Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  February 06, 2020

 

This Office action is in response to applicant’s communication filed on December 16, 2019.

 

In a previous Office action(s) dated June 25, 2019, the applicant was required to satisfy the following requirement(s):

• Requirement for Acceptable Identification/Classification of Goods and Services
• Requirement for Disclaimer
• Requirement for Copy of Foreign Registration

 

Based on applicant’s response, the trademark examining attorney notes that the Requirement for Disclaimer and Requirement for Copy of Foreign Registration have been satisfied. 

 

Further, the trademark examining attorney maintains the following requirements and now makes the NEW refusal(s) and/or requirement(s) in the summary of issues below.

 

SUMMARY OF ISSUES that applicant must address:

• Refusal Under Section 2(e)(1) – Merely Descriptive
• Requirement for Acceptable Identification/Classification of Goods and Services

 

REFUSAL UNDER SECTION 2(e)(1) – MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a function, feature and/or characteristic of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if “it immediately conveys information concerning a feature, quality, or characteristic of [an applicant’s] goods or services.”  In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b); see DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978)). 

 

Here, applicant has applied to register “3D DOSRAM” for “solar batteries; batteries; electrical storage batteries; lithium ion secondary batteries; semiconductor elements, namely, semiconductor chips, semiconductor devices, and semiconductor wafers; electronic circuits; liquid crystal displays; liquid crystal display panels; displays using organic electroluminescence elements, namely, organic electroluminescence displays (ELD); memory chips, namely, computer chips; memory modules; semiconductor memories; computer memory devices; blank flash memory cards; electronic circuits in the nature of semiconductor integrated circuits including CPUs; semiconductor chips for image processing; programmable semiconductor chips; semiconductor power elements for image sensors; digital cameras and accessories or parts thereof, namely, digital photo viewer; digital video cameras and accessories thereof, namely, digital photo viewer; digital cameras with CMOS sensors; digital cameras with charge-coupled devices (CCD) sensors; touch panels; measuring machines, apparatus, and accessories or parts thereof, namely, calculators; on-board liquid crystal display devices; on-board image display devices; on-board organic electroluminescence display devices; mobile phones; smartphones; televisions; sound reproduction apparatus; computers and computer peripherals; notebook computers; laptop computers; tablet computers; personal computers; microcomputers; computer monitors; touch panels for computers; electronic tags for goods; blank integrated circuit cards; electronic card readers for integrated circuit cards; magnetic coded card readers; electronic card writers for integrated circuit cards; magnetic coded card writers; radio transmitters and receivers; digital data memory devices, namely, memory boards; video telephones; telecommunication machines and apparatus for video telephone systems, namely, microphones; electronic calculators; electronic desk calculators; flat panel display screens; headmounted video displays; random access memory (RAM) cards; electronic memory card readers and memory card writers; data memory devices, namely, memory cards; semiconductor memory devices; storage mediums recorded with computer programs, namely, processors; computer data storage mediums, namely, registers; electronic circuits not including those recorded with computer programs; computer graphic boards; computer keyboards; motherboards; electronic circuit boards; computer hardware; blank computer hard disks; solid state drives; liquid crystal displays with touch sensor function; organic electroluminescence displays with touch sensor function; GPS navigation devices; video display devices for car navigation systems; personal digital assistants in the shape of a watch; mobile computers in the shape of a watch; smartphones in the shape of a watch; portable computer terminals for displaying electronic publications; electronic control systems for automobiles; and measuring machines and apparatus for detecting information relating to automobiles, namely, meter panels” in International Class 9, and “research and development in the field of chemistry; testing of chemicals; scientific testing, research, and development in the field of semiconductors; product testing, research, and development of machines and apparatus; product testing, research, and development of metal materials; testing, research, and development in the fields of material science and electrical engineering; scientific testing, research, and development relating to transmission of electricity; product testing, research, and development of telecommunication machines and apparatus; product testing, research, and development of electronic circuits, semiconductor elements, integrated circuits, and large-scale integrated circuits; product testing, research, and development of semiconductors; product testing, research, and development of metal oxides, semiconductors, electronic appliances, and telecommunication machines and apparatus; providing technical research information relating to manufacture and processing of metal oxides, semiconductors, electronic appliances, and telecommunication machines and apparatus; scientific testing, investigation, and research in the field of semiconductors; scientific and technological services, namely, scientific analysis in the field of semiconductors; providing information on the subject of scientific testing, investigation, and research in the field of semiconductors; development of testing specifications and procedures for computer memory devices and semiconductor memory devices; providing information on the subject of technical research in the field of semiconductors; providing information and data on the subject of scientific and technical research and development in the field of semiconductors; providing scientific and technical information in the field of semiconductors; technical consultation in the field of product development; design of electronic circuits, semiconductor elements, integrated circuits, and large-scale integrated circuits for others; providing technical consultation and information on the subject of design of electronic circuits, semiconductor elements, integrated circuits, and largescale integrated circuits” in International Class 42.

 

The term “3D” refers to “three-dimensional”. See previously attached dictionary definition from Oxford Dictionaries.  Applicant disclaimed this wording in its December 16, 2019 response.  Additionally, the wording “DOSRAM” is a term of art in applicant’s industry which refers to “dynamic oxide semiconductor random access memory” and is “dynamic random access memory (DRAM) using crystalline oxide semiconductor (OS) transistors”.  See attached screenshots from http://ieeexplore.ieee.org/.  Therefore, the applied-for mark is merely descriptive of the identified goods/services because it immediately refers to the function, feature and/or characteristic of applicant’s goods/services having a three-dimensional feature, such as three-dimension integrated circuits, for use with dynamic oxide semiconductor random access memory, and the testing, research, development, consulting and provision of information thereof.

