To: | Carl Zeiss AG (vtgiordano@vonmaltitz.com) |
Subject: | U.S. Trademark Application Serial No. 88474492 - ZEISS - N/A |
Sent: | November 04, 2019 06:20:07 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. 88474492
Mark: ZEISS
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Correspondence Address: von Maltitz Derenberg Kunin Janssen etal 60 East 42nd Street, Suite 1948
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Applicant: Carl Zeiss AG
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Reference/Docket No. N/A
Correspondence Email Address: |
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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.
This Office action is supplemental to and supersedes the previous Office action issued on 09/03/2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement(s): Declaration Requirement Class - 003. See TMEP §§706, 711.02.
In a previous Office action(s) dated 09/03/2019, the trademark examining attorney refused registration of the applied-for mark based on the following:
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied:
See TMEP §713.02.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Declaration Requirement Class - 003
Applicant must respond to all issues raised in this Office action and the previous 09/03/2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
DECLARATION REQUIREMENT CLASS - 003
The stated refusal refers to the following goods and does not bar registration for the other services:
Screen cleaning wipes impregnated with a cleaning preparation; lens cleaning wipes impregnated with a cleaning preparation; liquid cleaners and cleaning sprays for screens, optical and spectacle lenses; antifogging agents for optical and spectacle lenses
The USPTO does not accept materials submitted as specimens without proper verification. See 37 C.F.R. §2.59(b)(2); In re Adair, 45 USPQ2d 1211, 1212 n.2 (TTAB 1997).
Applicant must therefore submit these assurances, properly verified in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.33(a)-(b)(1), 2.34(a)(1)(i); TMEP §804.02. For more information about this, see the Verified statement webpage.
To provide this verified statement. After opening the correct TEAS form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
REFUSAL LIMITED TO SPECIFIC GOODS
Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the goods to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
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.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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 nonfinal Office action
/Jules Dean/
Trademark Attorney
United States Patent and Trademark Office
Law Office 120
Phone: (571) 272-5322
Jules.Dean@uspto.gov
RESPONSE GUIDANCE