To: | Dinamo GmbH (trademarks@patentusa.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88290745 - DIATYPE - T-11074 |
Sent: | 4/18/2019 6:14:06 PM |
Sent As: | ECOM120@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88290745
MARK: DIATYPE
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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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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: 4/18/2019
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.
Search of Office’s Database of Marks
The trademark examining attorney has searched the Office’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).
Identification of Goods and Services
Likewise, applicant has placed “consultation services, namely, holding seminars and workshops in the field of printing and graphic design,” in International Class 41. In the first place, it must be clarified as to how these are consultation services. Secondly, presuming these are consultation services in printing and graphic design, rather than in education, this identification belongs in International Class 42, as is shown with the suggestion below.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Applicant may adopt the following identification, if accurate:
Class 9: recorded data, namely, {applicant must specify the type of and function or field of good, e.g., typeface recorded fonts on magnetic media}; information technology and audiovisual apparatuses, namely, {applicant must specify goods, e.g., computers and audiovisual receivers}; parts and accessories for all aforementioned goods, as far as contained in this class; software for {applicant must specify function of software, e.g., word processing}
Class 16: printing fonts in the nature of script patterns, marking templates in the nature of
script templates, published papers in the field of {applicant must specify subject matter, e.g., graphic design}; printing house products,
namely, printing fonts; typographical characters in the nature of dry transfer characters; paper and cardboard; works of art from paper and cardboard,
namely, {applicant must specify type of paper and cardboard, e.g., custom manufactured paper and cardboard} and die-cut shapes from paper or
cardboard as well as architectural models; materials and means for decoration and artists' supply, namely, {applicant must specify types of goods,
e.g., paintbrushes, stencils for transfer of graphic design onto any surface}; paper and writing materials as well as means for teaching and instructing, namely, printed
teaching materials in the field of {applicant must provide subject matter, e.g., writing and math}; printing house products, namely, {applicant must specify products, e.g.,
advertising signs of cardboard}; parts and accessories for all aforementioned goods, as far as contained in this class
Class 35: distribution in the nature of wholesale retail store services for photographic printing machines; distribution in the nature of wholesale retail store services for computers and software
Class 39: distribution services, namely, delivery of photographic printing machines; distribution services, namely, delivery of computers and software
Class 40: services of a typesetter, client-specific fabrication and manufacturing of paper and paper product
services; printing of printed works and developing photographic works as well as cinematographic development in the
nature of processing the film; copying of audio- and video recordings; distribution, renting and leasing of objects in connection with the implementation of the aforementioned services,
namely, {applicant must specify objects, e.g., machines and apparatus for film development and photograph printing} as far as contained in this class; consultation and
information with reference to the aforementioned services, as far as contained in this class
Class 41: Educational services, namely, holding seminars and workshops in the field of printing and graphic design; publishing of available characters and letter images for use by others
Class 42: design of fonts; IT-services, namely, development, programming and implementation of
software, development of computer hardware, services of a graphic designer, holding seminars and workshops, scientific and technological services, namely,
{specify type of service, e.g., research, analyisis} in the field of {applicant must specify subject matter, e.g., computer hardware}; examination and authentication
in the nature of quality control for others; graphic design services; distribution, renting and leasing of objects in connection
with the implementation of the aforementioned services, namely, {applicant must specify objects, e.g., computers, software} as far as contained in this class; consultation and
information with reference to the aforementioned services, as far as contained in this class; release of software in the nature of {applicant must clarify what is meant by “release”
e.g., software implementation}; software development in the framework of publishing of software; software design; software compilation, namely,
non-downloadable compiler software; software development; software consultation; services of a graphic designer; publishing of a website with characters and/or letter
images for consumer use, and uploading it to an internet server; consultation services in the field of printing and graphic design, namely, holding training
seminars and workshops in these fields.
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
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least seven classes; however, applicant submitted fees sufficient for only five 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Foreign Certificate of Registration 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).
Responding to this 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.
/Leslee Friedman/
Leslee Friedman
Examining Attorney
Law Office 120
leslee.friedman@uspto.gov
571-272-5278
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.