UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/438963
APPLICANT: AORN, Inc.
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CORRESPONDENT ADDRESS: ESTER MARTIN MAILLARO FAEGRE & BENSON LLP 3200 WELLS FARGO CENTER 1700 LINCOLN ST DENVER CO 80203-4500 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: PERIOPERATIVE NURSE WEEK
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CORRESPONDENT’S REFERENCE/DOCKET NO: 57857/000010
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/438963
This letter responds to the applicant’s communication filed on July 2, 2003.
New Requirement
The applicant must disclaim the descriptive wording "PERIOPERATIVE NURSE" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP §§1213 and 1213.08(a)(i). The wording is merely descriptive because it describes features of applicant’s services, namely, subject matter of the information provided and the person(s) for or to whom the information and association services are directed. See Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward users of large data processing systems; evidence sufficient to establish distinctiveness under §2(f)); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail mail order services in the field of outdoor equipment and apparel); and TMEP §1209.03(i).
In support of the requirement, the Examining Attorney notes that applicant states on page 11 of its response, “Applicant provides resources to healthcare professionals … regarding surgical patient care.” (emphasis added) “Perioperative nurses” are at least one group of healthcare professionals to whom such resources are provided. In addition, evidence indicates that perioperative nurses provide surgical patient care. Thus, implicit in applicant’s statement is that the subject of “perioperative nurses” is part of the information provided. Please note the enclosed additional evidence in support of this requirement. The Nexis stories attached show that perioperative nurses provide surgical patient care.
A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use PERIOPERATIVE NURSE apart from the mark as shown.
Applicant has provided information in response to the Examining Attorney’s request pursuant to 37 C.F.R. § 2.61(b), which was set forth in the first Office Action. There are two additional questions to which applicant is requested to respond:
The Examining Attorney also requests applicant to provide additional printouts from its website that show information on “surgical patient care procedures” provided to any visitor to the website. Such printouts should also include data located at “It’s Important for you to know.”
This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02. If the applicant does not provide the information required herein, registration may be refused. The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration. In re DTI Partnership, L.L.P., 2003 TTAB LEXIS 171. See also In re Page, 51, USPQ2d 1660, 1665 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729, 1731 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).
If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.
/ELIZABETH J. WINTER/
Trademark Examining Attorney
Law Office 113
(703) 308-9113 ext. 480; FAX (703) 746-6228
(703) 285-1184 (M, T, W, Th)
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 to this Office action electronically, the applicant must:
o include the serial number in the subject line;
o send the response to ecom113@uspto.gov. Responses sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;
o submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only. NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);
o respond within six-months from the Office action mailing date, or within the period stated in the Office action;
o respond in English; and
o sign the response electronically, e.g. /john smith/. See 37 CFR §1.4(d)(1)(iii); TMEP §§304.08 and 804.05.
If the applicant wishes to receive future office actions by e-mail, the applicant must state in the response that “The applicant authorizes the USPTO to communicate with the applicant electronically at the following e-mail address: ____________.” Note: only one e-mail address may be used for correspondence. TMEP §804.07.
The examining attorney will send correspondence only to the e-mail address listed in the application. A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
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SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
MAIL-IT REQUESTED: SEPTEMBER 7, 2003 10083K
CLIENT: EW
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"PERIOPERATIVE NURSE" W/10 "PATIENT CARE"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 8
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1,3,5,7
DISPLAY FORMAT: 50 VAR KWIC
SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
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Copyright 2002 The Washington Post
The Washington Post
November 14, 2002, Thursday, Final Edition
SECTION: MONTGOMERY EXTRA; Pg. T17
LENGTH: 2845 words
HEADLINE: Montgomery Calendar; Community Events
BODY:
... sponsored by the Women's Bar Association and Montgomery County public schools. 9:30 a.m.-3 p.m., University of Maryland Shady Grove Campus, 9640 Gudelsky Dr., Rockville. Free; preregistration required; lunch provided; free bus service from the following high schools: Montgomery Blair, Gaithersburg, Richard Montgomery and Northwest. 301-251-8500.
OPERATING ROOM OPEN HOUSE, see how operating-room (or "perioperative") nurses work with surgical teams in coordinating a patient's care, sponsored by the hospital's surgery department in recognition of National Perioperative Nurses Week, Nov. 10-16. 9 a.m.-1 p.m., Holy Cross Hospital, 1500 Forest Glen Rd., Silver Spring. Free. 301-754-7256.
SENIORS FLU SHOTS, annual flu and pneumonia vaccines. 9 a.m.-noon, Holy Cross Hospital, 1500 Forest Glen Rd., Silver Spring. Flu shots, $10; pneumonia immunizations, $20; Medicare subscribers, free; preregistration ...
Copyright 2001 Capital-Gazette Communications, Inc.
