To: | Samsung Electronics Co., Ltd. (chiustm@ladas.net) |
Subject: | U.S. Trademark Application Serial No. 88530326 - 1NW - 3T19717842 |
Sent: | August 20, 2019 04:24:19 PM |
Sent As: | ecom119@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88530326
Mark: 1NW
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Correspondence Address: |
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Applicant: Samsung Electronics Co., Ltd.
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Reference/Docket No. 3T19717842
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: August 20, 2019
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).
SUMMARY OF ISSUES
· Section 2(e)(1) Refusal – Merely Descriptive
· Request for Information
· Identification of Goods and Services Requirement
· Foreign Registration Required
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
“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).
In this case, applicant is seeking to register 1NW in standard characters for the following goods and services:
IC 009: Semi-conductors; semi-conductor memories; semiconductor devices; semiconductor components; integrated circuits; chips (integrated circuits); blank flash memory cards; blank USB Flash drives; solid state drives; Downloadable and recorded software for use in semiconductor manufacturing; Downloadable and recorded computer software for use in integrated circuit design; Downloadable and recorded computer software for improving and increasing efficiency in the field of semiconductor manufacturing; Downloadable and recorded computer software for use in designing and manufacturing of semiconductor systems and for designing of semiconductor cell library and integrated circuits
IC 040: Foundry services, namely, custom manufacturing and assembly of semiconductor devices; custom assembling of circuit boards and semiconductors; custom manufacturing and assembling services relating to semi-conductor parts and integrated circuits; processing of parts for semiconductor manufacturing; processing of semiconductors
IC 042: Product research, custom design and testing for new product development regarding semiconductors; technology consultation services regarding semiconductors; design of semiconductors or integrated circuits; technical research in the field of semiconductor design; research services relating to semiconductors; design of semiconductor chips; research in the area of semiconductor processing technology; design of semiconductor manufacturing machines; design of semiconductors; Software as a Service (SaaS) featuring software for processing for the semiconductor industry; Software as a Service (SaaS) featuring software for integrated circuit designs
Here, applicant’s mark consists of two essential elements, “1” and “NW.” The identified goods and services all pertain in some way to circuitry and semiconductors. As the attached evidence from checkyourmath.com shows, “NW,” more appropriately written as “nW,” is the abbreviation for “nanowatt”, which is a measurement of power. See attached. This is reinforced by the attached evidence from Collins English Dictionary showing that “nanowatt” is “a unit of power equal to one billionth of a watt.” See attached.
Moreover, the Examining Attorney attaches evidence from ECN Magazine and futurity.org demonstrating that “nanowatt computing” is a specific term of art and that new semiconductors are being invented to turn on and off devices with “one nanowatt” i.e. “1 nW” of power. See attached. Therefore, when taken as a whole, applicant’s mark 1NW immediately conveys to the consumer a measurement of power, “1 nW” or one nanowatt, that its goods can function on and that its services are meant to research, design, process, and produce.
In sum, consumers who encounter applicant’s goods and services using the mark 1NW will immediately understand that the mark is an indication of the characteristic of the goods and services, rather than the underlying source of the same. Accordingly, the mark is merely descriptive, and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
RESPONDING TO SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
REQUEST FOR INFORMATION
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(3) Applicant must respond to the following questions:
(a) Do applicant’s goods and services referenced in this application pertain in whole or in part to “nanowatt computing?”
(b) Do applicant’s goods produce power measured in nanowatts, i.e. “nW” units?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
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.
IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT
INTERNATIONAL CLASS 009
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
INTERNATIONAL CLASS 040
INTERNATIONAL CLASS 042
The identification for International Class 042 is acceptable as written.
Applicant may adopt the following amended identification, if accurate, changes are shown in bold:
IC 009: Semi-conductors; semi-conductor memories; semiconductor devices; semiconductor components; integrated circuits; electronic chips for the manufacture of integrated circuits; blank flash memory cards; blank USB Flash drives; solid state drives; Downloadable and recorded software for use in semiconductor manufacturing; Downloadable and recorded computer software for use in integrated circuit design; Downloadable and recorded computer software for improving and increasing efficiency in the field of semiconductor manufacturing; Downloadable and recorded computer software for use in designing and manufacturing of semiconductor systems and for designing of semiconductor cell library and integrated circuits
IC 040: Foundry services, namely, custom manufacturing and assembly of semiconductor devices; custom assembling of circuit boards and semiconductors; custom manufacturing and assembling services relating to semi-conductor parts and integrated circuits; materials processing of component semiconductor parts for semiconductor manufacturing; processing of semiconductors
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.
FOREIGN REGISTRATION REQUIRED
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, the 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, the 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 is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. 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), 806.03(h).
ASSISTANCE
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
/Jared M. Mason/
Trademark Examining Attorney
Law Office 119
(571) 272-4146
Jared.Mason@uspto.gov
RESPONSE GUIDANCE