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). 

 

“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

For the reasons stated above, the proposed mark merely describes the function, feature and/or characteristic of applicant’s goods/services having a three-dimensional feature, such as three-dimension integrated circuits, for use with dynamic oxide semiconductor random access memory, and the testing, research, development, consulting and provision of information thereof.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUIREMENT FOR ACCEPTABLE IDENTIFICATION/CLASSIFICATION OF GOODS and SERVICES

 

Some of the wording in the recitation of goods/services must be clarified because it is indefinite and/or overly broad. See TMEP §1402.01.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Where applicant’s goods/services are properly classified in other classes, applicant is required to either (1) specify the goods/services acceptably, add the appropriate international class(es) to the application, and classify the good/services therein, or (2) delete the good/services from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.

 

International Class 9

 

The wording “storage mediums recorded with computer programs, namely, processors; computer data storage mediums, namely, registers” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:

 

Class 9:           solar batteries; batteries; electrical storage batteries; lithium ion secondary batteries; semiconductor elements, namely, semiconductor chips, semiconductor devices, and semiconductor wafers; electronic circuits; liquid crystal displays; liquid crystal display panels; displays using organic electroluminescence elements, namely, organic electroluminescence displays (ELD); memory chips, namely, computer chips; memory modules; semiconductor memories; computer memory devices; blank flash memory cards; electronic circuits in the nature of semiconductor integrated circuits including CPUs; semiconductor chips for image processing; programmable semiconductor chips; semiconductor power elements for image sensors; digital cameras and accessories or parts thereof, namely, digital photo viewer; digital video cameras and accessories thereof, namely, digital photo viewer; digital cameras with CMOS sensors; digital cameras with charge-coupled devices (CCD) sensors; touch panels; measuring machines, apparatus, and accessories or parts thereof, namely, calculators; on-board liquid crystal display devices; on-board image display devices; on-board organic electroluminescence display devices; mobile phones; smartphones; televisions; sound reproduction apparatus; computers and computer peripherals; notebook computers; laptop computers; tablet computers; personal computers; microcomputers; computer monitors; touch panels for computers; electronic tags for goods; blank integrated circuit cards; electronic card readers for integrated circuit cards; magnetic coded card readers; electronic card writers for integrated circuit cards; magnetic coded card writers; radio transmitters and receivers; digital data memory devices, namely, memory boards; video telephones; telecommunication machines and apparatus for video telephone systems, namely, microphones; electronic calculators; electronic desk calculators; flat panel display screens; headmounted video displays; random access memory (RAM) cards; electronic memory card readers and memory card writers; data memory devices, namely, memory cards; semiconductor memory devices; storage mediums recorded with computer programs, namely, {specify the nature of the processor, e.g., “video”, “data”, “digital signal”, “audio”} processors; computer data storage mediums in the nature of registers, namely, recorded computer software for {specify the function of the programs, e.g., use in database management, use as a spread sheet, word processing, etc. and, if program is content- or field-specific, the content or field of use}; electronic circuits not including those recorded with computer programs; computer graphic boards; computer keyboards; motherboards; electronic circuit boards; computer hardware; blank computer hard disks; solid state drives; liquid crystal displays with touch sensor function; organic electroluminescence displays with touch sensor function; GPS navigation devices; video display devices for car navigation systems; personal digital assistants in the shape of a watch; mobile computers in the shape of a watch; smartphones in the shape of a watch; portable computer terminals for displaying electronic publications; electronic control systems for automobiles; and measuring machines and apparatus for detecting information relating to automobiles, namely, meter panels

 

International Class 42

Acceptable as amended:

 

Class 42:         research and development in the field of chemistry; testing of chemicals; scientific testing, research, and development in the field of semiconductors; product testing, research, and development of machines and apparatus; product testing, research, and development of metal materials; testing, research, and development in the fields of material science and electrical engineering; scientific testing, research, and development relating to transmission of electricity; product testing, research, and development of telecommunication machines and apparatus; product testing, research, and development of electronic circuits, semiconductor elements, integrated circuits, and large-scale integrated circuits; product testing, research, and development of semiconductors; product testing, research, and development of metal oxides, semiconductors, electronic appliances, and telecommunication machines and apparatus; providing technical research information relating to manufacture and processing of metal oxides, semiconductors, electronic appliances, and telecommunication machines and apparatus; scientific testing, investigation, and research in the field of semiconductors; scientific and technological services, namely, scientific analysis in the field of semiconductors; providing information on the subject of scientific testing, investigation, and research in the field of semiconductors; development of testing specifications and procedures for computer memory devices and semiconductor memory devices; providing information on the subject of technical research in the field of semiconductors; providing information and data on the subject of scientific and technical research and development in the field of semiconductors; providing scientific and technical information in the field of semiconductors; technical consultation in the field of product development; design of electronic circuits, semiconductor elements, integrated circuits, and large-scale integrated circuits for others; providing technical consultation and information on the subject of design of electronic circuits, semiconductor elements, integrated circuits, and largescale integrated circuits

 

Applicant’s goods and/or 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.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

RESPONSE GUIDELINES

 

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.  

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

571-272-6110

jeanie.lee@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on February 06, 2020 for

U.S. Trademark Application Serial No. 88453358

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

571-272-6110

jeanie.lee@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 06, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”