Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  May 07, 2020

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Ownership of Cited Registrations
• Particular Services Exceed Scope of Foreign Registration
• Identification of Goods and Services
• Multiple-Class Application Requirements
• Amended Mark Description Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3348066, 5523767, and 5523807.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

COMPARISON OF THE MARKS

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Here, the applied-for mark is PSMC with a distinctive design element of a diamond design comprised of triangles and rectangles within an oval. 

 

The registered marks are PSC (Reg. No. 3348066) with a distinctive design element of a diamond design comprised of triangles and rectangles within an oval, and two design marks without wording (Reg. Nos. 5523767 and 5523807) consisting of a distinctive design element of a diamond design comprised of triangles and rectangles within an oval.

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

In this case, the applied-for and registered marks each contain an identical design element consisting of the same diamond design comprised of triangles and rectangles within an oval, simply with different coloring in the design elements. When the marks at issue consist of design elements, similarity of the marks is determined primarily on the basis of visual similarity.  See, e.g., Volkswagenwerk Aktiengesellschaft v. Rose ‘Vear Enters., 592 F.2d 1180, 1183, 201 USPQ 7, 9 (C.C.P.A. 1979) (quoting In re ATV Network Ltd., 552 F.2d 925, 929, 193 USPQ 331, 332 (C.C.P.A. 1977)); Ft. James Operating Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB 2007); TMEP §1207.01(c).  However, a side-by-side comparison is not the test.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d 586, 587, 177 USPQ 573, 574 (C.C.P.A. 1973).  When comparing design marks, the focus is on the overall commercial impression conveyed by such marks, not on specific differences.  See Grandpa Pidgeon’s of Mo., Inc. v. Borgsmiller, 477 F.2d at 587, 177 USPQ at 574; In re Triple R Mfg. Corp., 168 USPQ 447, 448 (TTAB 1970); TMEP §1207.01(c). Here, the only difference in the design elements in the applied-for and registered marks is the different colors applied to each. Thus, the applied-for and registered marks are visually nearly identical.

 

Merely adding the lettering “PSMC” to an identical design element contained in the registered marks in U.S. registration numbers Reg. Nos. 5523767 and 5523807 does not obviate the similarity of the marks. Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). 

 

Nor does the slight difference in the lettering “PSMC” in the applied-for mark and “PSC” in the registered mark PSC (Reg. No. 3348066) obviate the similarity of the marks because these marks share the same design element and vary only slightly in the lettering presented in association with this element. Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

As a result, the marks are confusingly similar and share the same overall commercial impression.

 

COMPARISON OF THE GOODS AND SERVICES

 

In a likelihood of confusion determination, the goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Here, the applicant’s goods and services are identified as “Integrated circuit chips; microelectronic circuits; microelectronic integrated circuits; read-only memory chip; RAM chips; floating-point processor chips; semiconductors; semiconductor chips; semiconductor devices; micro-processor chips; memory integrated circuits; integrated circuits; very large scale integrated circuits; logic integrated circuits; sensor integrated circuits; driver integrated circuits; silicon crystals; electronic circuits; electronic circuits for memory and semiconductor products”, “Moulding of materials relating to semiconductor, wafer and integrated circuits; foundry, custom manufacture, assembly, packaging of semiconductor, wafer and integrated circuits”, and “Research, custom design, inspection and testing of product quality for others and consultation regarding semiconductor, chips, integrated circuits, wafer and semiconductor cell libraries; providing computer aided design services of chips, integrated circuits and semiconductor”.

 

The registrant’s goods for the registered mark PSC (Reg. No. 3348066) are identified as “integrated circuit chips, semiconductors, microelectronic integrated circuits, integrated circuits, electronic circuits for memory and semiconductor products, semiconductor chips, semiconductor devices, microprocessor computer chips, memory integrated circuits, logic integrated circuits, sensor integrated circuits, driver integrated circuits, floating-point computer processor chips, very large scale integrated circuits”.

 

The registrant’s goods for U.S. registration number 5523767 are identified as “Blank integrated circuit cards, namely, blank smart cards; Integrated circuits; Integrated circuits, integrated circuit chips, and integrated circuit modules for digital video compression and decompression; Wafers for integrated circuits; Large scale integrated circuits; Circuit boards provided with integrated circuits; Integrated circuit module; Electronic chips for the manufacture of integrated circuits; Computer chips; Electronic integrated circuits; Semi-conductors; Integrated circuit cards, namely, blank smart cards; Multiprocessor chips; Semiconductor chip sets”.

