconductor devices and passive electronic components; providing a website featuring technical information in the field of semiconductor devices and passive electronic components; providing a website featuring on-line non-downloadable software to assist and instruct design engineers in the design and usage of semiconductor devices and passive electronic components in products; providing a website featuring on-line non-downloadable software applications {indicate function of the software} in the field of semiconductor devices and passive components;

The application references goods and/or services based on an intent to use in commerce in classes beyond those presently provided for; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b).

 

(1)       List the goods and/or 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 class(es).  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.

 

To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual is available for assistance with identifying and classifying goods and services.  See TMEP §1402.04.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Please feel free to contact the undersigned attorney if you wish to discuss this application.

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(571) 272-9486

john.yard@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/24/2019 FOR U.S. APPLICATION SERIAL NO. 88250296

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/24/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.