To: | Nordson Corporation (bhipdocket@bakerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88560115 - WISDOM - 98987.020396 |
Sent: | February 19, 2020 11:40:30 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
|
|
Correspondence Address: |
|
Applicant: Nordson Corporation
|
|
Reference/Docket No. 98987.020396
Correspondence Email Address: |
|
FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: February 19, 2020
This Office action is in response to applicant’s communication filed on January 17, 2020.
In a previous Office action(s) dated September 5, 2019, the applicant was required to satisfy the following requirement(s): amend the identification of goods and/or services and amend classifications as appropriate.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
IDENTIFICATION OF GOODS AND SERVICES
Class 009: Downloadable computer application software for mobile devices to access controls for equipment, drawings and bills of material, manuals and troubleshooting guides, industrial-coatings related events, new product launches and promotions; Downloadable computer application software for mobile devices to enable users to browse and shop for spare parts for machines, equipment and devices; Downloadable computer application for mobile devices for monitoring, managing, reporting, and analyzing system performance and production data for industrial coatings applications
Class 035: Online advertising services for others featuring spare parts, tools, apparatuses, instruments, electronic devices and
software for machines, equipment and devices; Online retail store services featuring resale services featuring the resale of machines, equipment and devices used in
industrial coatings applications
Class 038: Provision of access to electronic sites
Class 041: Providing online classes, seminars, workshops in the field of industrial coatings and training services in the field of industrial coatings
Class 042: 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
The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 class(es). In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
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 USPTO changed the federal trademark rules to eliminate the TEAS RF application, which is now considered a “TEAS Standard” application. See 37 C.F.R. §2.6(a)(iii). The fee for adding classes to a TEAS Standard application is $275 per class. See id. For more information about these changes, see the Mandatory Electronic Filing webpage.
(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 5 classes; however, applicant submitted a fee(s) sufficient for only 4 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 and 041 as amended; and applicant needs a specimen for class(es) 042 as amended and 038. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Cheryl Clayton
/CCM/
Trademark Attorney
United States Patent and Trademark Office
571-272-9254 (direct)
cheryl.clayton@uspto.gov
RESPONSE GUIDANCE