 

The registrant’s services for U.S. registration number 5523767 are identified as “Air purification; Assembly of products for others; Burnishing by abrasion; Destruction of waste and trash; Framing of works of art; Laminating of plastic sheets; Metal plating and laminating; Metal treating; Production of energy; Providing material treatment information; Recycling of waste and trash; Upcycling in the nature of waste recycling; Waste treatment; Water treating; Welding services”.

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the goods in the application and registrations are identical in part.  With regard to U.S. registration numbers 3348066 and 5523767, the applicant and registrants have each identified among their goods “integrated circuits”, “integrated circuit chips”, “semiconductors”, “semiconductor chips”, “semiconductor devices”, “memory integrated circuits”, “very large scale integrated circuits”, “logic integrated circuits”, “sensor integrated circuits”, “driver integrated circuits”, and “microelectronic integrated circuits”.  Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). 

 

Further, with regard to U.S. registration number 5523767, the registration uses broad wording to describe its services as “assembly of products for others”, which presumably encompasses all services of the type described, including applicant’s more narrow identification for assembly of semiconductor, wafer, and integrated circuits, which are types of products.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, based on the description of the services stated in the application and registration at issue, the applicant’s services are encompassed within the registrant’s services.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

In summary, applicant’s and registrants’ marks create the same commercial impression, and the goods and services the applicant’s mark identifies are sufficiently related to the registrants’ goods and services such that consumers are likely to be confused as to the source of these services.  Accordingly, registration must be refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

OWNERSHIP OF CITED REGISTRATIONS

 

If the marks in the cited registrations are owned by applicant, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)       Submit copies of documents evidencing the chain of title; or

 

(3)       Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration Nos. 3348066, 5523767, and 5523807.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

PARTICULAR SERVICES EXCEED SCOPE OF FOREIGN REGISTRATION

 

Particular wording in the U.S. application’s identification of goods and/or services has been found to exceed the scope of goods and/or services in the foreign registration upon which the U.S. application relies for a Section 44(e) filing basis.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07.  For a U.S. application based on Section 44(e), an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b).  Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis, and only the remaining wording in the identification is operative for purposes of future amendment for that basis.  See TMEP §1402.01(b); cf. TMEP §1402.07(d).

 

In this case, the U.S. application identifies the particular goods and/or services as follows:

 

Class 009:  Microelectronic circuits; RAM chips; silicon crystals; electronic circuits; electronic circuits for memory and semiconductor products

 

Class 040:  Moulding of materials relating to semiconductor, wafer and integrated circuits; foundry, custom manufacture, assembly, packaging of semiconductor, wafer and integrated circuits

 

Class 042:  Research, custom design, inspection and testing of product quality for others and consultation regarding semiconductor, chips, integrated circuits, wafer and semiconductor cell libraries

 

However, the foreign registration identifies the following goods and/or services: 

 

Class 009:  Class 009: Integrated circuit chips; Microelectronic integrated circuits; read-only memory chip; floating-point processor computer chips; semiconductors; semiconductor chips; semiconductor devices; microprocessor chips; memory integrated circuits; integrated circuits; very large scale integrated circuits; logic integrated circuits; sensor integrated circuits; driver integrated circuits

 

Class 040:  Foundry services, namely custom manufacture and assembly of semiconductor, wafer and integrated circuits

 

Class 042:  Research, custom design and testing of integrated circuits, wafer and semiconductor cell libraries; Providing semiconductor design services

 

These goods and services in the U.S. application exceed the scope of those in the foreign registration because applicant’s Class 009 goods appear to include goods that are neither among those nor encompassed by the goods identified in the foreign registration, while applicant’s Class 040 services in the U.S. application describe molding services that are not contemplated nor appear to be encompassed by the services described in applicant’s foreign registration. 

 

In addition, applicant’s Class 042 services in the foreign registration describe research, custom design, and testing of integrated circuits, wafers, and semiconductor cell libraries while the U.S. application expands these services to include semiconductors and chips. Further, the U.S. application includes inspection and consultation services that are not included in the foreign registration.

 

Thus, these goods and/or services in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods and/or services in the foreign registration.

 

Applicant may respond to this issue by satisfying one of the following:

 

(1)             Amending the identification of goods and/or services in the U.S. application for the Section 44(e) filing basis to correspond with the goods and/or services identified in the foreign registration, if possible, to ensure that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)             Deleting the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods and/or services.   

 

See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).

 

Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.

