To: | Arm Limited (trademarks@saul.com) |
Subject: | U.S. Trademark Application Serial No. 90151302 - ARM SYSTEMREADY CERTIFIED - 366219.00140 |
Sent: | July 20, 2021 07:05:18 PM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90151302
Mark: ARM SYSTEMREADY CERTIFIED
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Correspondence Address: SAUL EWING ARNSTEIN & LEHR LLP |
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Applicant: Arm Limited
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Reference/Docket No. 366219.00140
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: July 20, 2021
Applicant’s response dated July 14, 2021, is acknowledged by this final Office action. The response includes an answer to the significance inquiry, and an acceptable disclaimer, and an acceptable amended mark description. However, the amendment to the identification of goods and services is unacceptable as indicated below. Before the mark is approved for publication, applicant must submit an acceptable amendment to the identification of goods and services.
Identification of Goods and Services
Specific wording in the amended identification of goods and services is unacceptable. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
“Downloadable electronic publications, [comma must be deleted] in the nature of electronic test certificates directed to certifying specific instruction set architecture implementations of computer hardware for compliant computer systems and computer software for complant computer systems [wording “directed to certifying specific instruction set architecture implementations of computer hardware for compliant computer systems and computer software for complant computer systems” is indefinite and too vague--the nature of the publication and the subject matter of the certificate is not clearly stated]” – Class 9;
“Creation of specific instruction set architecture implementations of computer hardware and computer software to determine conformity with certification standards [wording “Creation of specific instruction set architecture implementations of computer hardware and computer software to determine conformity with certification standards” does not identify a service—creating something does not identify a service; applicant has changed the services from “certification” to “creation” and this amounts to an unacceptable amendment to the scope of the services set forth in the original identification when the application was filed];
development of voluntary standards directed to certify [wording “to certify” impermissibly expands the purpose of the services] the security of computer instruction set architectures, computer hardware and computer software for compliant computer systems – Class 42;
“Compliance services relating to specific instruction set architecture implementations of computer hardware and computer software for complaint computer systems [wording “Compliance services relating to specific instruction set architecture implementations of computer hardware and computer software for complaint computer systems” is indefinite—specify services further, e.g., Regulatory compliance consulting services relating to specific instruction set architecture implementations of computer hardware and computer software for complaint computer systems]” – Class 45.
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).
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).
/Christopher Buongiorno/
United States Patent & Trademark Office
Law Office 102
(571) 272-9251
christopher.buongiorno@uspto.gov
RESPONSE GUIDANCE