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: 6/26/2019

 

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.

 

SUMMARY OF ISSUES:

• Identification and Classification of Services

 

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 AND CLASSIFICATION OF SERVICES

 

Applicant has applied for the following identification of goods and services:

 

[ACCEPTABLE, NO CHANGES NEEDED] Class 6: High purity metals and alloys of base metals containing gold indium and gallium in the form of rods, bars, ribbons, wires, ingots, pellets, spheres and thin, gold based pre-forms used for soldering and in the manufacture of electronics

 

Class 40: Technical consultation in the field of developing and supplying specialty alloys, liquid solder, solder paste, thin, gold based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically-conductive adhesives, electrically-conductive underfills, electrically- conductive polymers, indium-containing fabrications, and pure indium; Technical consulting services related to manufacture, selection and use of nano-materials, specialty alloys, solder past, thin, gold based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium

 

Applicant must clarify the wording “Technical consultation in the field of developing and supplying specialty alloys, liquid solder, solder paste, thin, gold based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically-conductive adhesives, electrically-conductive underfills, electrically- conductive polymers, indium-containing fabrications, and pure indium” in the identification of services in International Class 40 because it is indefinite and includes services outside of Class 40. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because “Technical consultation in the field of developing and supplying” does not clearly indicate the nature of the services.  Further, this wording could identify services in more than one international class.  For example, “Technical consultation in the field of developing” is in International Class 42, and “Technical consultation in the field of supplying” is in both International Classes 35 and 39 because “supplying” may refer to “supply chain management and logistics” in Class 35 or “transportation” in Class 39. Therefore applicant must amend the application in order to clarify the services.

 

Applicant must also clarify the wording “Technical consulting services related to manufacture, selection and use of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium” in the identification of services in International Class 40 because it is indefinite and includes services outside of Class 40. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because “Technical consulting services related to manufacture, selection and use” does not clearly indicate the nature of the services. Further, this wording could identify services in more than one international class.  For example, “Technical consulting services related to manufacture” is in Class 40, and “Technical consulting services related to selection” is in Class 35. Therefore applicant must amend the application in order to clarify the services.

 

Applicant may substitute the following wording, if accurate: 

 

[ACCEPTABLE, NO CHANGES NEEDED] Class 6: High purity metals and alloys of base metals containing gold indium and gallium in the form of rods, bars, ribbons, wires, ingots, pellets, spheres and thin, gold based pre-forms used for soldering and in the manufacture of electronics

 

Class 35: Technical consultation in the field of supply chain management and logistics for specialty alloys, liquid solder, solder paste, thin, gold based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically-conductive adhesives, electrically-conductive underfills, electrically- conductive polymers, indium-containing fabrications, and pure indium; Technical consulting services related to selection of nano-materials, specialty alloys, solder past, thin, gold based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium

 

Class 39: Technical consultation in the field of TRANSPORTATION OF specialty alloys, liquid solder, solder paste, thin, gold based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically-conductive adhesives, electrically-conductive underfills, electrically- conductive polymers, indium-containing fabrications, and pure indium

 

Class 40: Technical consulting services related to manufacture of nano-materials, specialty alloys, solder past, thin, gold based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium

 

Class 42: Technical consultation in the field of developing specialty alloys, liquid solder, solder paste, thin, gold based solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically-conductive adhesives, electrically-conductive underfills, electrically- conductive polymers, indium-containing fabrications, and pure indium

 

Applicant should note that the above identification for Class 6 goods are acceptable as written.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

ADVISORY – MULTIPLE CLASSES

 

The application identifies services in more than one international class; 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least 5 classes; however, applicant submitted a fee sufficient for only 2 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.

 

RESPONSE TO OFFICE ACTION

 

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.

 

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. 

 

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.  

 

Solite, Joshua

/Joshua A. Solite/

Law Clerk

Law Office 123

U.S. Patent & Trademark Office

(571) 272-3199

joshua.solite@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 6/26/2019 FOR U.S. APPLICATION SERIAL NO. 88388197

 

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 6/26/2019 (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.