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. 

 

 

Serial Number  76/418306

 

This letter responds to the applicant’s communication filed on 7/16/03.

 

ONLY THE FOLLOWING REMAINS AT ISSUE:

 

Class 40

The proposed amendment of the identification is unacceptable, because the wording “manufacture of endoscopic  instruments” is indefinite and outside the scope of the identification that was set forth in the application at the time of filing.  The wording “manufacture of endoscopic  instruments” without more indicates goods not services.  The identification of services as originally filed was: “designing and manufacturing endoscopic and laparaoscopic surgical instruments for others.” 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 recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation, if accurate:  custom manufacture of endoscopic surgical instruments for others; or the applicant may also choose to adopt: manufacture of endoscopic surgical instruments to the order and the specification of others.   TMEP §1402.11.

 

Class 42

The recitation of services is unacceptable as indefinite.  The applicant may adopt the following recitation, if accurate:  design of endoscopic surgical instruments for others.  TMEP §1402.11.

 

Scope

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Final Action

The above requirements are made FINAL.

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  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. §2.65(a). 

 

 

 

 

 

 

 

/Fred Mandir/

Examining Attorney

Law Office 105

(703) 308-9105 ext. 151

(703) 872-9825 (fax)

ecom105@uspto.gov

 

 

How to respond to this Office Action:

 

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.

 

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.