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  76/471283

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Search Value

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods

 

The applicant has applied for the mark “ACTI” for the following:

 

“Person- or animal-monitoring apparatus and instruments; apparatus and instruments for sensing or measuring physical parameters of a person or an animal or the environment of a person or an animal; apparatus and instruments for sensing or measuring the movement, activity, temperature, sound, heart rate, blood pressure, muscle tone or the like, of a person or an animal, or the light, temperature, sound, or the like, of the environment of a person or an animal; apparatus and instruments as defined and responsive to sensed or measured parameters; apparatus and instruments as defined and from which data may be downloaded to a computer; interface or analysis software and hardware for downloading and processing the aforesaid data; apparatus or instruments as defined and in the form of ambulatory devices or devices to be worn by a person or an animal” in International Class 9;

 

“Medical or veterinary monitoring apparatus and instruments; apparatus and instruments for sensing or measuring physical parameters of a person or an animal or the environment of a person or an animal; apparatus and instruments for sensing or measuring the movement, activity, temperature, sound, heart rate, blood pressure, muscle tone or the like, of a person or an animal, or the light, temperature, sound, or the like, of the environment of a person or an animal; apparatus and instruments as defined and responsive to sensed or measured parameters; apparatus and instruments as defined and from which data may be downloaded to a computer; interface or analysis software and hardware for downloading and processing the aforesaid data; apparatus or instruments as defined and in the form of ambulatory devices or devices to be worn by a person or an animal” in International Class 10.

 

The identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial name of the goods or must specify their exact nature.  TMEP section 804.   The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1). 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

The listed identification (for the goods listed in both International Class 9 and 10) in its entirety is ambiguous and considered to be too broad in nature.  The applicant is required to specify the exact subject matter and nature of the goods (i.e. medical, laboratory) and exact functionality of the goods, which will then determine the appropriate international class placement for the goods.

 

Regarding the listed computer software items, the applicant is required to specify the exact function of the programs (i.e., for use in database management of medical data) as well as the specific field (i.e. medical) of use.  The examining attorney additionally notes that the computer hardware and software will be placed in International Class 9 (and is misclassified in International Class 10).  The nature of the applicant’s computer goods may include (but not limited to):

 

• Computer software [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use] in International Class 9;

 

• Computer software [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use] that may be downloaded from a global computer network in International Class 9;

 

• Communications software for connecting [specify, e.g., computer network users, global computer networks] in International Class 9;

 

• Computer operating systems in International Class 9;

 

• Computer software for accessing information directories that may be downloaded from the global computer network in International Class 9.

 

Furthermore, if the applicant’s goods consist of combination kits (i.e., medical kits), then the primary nature and contents of kits must be specified for the record, which will then determine the appropriate international class placement for the goods (i.e., medical kits consisting primarily of medical thermometers and blood pressure monitors in International Class 10).  

 

It is generally suggested that the applicant lists the goods under a penumbra that specifies the subject matter nature of the items, and that the applicant then specifies the functionality of the goods under this acceptable penumbra.  The nature of the applicant’s goods may include (but not limited to): 

 

International Class 9

 

• Electric or electronic sensors for [indicate property being sensed]

 

• Tape measure

 

• Calibrated glassware

 

• Environmental test chamber, namely, temperature simulation equipment

 

• Lasers for measuring purposes

 

• Laboratory apparatus, namely, centrifuges

 

• Measuring apparatus, namely, bevels

 

• Electronic apparatus for testing the sterility of medical equipment

 

• Electronic apparatus for testing the sterility of pharmaceuticals and injectable solutions 

 

• Non-medical thermometers

 

International Class 10

 

• Blood pressure measuring apparatus

 

• Blood pressure monitors

 

• Optometric instruments, namely, instruments for measuring the diameter of ophthalmic lenses

 

• Embolic devices for [indicate use, e.g., treating anomalies vasculature of the body]

 

• Medical device, namely, carbon dioxide indicators

 

• Surgical instruments, namely [indicate specific items, e.g., scalpels, blades and staplers]

 

• Surgical instruments for use in [indicate type of surgery or purpose]

 

• Medical thermometers

 

The applicant may adopt the following suggested identification of goods, if accurate:

 

• “Electric or electronic sensors for measuring physical movement of humans and animals; electronic device which uses laser technology to measure outdoor physical environments of humans and animals; environmental test chamber, namely, temperature simulation equipment for measuring outdoor physical environments of humans and animals; non-medical thermometers for use in measuring temperatures of physical environments; computer operating systems consisting of computer hardware and software for use in database management and compilation of physical, medical or laboratory data regarding environmental parameters and measurement of movement, activity, temperature, sound, heart rate, blood pressure, muscle tone, light sensitivity of persons and animals for use in the medical or veterinary fields in International Class 9;

 

• “Medical, veterinary and laboratory equipment, namely, electronic blood pressure measuring apparatus, blood pressure monitors, medical thermometers, stethoscopes, digital electrocardiograph for use on humans and animals” in International Class 10.

 

The suggested identification specifies and properly classifies the goods.  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 goods that are not within the scope of goods set forth in the present identification.

 

This is not an exhaustive list of identifications.  Please check the Office’s website for additional acceptable identifications of goods and services at the following website:

 

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

 

Signed Declaration Required

 

The application must be signed, and verified or supported by a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.33.  No signed and dated verification or declaration was provided.  Therefore, the applicant must provide a signed and dated verification or signed and dated declaration attesting to the facts set forth in the application.

 

If the application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the verified statement must include an allegation that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901. 

 

If the application is based on Trademark Act Section 1(b) or 44, 15 U.S.C. §1051(b) or 1126, the verified statement must include an allegation that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101. 

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §§1051(b), 1126(d) or 1126(e), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

The application must include a statement that is signed and verified or supported by a declaration under Section 2.20 by a person properly authorized to sign on behalf of the applicant.  A person who is properly authorized to sign on behalf of the applicant is:  (1) a person with legal authority to bind the applicant; or (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney as defined in 37 C.F.R. §10.1(c) who has an actual or implied written or verbal power of attorney from the applicant.  37 C.F.R. §2.33; TMEP §804.04.

 

Informational Request

 

The applicant must indicate whether “ACTI” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Response

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

   

 

 

 

/Christopher Scott Adkins/

christopher.adkins@uspto.gov

Christopher Scott Adkins

Examining Attorney

Law Office xxx

(703) 308-91xx ext.xxx 437

 

 

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.