 

IDENTIFICATION OF GOODS AND SERVICES

 

Class 009:

 

In addition to the issue with the goods identified in the foreign registration, the wording “RAM chips” in the identification of goods is indefinite and must be clarified because applicant must specify that “RAM” refers to random access memory.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “floating-point processor chips” in the identification of goods is indefinite and must be clarified because applicant must more clearly indicate the nature of the goods (e.g., computer chips).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

In addition to the issue with the services identified in the foreign registration, the wording “silicon crystals” in the identification of goods for International Class 009 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass crystalline silicon in Class 001 or silicon wafers of crystal in Class 009.

 

Class 040:

 

In addition to the issue with the services identified in the foreign registration, the wording “Moulding of materials relating to semiconductor, wafer and integrated circuits” in the identification of services is indefinite and must be clarified because applicant must provide greater specificity as to the materials being molded.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Further, in addition to the issue with the services identified in the foreign registration, applicant must clarify the wording “foundry, custom manufacture, assembly, packaging of semiconductor, wafer and integrated circuits” in the identification of services in International Class 40 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  Further, this wording could identify services in more than one international class.  For example, this wording could encompass the packaging of goods such as semiconductors, silicon wafers, and integrated circuits in Class 039 or foundry services in the nature of custom manufacture and assembly of semiconductors, silicon wafers, and integrated circuits in Class 040. In addition, applicant must specify that these services are performed for others.

 

Class 042:

 

In addition to the issue with the services identified in the foreign registration, the wording “Research, custom design, inspection and testing of product quality for others and consultation regarding semiconductor, chips, integrated circuits, wafer and semiconductor cell libraries; providing computer aided design services of chips, integrated circuits and semiconductor” in the identification of services is indefinite and must be clarified in that applicant must specify that the services entail product research and product quality inspection or testing.  In addition, applicant must more clearly indicate that the consultation services are in the fields of product research, custom design, and product quality inspection and testing of the enumerated products.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate (examining attorney’s suggestions in bold font):

 

            Class 001:       (Based on Intent to Use) Crystalline silicon

 

Class 009:  (Based on Intent to Use) microelectronic circuits; RAM (random access memory) chips; silicon wafers of crystal; electronic circuits; electronic circuits for memory and semiconductor products; (Based on 44(e)) Integrated circuit chips; microelectronic integrated circuits; read-only memory chip; floating-point processor computer chips; semiconductors; semiconductor chips; semiconductor devices; micro- processor chips; memory integrated circuits; integrated circuits; very large scale integrated circuits; logic integrated circuits; sensor integrated circuits; driver integrated circuits; silicon crystals; electronic circuits; electronic circuits for memory and semiconductor products

 

Class 039:       (Based on Intent to Use) Packaging of goods in the nature of semiconductors, silicon wafers, and integrated circuits for others

 

Class 040:       (Based on Intent to Use) Molding of {specify type of materials, e.g., plastic, rubber, silicon} materials relating to semiconductor, wafer and integrated circuits; (Based on 44(e)) Foundry services, namely, custom manufacture and assembly of semiconductors, silicon wafers, and integrated circuits for others

 

Class 042:  (Based on Intent to Use) Consultation services in the field of product research, custom design, and product quality inspection and testing of semiconductors, computer chips, integrated circuits, silicon wafers, and semiconductor cell libraries; Product research, custom design, and product quality inspection and testing for others of semiconductors and computer chips; (Based on 44(e)) Product research, custom design, and product quality testing for others of integrated circuits, silicon wafers, and semiconductor cell libraries

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

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 Sections 1(b) and 44:

 

(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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least five classes; however, applicant submitted fees sufficient for only three classes.  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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

AMENDED MARK DESCRIPTION REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  Specifically, applicant must more clearly describe the locations of all of the colors in the design elements of the mark.

 

The following description is suggested, if accurate: 

 

The mark consists of a diamond design comprised of four triangles with the upper left and lower right triangles in red and the upper right and lower left triangles in white. Around the diamond is an oval design in four portions, the upper left and lower right in green and the upper right and lower left in blue. To the right of the oval is the stylized red wording “PSMC”. All other white areas represent background and are not claimed as a feature of the mark.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and/or requirement in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Laura Taraban/

Laura Taraban

Trademark Examining Attorney

Law Office 127

(571) 272-3352

laura.taraban@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 07, 2020 for

U.S. Trademark Application Serial No. 88790740

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Laura Taraban/

Laura Taraban

Trademark Examining Attorney

Law Office 127

(571) 272-3352

laura.taraban@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 07, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”