To: | Nordson Corporation (bhipdocket@bakerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88560115 - WISDOM - 98987.020396 |
Sent: | September 05, 2019 10:41:07 AM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88560115
Mark: WISDOM
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Correspondence Address: |
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Applicant: Nordson Corporation
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Reference/Docket No. 98987.020396
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 05, 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 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).
Class 009: Downloadable computer application software for mobile devices for {specify the function of the programs, e.g., use in database management, use in electronic storage of data, etc.}; Downloadable computer application software for mobile devices to enable users to browse, shop for and make purchases of spare parts for machines, equipment and devices
Class 035: Online services to enable users to purchase, manage, and operate machines, equipment and
devices used in industrial coatings applications; Online retail store services to enable users to purchase accessories, featuring spare parts, tools, apparatuses, instruments, electronic devices and software for the aforesaid machines, equipment and devices; Online retail store
services featuring the resale of machines, equipment and devices used in industrial coatings applications; preparation services for Negotiation of
business contracts for the maintenance contracts for of the aforesaid machines, equipment and devices, namely, arranging of contractual labor
contract services for third parties for maintenance of the aforesaid machines, equipment and devices; procurement services, namely, purchasing
procuring of contracts for others of for the purchase and sale of machines, equipment, and devices for other
companies
Class 041: Providing educational services, namely, providing on-line {indicate form of educational activity, e.g., classes, seminars, workshops} in the field of {indicate subject matter or field of educational activity} and training services in the field of {indicate field or subject matter}
Class 042: Online services to Providing a website featuring on-line
non-downloadable software that enables users to purchase, manage, and operate machines, equipment and devices used in industrial coatings applications
MULTIPLE-CLASS APPLICATION REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class(es) 009, 041 and 042; and applicant needs a specimen for class(es) 035. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSES
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.
How to respond. Click to file a response to this nonfinal Office action
Cheryl Clayton
/CCM/
Trademark Attorney
United States Patent and Trademark Office
571-272-9254 (direct)
cheryl.clayton@uspto.gov
RESPONSE GUIDANCE