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: 4/29/2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) 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).

 

SUMMARY OF ISSUES:

• Identification of Goods and Services—Amendment Required
• Translation Required
• Mark Description and Color Claim—Amendment Required

 

IDENTIFICATION OF GOODS AND SERVICES—AMENDMENT REQUIRED

 

The identification of goods and services is indefinite and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Class 009

 

The wording "visual inspection apparatus" is unacceptable as indefinite because applicant must further specify the nature of the goods by clarifying its use or purpose, or by identifying the goods by their common commercial name(s).  See id.  See suggested amendment below.

 

The wording "operating software for use in inspection apparatus and microscopes; application software to process and report inspection results from inspection apparatus and microscopes" is unacceptable as indefinite because applicant must specify whether the software is downloadable or recorded, or whether the software comprises an online non-downloadable software, and, if appropriate reclassify the software.  See id.  See suggested amendment below.

 

Class 037

 

The wording "Installation, repair and maintenance of computers and computer peripherals for visual inspection for quality control" and "repair and maintenance of computer and telecommunications equipment for visual inspection for quality control" is unacceptable as indefinite because applicant must clarify that that "for visual inspection for quality control" is characteristic of the computers and/or computer peripherals or equipment and not a characteristic of the applied-for services. See id.  See suggested amendment below.

 

Class 042

 

The wording "Conducting of quality control tests" is unacceptable as indefinite because applicant must clarify that the services are provided for others. See id.  See suggested amendment below.

 

The wording "consultancy relating to the creation, design and maintenance of computer systems for visual inspection for quality control" is unacceptable as indefinite because applicant must clarify that that "for visual inspection for quality control" is characteristic of the computer systems.  Additionally, applicant must reclassify the consultancy services because the wording "computer systems" presumably includes computer hardware and maintenance of computer hardware is classified in Class 037.  See id.  See suggested amendment below.

 

The wording "verification of computer system operation for visual inspection for quality control" is unacceptable as indefinite because the wording "verification" is unclear in the context of the applied-for services.  Applicant must further clarify that the computer systems being monitored are used for quality control purposes amend the wording and also specify the purpose of the services.  See id.  See suggested amendment below.

 

SUGGESTED AMENDMENTS

 

Applicant may adopt the following identification, if accurate:

 

Class 009

 

Optical inspection apparatus; visual inspection apparatus, namely,______________(further clarify goods, e.g., electro-optical instruments for use in inspection and measurement of industrial components); microscopes; {specify downloadable or recorded} operating software for use in inspection apparatus and microscopes; {specify downloadable or recorded} application software to process and report inspection results from inspection apparatus and microscopes

 

Class 037

 

Installation, repair and maintenance of computers and computer peripherals used for visual inspection for quality control; repair and maintenance of computer and telecommunications equipment used for visual inspection for quality control; consultancy relating to the maintenance of computer hardware systems used for visual inspection for quality control

 

Class 042

 

Conducting of quality control tests for others; consultancy relating to the creation and design of computer systems used for visual inspection for quality control; consultancy relating to the maintenance of computer software systems used for visual inspection for quality control; monitoring of computer system operation used for visual inspection for quality control, for quality control purposes; online non-downloadable operating software for use in inspection apparatus and microscopes; online non-downloadable application software to process and report inspection results from inspection apparatus and microscopes

 

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).

 

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 should note the below requirement.

 

ENGLISH TRANSLATION REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of all wording in the mark that appears to be foreign.  37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.  The following English translation is suggested:  The English translation of “MENOU” is “AGATE”.  TMEP §809.03.  See attached translation evidence.

 

MARK DESCRIPTION AND COLOR CLAIM—AMENDMENT REQUIRED

 

Applicant must amend the color claim and description to identify all the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii).  The following colors have been omitted from the color claim:  white, light blue, and navy blue.  In addition, the following colors have been omitted from the description:  white, light blue, and navy blue.

 

A complete color claim must reference all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

If applicant is claiming white as a feature of the mark, the following color claim and description are suggested, if accurate:

 

Color claim:  “The colors blue, light blue, white, and navy blue are claimed as a feature of the mark.”

 

Description:  “The mark consists of the stylized navy blue wording "MENOU" to the left of a polygon-shaped target symbol consisting of irregular-shaped rings in light blue, blue, and navy blue, with white appearing in between each ring and in the middle of the symbol, all of which is set to the left of a small blue hexagon.”

 

If applicant is not claiming white as a feature of the mark, the color claim and description are suggested, if accurate:

 

Color claim:  “The colors blue, light blue and navy blue are claimed as a feature of the mark.”

 

Description:  “The mark consists of the stylized navy blue wording "MENOU" to the left of a polygon-shaped target symbol consisting of irregular-shaped rings in light blue, blue, and navy blue, all of which is set to the left of a small blue hexagon. The white appearing in the mark represents transparent areas and/or background and is not claimed as a feature of the mark”

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  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.

 

 

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.  

 

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@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 4/29/2019 FOR U.S. APPLICATION SERIAL NO. 88363044

 

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 4/29/2019 (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.