Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

This letter responds to the applicant's communication dated November 19, 2002.  In its response applicant clarified the duplicate application issue and provided a statement regarding the entity using the mark and the meaning of the mark which are accepted and made of record.  The applicant also amended the identification of goods.  The amendment to the identification of goods is unacceptable as beyond the scope of the original recitation.     

 

As no issues have been raised by applicant’s response the requirements as to the identification of goods is continued and now made FINAL

 

Identification of Goods

 

The identification of goods remains unacceptable.  The proposed amendment of the identification is unacceptable because the wording designates services that are not within the scope of the identification of goods that was set forth in the application at the time of filing.  While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.

 

The applicant must amend the identification to specify the common commercial name of the goods or to indicate the specific use of the goods.  TMEP section 1301.05.  The applicant may adopt the following identification, if accurate:

 

            Medical device, namely (specify the common commercial name of goods) for use in

            family planning, in International Class 10

 

Again, please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the original identification.

 

The applicant may wish to consult the on-line identification of goods and services manual on the Patent & Trademark Office homepage for a listing of acceptable names for goods. The web site address is as follows:

 

    http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

This requirement is continued and now made FINAL.

 

Failure to Function

 

The examining attorney also continues the refusal to register because the proposed mark merely identifies a process, method or system, as used on the specimen of record.  The proposed mark, as used, would not be perceived as a trademark.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127.  See In re Bose Corp., 546 F.2d 893, 192 USPQ 213 (C.C.P.A. 1976); In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (C.C.P.A. 1975); In re Big Stone Canning Co., 169 USPQ 815 (TTAB 1971).

 

The examining attorney will reconsider this refusal if the applicant submits a substitute specimen showing use as a trademark.  TMEP §904.11.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the application filing date.  37 C.F.R. §2.59(a); TMEP §904.09.

 

This refusal is made FINAL

 

Responding to a Final Action

 

Please note that the only appropriate responses to a final action are either

 

(1)   compliance with the outstanding requirements, if feasible, or

 

(2)   filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a). 

 

If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

General Response Guidelines

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

Status Information

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

For inquiries or questions about this office action, please contact the assigned examining attorney.

 

 

 

 

 

Jeffrey S. DeFord

Jeffrey S. DeFord

c/o Marc Leipzig

1921Westmoreland Street

McLean, Virginia 22101

USA

                                                                        jeffrey.deford@uspto.gov