To: | The Indium Corporation of America (jmuldoon@harrisbeach.com) |
Subject: | U.S. Trademark Application Serial No. 88388197 - THINFORMS - 310059 |
Sent: | November 08, 2019 12:29:22 PM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88388197
Mark: THINFORMS
|
|
Correspondence Address: |
|
Applicant: The Indium Corporation of America
|
|
Reference/Docket No. 310059
Correspondence Email Address: |
|
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 08, 2019
The Office has reassigned this application to the undersigned trademark examining attorney. This Office action is in response to applicant’s communication filed on October 15, 2019.
In a previous Office action dated June 26, 2019, applicant was required to satisfy the Identification and Classification of Services requirements. In the Response dated October 15, 2019, applicant amended the classification and identification of services. Based on applicant’s response, the trademark examining attorney notes that the classification requirements have been satisfied. See TMEP §§713.02, 714.04. Further, the trademark examining attorney maintains and now makes FINAL the specified requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Amendments to Identification of Services Required
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES THEREIN
The requirement for amendments to the identifications of services is maintained and now made FINAL for the reasons set forth below. 37 C.F.R. §2.63(b); see 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The original identification in the application is: “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 was previously required to clarify and re-classify the services.
In the Response dated October 15, 2019, applicant amended the identification. Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07. Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the application remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
The proposed amendment identifies the following services: “Provision of technical information and advice to consumers regarding the selection of products to be purchased, said products being 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 International Class 35 and “Provision of technical information and advice to consumers regarding manufacturing processing parameters for 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 International Class 40.
Portions of the proposed amendment is beyond the scope of the original identification for the following reasons.
First, the beginning and limiting language of “Technical consulting services” in the original identification should be reincorporated into the identifications. See the bold text below.
Second, the original identification specified, “gold based solder preforms”. The amendments refer to “nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire […]”. Here, the amended identifications impermissibly broaden the scope of the consulting from only gold based solder preforms to all types of solder preforms. Applicant may amend the identification to clarify or to limit the services, but not to broaden nor to 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. As such, the wording “gold based” limiting the solder preforms, from the original identification, must remain in the identification.
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.
International Class 6 is acceptable and does not require amendments.
Applicant may adopt the following identification, if accurate:
International Class 35: Technical consulting services in the nature of provision of technical information and advice to consumers regarding the selection of products to be purchased, said products being nano-materials, specialty alloys, solder paste, 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
International Class 40: Technical consulting services in the nature of provision of technical information and advice to consumers regarding manufacturing process parameters for nano-materials, specialty alloys, solder paste, 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
FINAL RESPONSE GUIDELINES
Partial Requirements
If applicant does not respond to this Office action within the six-month period for response, the services in International Classes 35 and 40 will be deleted from the application. The application will then proceed with the goods in International Class 6 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Rebecca T. Caysido/
Trademark Examining Attorney
Law Office 123
571-270-0926
Rebecca.Caysido@uspto.gov