| To: | HORIBA STEC, Co., Ltd. (phirschman@sheridanross.com) |
| Subject: | U.S. Trademark Application Serial No. 88478501 - MUCUBE - 8640HS-1 |
| Sent: | September 17, 2019 08:00:05 PM |
| Sent As: | ecom101@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88478501
Mark: MUCUBE
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Correspondence Address:
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Applicant: HORIBA STEC, Co., Ltd.
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Reference/Docket No. 8640HS-1
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.
Issue date: September 17, 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 RESULTS
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).
INFORMALITIES
The applicant must address the following informalities.
Identification of Goods
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Class 7:
Overall, the applicant is advised that for the most part the goods identified below must be sold as an integral part of machines to be properly classified in Class 7. Otherwise, these goods are properly classified in Class 9.
Machines and parts for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite, the specific parts must be identified and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7); all-purpose controllers for modules used for machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite, the specific type of controllers must be identified and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend to the following, if accurate: “all-purpose power controllers for modules sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence” and/or “all-purpose electrical controllers for modules sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); automatic controllers for machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite, the function of the controllers must be must be identified and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7); controllers to control devices incorporated in machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite, the specific type of controllers must be identified, the applicant may amend to the following, if accurate: “power controllers to control devices incorporated in machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence” and/or “electric controllers to control devices incorporated in machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); data recording apparatus for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend this wording to the following, if accurate: “data recording apparatus sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); data transmitting apparatus for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend this wording to the following, if accurate: “data transmitting apparatus sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); fluid controllers for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite, the function of the fluid controllers must be specified and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7); fluid measurement apparatus for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite, that which is measured with respect to the fluid must be specified and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7); fluid flow controllers for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend this wording to the following, if accurate: “fluid flow controllers sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); fluid flow meters for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend this wording to the following, if accurate: “fluid flow meters sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); concentration controllers for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend to the following, if accurate: “controllers for measuring gas concentration sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); concentration meters for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend to the following, if accurate: “meters for measuring gas concentration sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); concentration monitors for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend to the following, if accurate: “monitors for measuring gas concentration sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); concentration sensors for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend to the following, if accurate: “gas sensors for measuring gas concentration sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); fluid flow sensors for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the wording is indefinite, the nature of the sensors needs further specification with respect to the type of fluid and the aspect that is being sensed, and the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7); pressure controllers for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend this wording to the following, if accurate: “pressure controllers sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); pressure meters for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend this wording to the following, if accurate: “pressure meters sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”); pressure sensors for use with machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence (the goods must be specifically identified that they are sold as an integral part of the machines to be in Class 7, the applicant may amend this wording to the following, if accurate: “pressure sensors sold as an integral part of machines for manufacturing semiconductor, solar cell, light emitting diode, display, liquid crystal and organic electroluminescence”)
Class 9:
