To: | Helicoid Industries, Inc. (michele.glessner@alston.com) |
Subject: | U.S. Trademark Application Serial No. 88727291 - HELICOID - 69958/694306 |
Sent: | January 13, 2021 06:26:41 AM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88727291
Mark: HELICOID
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Correspondence Address:
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Applicant: Helicoid Industries, Inc.
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Reference/Docket No. 69958/694306
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 13, 2021
The examining attorney has carefully reviewed the applicant’s response to the first Office action containing amendments in favor of registration. The amendment to the identification has been entered into the record but remains indefinite. The examining attorney has determined the following in this non-final Office action. Applicant must respond timely and completely to the identification and request for information issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Identification Indefinite and Too Broad
The amended identification of goods remains indefinite and must be clarified because it is unclear from the current wording exactly what goods and services are used in conjunction with the mark. See TMEP §1402.01. The composition of the layered composite materials must be further clarified to ensure proper classification. Further the wording such as “lightweight structures” and “industrial components” must be further clarified, “industrial components, namely, printed circuit boards.”
In addition, the submitted wording appears too broad as it identifies goods that can be classified in different international classes. The wording “fiber metal laminate materials” in the identification of goods for International Class 1 must be clarified because it is too broad and includes goods in a different international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording encompass goods properly identified in International Class 6.
Based on the submitted amendment the applicant may adopt the following identification, if accurate (suggested wording appears in italicized print):
_______ (specific type of composite material must be specified, e.g. “ceramic matrix”) layered composite materials for use in the manufacture of satellites, rockets, missiles, aerospace vehicles, aircraft engines, wind turbines, sporting goods, auto parts, armaments, military vehicles, drones, and industrial components, namely, ; _______ (specific type of composite material must be specified, e.g. “ceramic matrix”) layered composite material for use in the manufacture of lightweight structures; _______ (specific type of composite material must be specified, e.g. “ceramic matrix”) layered hybrid composite materials for use in the manufacture of lightweight structures in Class 1.
-and/or-
Fiber metal laminate materials for use in the manufacture of satellites, rockets, missiles, aerospace vehicles, aircraft engines, wind turbines, sporting goods, auto parts, armaments, military vehicles, drones, and industrial components, namely, ________ (indicate specific components, e.g. printed circuit boards) in Class 6.
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
The nature of the goods is not clear from the present record. The examining attorney requires information about the nature of the goods to determine whether all or part of the wording in the mark is merely descriptive as applied to the goods. In particular, the applicant must indicate if the goods utilize a helicoid shape, component or feature or has any other connection helicoids.
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement.
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. Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Jason F. Turner/
Jason F. Turner
Examining Attorney
Law Office 108
(571) 272-9353
jason.turner@uspto.gov
RESPONSE GUIDANCE