To: | Silicon Creations (ryan@trademarkelite.com) |
Subject: | U.S. Trademark Application Serial No. 90035820 - SILICON CREATIONS - N/A |
Sent: | March 02, 2021 01:00:33 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90035820
Mark: SILICON CREATIONS
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Correspondence Address:
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Applicant: Silicon Creations
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: March 02, 2021
This action responds to applicant’s communication filed November 2, 2020, wherein applicant provided a substitute specimen of use which has been found to be acceptable and has been entered into the record. Because applicant did not respond to the disclaimer requirement, that issue is MADE FINAL. Applicant must respond timely and completely to the issue(s) below. See 37 C.F.R. §2.64(a); TMEP §714.04.
DISCLAIMER OF WORDING – REQUIREMENT
Applicant must disclaim the descriptive wording “silicon” apart from the mark as shown because it merely describes an ingredient, quality, characteristic, function, feature, purpose or use of applicant’s goods and/or services. See 15 U.S.C. §§1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213, 1213.03(a).
Specifically the previously attached evidence from applicant’s website shows that the subject matter of the files provided by applicant deals with silicon. Additionally, applicant’s specimen of use shows that the goods are, or contain, “silicon proven” and the use of “silicon” therefore merely informs consumers of the subject matter of applicant’s digital libraries.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SILICON” apart from the mark as shown.
TMEP §§1213.03(c), 1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer 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).
/SeanCrowley/
Examining Attorney
Law Office 116
U.S. Patent and Trademark Office
571.272.8851
sean.crowley@uspto.gov
RESPONSE GUIDANCE