The Capital (Annapolis, MD)
February 12, 2001, Monday
SECTION: Inside; Pg. A5
LENGTH: 1084 words
HEADLINE: NAMES IN THE NEWS
BODY:
... transportation, handyman help, yard work or friendly visits.
***
Joan M. Spear, a registered nurse, resident of Westminster and coordinator of Anne Arundel Community College's Registered Nurse First Assistant program, is receiving the 2001 Association of Perioperative Registered Nurses Award for Excellence in Perioperative Nursing.
The award recognizes a registered nurse whose accomplishments in perioperative nursing reflect the goal of excellence in patient care and who serves as a role model for others. A perioperative nurse tends to patients before, during and after surgery.
Ms. Spear was cited for showing her commitment to improving the care of surgical patients as a clinical specialist at Johns Hopkins Uni versity Hospital and as RNFA coordinator at AACC.
She also is a certified nurse for the operating room and has a master's degree in business administration. She has coordinated the RNFA program at AACC since its inception five years ...
Copyright 1998 Chattanooga News-Free Press Company
Chattanooga Free Press (Tennessee)
October 14, 1998, Wednesday
SECTION: EDITORIAL; Pg. A8
LENGTH: 348 words
HEADLINE: Public Awareness Of Nursing Urged
BYLINE: Shirley Harvey, Chattanooga Pub Co
BODY:
Do you really know "the caregiver behind the mask"? Do you know your surgeon's team? It consists of an assistant, anesthesiologist/or CRNA, scrub technician (passes instruments) and a circulator nurse. This is the perioperative nurse.
Did you know that these RN's possess the skill and judgment that help make patient care in the operating room safe and efficient? These nurses strive to acquire and maintain current knowledge in nursing practice.
There are many faces of the perioperative nurse. The scope of responsibilities has increased:
1. Scrub nurse -- works directly with the surgeon and back table.
2. Circulator nurse -- duties performed outside sterile field. Responsible for managing the care of the surgical patient. This nurse makes sure each team member performs ...
Copyright 1997 The Sunday Oklahoman
Daily Oklahoman (Oklahoma City, OK)
November 2, 1997, Sunday CITY EDITION
SECTION: EDITORIAL;
Pg. 9,
Your Views
LENGTH: 563 words
HEADLINE: Two Missions Confused
BODY:
... expertise of operating room nurses.
The perioperative nurse, working with other members of the
surgical team, coordinates and manages the overall nursing care
within the operating room. The perioperative nurse is busy with
your surgical care long before you enter the operating room by
ensuring safety issues such as patient positioning, sterile
technique and anticipating the surgical team's needs.
The Association of Operating Room Nurses Inc. (AORN) is the
professional organization of perioperative nurses that unites its
members by providing education, representation and standards for
quality patient care. The association has 350 chapters and
approximately 44,000 members. Each member is dedicated to advancing
O.R. standards, enhancing the professionalism of perioperative
nurses, and promoting quality patient care.
Timothy M. Kersey, R.N., City
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SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
****************************094030******************************
SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600
MAIL-IT REQUESTED: SEPTEMBER 7, 2003 10083K
CLIENT: EW
LIBRARY: NEWS
FILE: US
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
"PERIOPERATIVE NURSE" W/20 "SURGICAL PATIENT CARE"
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 1
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1
DISPLAY FORMAT: 50 VAR KWIC
SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON VIRGINIA 22202-4600
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Copyright 2002 PR Newswire Association, Inc.
PR Newswire
August 7, 2002, Wednesday
SECTION: FINANCIAL NEWS
DISTRIBUTION: TO BUSINESS AND MEDICAL EDITORS
LENGTH: 442 words
HEADLINE: National Nursing Association Responds to JCAHO Report Linking Nursing Shortage And Reduced Patient Safety
DATELINE: DENVER, Aug. 7
BODY:
... released today that demonstrate a link between America's ongoing nursing shortage and an increase in serious patient safety issues were inevitable given nurses' critical role in identifying and minimizing patient risks, according to an association that represents more than 40,000 registered nurses nationwide.
The Association of periOperative Registered Nurses (AORN), a professional organization that comprises registered nurses who specialize in surgical patient care, reviewed and responded to a report published today by the Joint Commission on Accreditation of Healthcare Organizations (JCAHO). Perioperative nurses are nurses "who provide, manage, teach, and study the care of patients undergoing operative or other invasive procedures."
"Nurses -- including perioperative nurses -- have a long and distinguished tradition of promoting patient safety by intervening to minimize risks for patients," said Donna Watson RN, MSN, CNOR, national president, AORN, and a practicing nurse practitioner. "If there aren't enough registered nurses in hospital facilities, there is ...
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SEND TO: WINTER, ELIZABETH
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAILBOX 314
ARLINGTON, VIRGINIA 22202-4600