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:  June 25, 2020

 

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 Results

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, the applicant must respond to the following requirements: 

 

requirement for clarification of Identification and CLASSIFICATION of goods and/or Services

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The wording “soluble binders and additives for use in three-dimensional (3D) printers” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The wording “Latex … for use in three-dimensional (3D) printers” in the identification of goods for International Class 001 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 latex for industrial use in Class 017, as well as latex glue for industrial purposes in Class 001 (Class 001 also contains “adhesives for general industrial use” and “industrial adhesives for use in coating and sealing”).

 

The wording “3D printing services; 3D printing-as-a-service; managed 3D printing services” in the identification of services is indefinite and must be clarified because these services must be clarified as either being “for others” or “custom” to be considered sufficiently definite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate, for the entire identification of goods and/or services (additional or alternative wording is in bold font; notes to applicant about how to clarify the identification wording are contained within brackets, but the amended identification should not include this bracketed text): 

 

“Chemical compositions comprised of latex glue for industrial purposes and soluble binders and additives in the nature of specialty chemicals for use in three-dimensional (3D) printers; chemicals used in industry, namely, liquid materials for 3D printing,” in International Class 001;

 

“Metals in powdered form for use in three-dimensional (3D) printers,” in International Class 006 [no change];

 

“Plastics composite material in the form of powder for use in additive manufacturing; plastic in powdered form; semi-crystalline plastic powders for use in three-dimensional (3D) printing,” in International Class 017 [no change];

 

“Cloud printing services, namely, digital on-demand printing services, digital on-demand thermographic printing services, and three-dimensional (3D) printing; additive manufacturing for others; custom fabrication of parts, components and models for others, namely, custom manufacture of 3D printing equipment and components; 3D printing services for others; custom 3D printing-as-a-service; managed 3D printing services for others; digital printing services; consulting services, namely, technical consulting related to the additive manufacturing process of products to the order and specification of others; technical advice, information and consultancy in relation to 3D printers and 3D printing; technical consultation in the field of 3D printing; rental and leasing of 3D printers, printing machines for commercial or industrial use and printing presses,” in International Class 040.

 

The identification of goods or services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds , 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion , 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America , Inc ., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co ., 99 USPQ 344 (Comm'r Pats. 1953).

 

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.  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 or encompassed by those in the original 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).

 

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.

 

RESPONSE TO PARTIAL REQUIREMENT

 

If applicant should fail to respond to this Office action within the six-month period for response, then the following goods and/or services will be deleted from the application: 

 

• “Latex and soluble binders and additives for use in three-dimensional (3D) printers,” in International Class 001;
• “3D printing services; 3D printing-as-a-service; managed 3D printing services,” in International Class 040.

 

The application will then proceed with the following goods and/or services only: 

 

• “chemicals used in industry, namely, liquid materials for 3D printing,” in International Class 001;
• “Metals in powdered form for use in three-dimensional (3D) printers,” in International Class 006;
• “Plastics composite material in the form of powder for use in additive manufacturing; plastic in powdered form; semi-crystalline plastic powders for use in three-dimensional (3D) printing,” in International Class 017; and
• “Cloud printing services, namely, digital on-demand printing services, digital on-demand thermographic printing services, and three-dimensional (3D) printing; additive manufacturing for others; custom fabrication of parts, components and models for others, namely, custom manufacture of 3D printing equipment and components; digital printing services; consulting services, namely, technical consulting related to the additive manufacturing process of products to the order and specification of others; technical advice, information and consultancy in relation to 3D printers and 3D printing; technical consultation in the field of 3D printing; rental and leasing of 3D printers, printing machines for commercial or industrial use and printing presses,” in International Class 040.

 

37 C.F.R. §2.65(a).

 

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

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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 June 25, 2020 for

U.S. Trademark Application Serial No. 88916588

 

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. 

 

 

/Kaelie E. Kung/

Examining Attorney

Law Office 103

571-272-8265

kaelie.kung@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 June 25, 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.”