To: | M-Labs Limited (huw@psllawgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88944548 - ARTIQ - ML-TMA-002 |
Sent: | August 07, 2020 06:39:15 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88944548
Mark: ARTIQ
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Correspondence Address: |
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Applicant: M-Labs Limited
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Reference/Docket No. ML-TMA-002
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: August 07, 2020
How to respond. Click to file a response to this nonfinal Office action.
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SEARCH OF USPTO DATABASE OF MARKS (Advisory)
Applicant must respond to the requirement(s) set forth below.
IDENTIFICATION AND CLASSIFICATION
Applicant has provided the following identification and classification of goods and/ or services in its application:
Class 9: Software comprising a control and data acquisition system for quantum physics experiments; programmable logic designs ("gateware") and electronic hardware; graphical user interface, an experiment scheduling system, and databases for experiments, devices, parameters and results
Class 42: Computer programming services for the development and support of software comprising a control and data acquisition system for quantum physics experiments; programmable logic designs (gateware) and electronic hardware; graphical user interface, an experiment scheduling system, and databases for experiments, devices, parameters and results
The identification of goods and services is unacceptable as indefinite because it is too broad and could include goods and services in other international classes and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The identification for software is too broad and must be clarified because the wording does not make clear the (1) nature or (2) format of the software and could identify goods and/or services in two international classes – as a product in International Class 9 or a service in International Class 42. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Specifically, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software. TMEP §1402.03(d). Additionally, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable. See id. Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §§1402.03(d), 1402.11(a)(xii). The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
The identification of goods and/or services contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services. In addition the nature of “gateware” is unclear. If this refers to a system-on-chip featuring a programmable logic design, then applicant may so indicate.
As written the services in class 42 is indefinite as it is unclear if the clause after the semicolon refers to separate goods or if they are part of “Computer programming services…” Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Technical descriptions of characteristics or uses are not appropriate. TMEP §1402.01. The language used to describe goods or services should be understandable to the average person and should not require an in-depth knowledge of the relevant field. An identification may include terms of art in a particular field or industry, but, if these terms are not widely understood by the general population, the identification should include an explanation of the specialized terminology. TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
· Downloadable computer software system for use in controlling quantum physics experiments and data acquisition in quantum physics experiments; Gateware, namely, system-on-chips featuring a programmable logic design; Electronic computer hardware; Downloadable graphical user interface software; Downloadable computer software system for use in scheduling quantum physics experiments; Downloadable computer software system for use in managing databases for quantum physics experiments, devices, parameters and results (International Class 9)
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.
CLOSING
If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney. For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.
Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) 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.
/Benji Paradewelai/
Trademark Attorney
Law Office 101, USPTO
Direct Dial: (571) 272-1658
Email: benji.paradewelai@uspto.gov (for informal inquiries)
http://www.uspto.gov (for filing Official responses)
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RESPONSE GUIDANCE