Measuring or testing machines and instruments (the wording is indefinite, the type of measuring or testing machines and instruments must be identified); fluid controllers (the wording is indefinite, the specific aspect of the fluid that is being controlled must be identified); fluid measurement apparatus (the wording is indefinite, the specific aspect of the fluid that is being measured must be identified); fluid flow controllers; fluid flow meters; fluid flow sensors; concentration controllers (the wording is indefinite, that which is being controlled must be identified); concentration meters (the wording is indefinite, that which is being measured by the meters must be identified); concentration monitors (the wording is indefinite, that which is being monitored must be identified); concentration sensors the wording is indefinite, that which is being measured by the sensors must be identified); pressure controllers (the wording is indefinite, the applicant may amend to the following, if accurate: pressure controllers for machines); pressure meters (the wording is indefinite, the applicant may amend to the following, if accurate: pressure meters for machines); pressure sensors; controllers to control fluid (the wording is indefinite, the specific aspect of the fluid that is being controlled must be identified); automatic controllers for use in measuring fluid (the wording is indefinite, the specific aspect of the fluid that is being measured must be identified); automatic controllers for use in measuring fluid flow; automatic controllers for use in measuring concentration (the wording is indefinite, that which is being measured by the controllers must be identified, i.e. the concentration of what is being measured); automatic controllers for use in measuring pressure (the wording is indefinite, the applicant may amend to the following, if accurate: “automatic pressure control machines and instruments”); controllers for use with electronic machines and apparatus (the wording is indefinite, the applicant may amend to the following, if accurate: “electrical controllers for use with electronic machines and apparatus” and/or “power controllers for use with electronic machines and apparatus”); all-purpose controllers for modules (the wording is indefinite, the applicant may amend to the following, if accurate: “all purpose electrical controllers for modules” and/or “all-purpose power controllers for modules”); data recording apparatus for use in controlling fluid; data recording apparatus for use in measuring fluid; data recording apparatus for use in measuring fluid flow; data recording apparatus for measuring concentration; data recording apparatus for measuring pressure; data recording apparatus for electronic machines and apparatus; data recording apparatus for modules; data transmitting apparatus for use in controlling fluid; data transmitting apparatus for use in measuring fluid; data transmitting apparatus for use in measuring fluid flow; data transmitting apparatus for measuring concentration; data transmitting apparatus for measuring pressure; data transmitting apparatus for electronic machines and apparatus; data transmitting apparatus for modules; laboratory apparatus and instruments (indefinite wording, the specific laboratory apparatus and instruments must be identified); power distribution or control machines and apparatus; electric or magnetic meters and testers; (Applicant has included the term “and/or” or “or” in the identification of goods and/or services. However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language. Also, the wording “testers” must be amended to clarify that which is being tested); telecommunication machines and apparatus (the wording is indefinite, the specific telecommunication machines and apparatus must be identified); wire communication machines and apparatus (the wording is indefinite, the specific wire communication machines and apparatus must be identified); wireless communication machines and apparatus (the wording is indefinite, the specific wireless communication machines and apparatus must be identified); radio machines and apparatus; repeating exchange machines (the wording is indefinite, the applicant may amend to the following, if accurate: “Ethernet repeaters”); remote control telemetering machines and instruments; parts and accessories for telecommunication machines and apparatus (the wording is indefinite, the specific parts and accessories for telecommunication machines and apparatus must be identified); electronic machines, apparatus and their parts (the wording is indefinite, the specific electronic machines, apparatus and parts must be identified); computer programs (indefinite wording, see explanation above); computer peripherals
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.
Classification
Significance
(1) Explain whether the wording in the mark “MUCUBE” “MU” and/or “CUBE” have any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Respond to the following questions:
Does “MU” or the Greek letter “μ” have any meaning with respect to the applicant’s goods? If so, please explain.
Is “MU” or the Greek letter “μ” descriptive with respect to the applicant’s goods? If so, please explain.
Does “CUBE” have any meaning with respect to the applicant’s goods? If so, please explain.
Is “CUBE” descriptive with respect to the applicant’s goods? If so, please explain.
What is the meaning of “MUCUBE?”
Is “MUCUBE” a coined term?
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Entity
Applicant sets forth in the application the legal entity “limited company” and applicant’s address and/or country of organization as Japan. The designation “company” (or the abbreviation “co.”) or “limited company” is typically an acceptable entity designation in a U.S. application for applicants from Commonwealth countries. See TMEP §803.03(i). However, applicant has identified an address and/or country of organization that is not a Commonwealth country (see http://www.thecommonwealth.org/Internal/142227/members/).
Therefore, applicant must clarify the legal entity in the application. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i). Applicant may do so by (1) specifying the entity type that would be the equivalent of a “limited company” in the United States or (2) providing a description of the nature of the foreign entity that is applying. See TMEP §803.03(i).
Certificate of Foreign Registration
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
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
/Katherine Stoides/
Examining Attorney
571-272-9230
katherine.stoides@uspto.gov (unofficial use only)
RESPONSE GUIDANCE