UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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  76/472071

 

FINAL OFFICE ACTION

 

This letter responds to the applicant’s response filed on December 23, 2003.  Please note that all issues not discussed in this office action have been resolved.

 

In the office action dated June 23, 2003, the applicant was required to amend its identification and classification of goods.  The applicant failed to sufficiently comply with this requirements.  Accordingly, this requirement is maintained and made FINAL.

 

Identification and Classification of Goods

 

The amended identification and classification of goods is unacceptable as indefinite an as currently classified.  The applicant must amend the identification and classification as follows.  TMEP §1402.01.

 

The wording “person and animal monitoring apparatus and instruments, namely, electrical or electronic sensors for measuring the physical movement of humans and animals and their temperature, heart rate, blood pressure, muscle tone, light sensitivity and energy expenditure; person and animal monitoring apparatus and instruments, namely, electrical or electronic sensors for measuring cardiovascular function and energy expenditure for fitness applications” is properly classified in International Class 10.

 

The wording “apparatus and instruments from which data may be downloaded to a computer, personal digital assistant, and digital cellular phone, namely, apparatus and instruments as defined above; ambulatory devices, namely, apparatus and instruments as defined above” is unacceptable as indefinite and unclear.  The applicant should note that some of the language above this wording must be reclassified.  Accordingly, use of the catchall wording “apparatus and instruments as defined above” is confusing and inappropriate.  To insure these goods are properly classified and identified, the applicant must list the items for which it is seeking registration and classify those items in the appropriate International Class.  The applicant must consistently classify and identify identical goods throughout the application regardless of any prefatory language it adds to each reiteration of the listed apparatus and instruments.

 

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 the goods recited in the present identification.  In addition, please note that this Office’s Identification of Goods and Services Manual is accessible on the USPTO’s home page at www.uspto.gov.  Lastly, the applicant should note that unless otherwise indicated above, the goods are properly identified and classified.

 

Upon removal of the application from suspension, the applicant may adopt the following identification, if accurate: 

 

Apparatus and instruments for sensing or measuring the parameters of the environment of a person or animal, namely environment sensors used to detect and monitor light, temperature and sound, movement and sleep patterns; apparatus and instruments from which data may be downloaded to a computer, personal digital assistant, and digital cellular phone, namely, _______ [list the items and classify as appropriate]; ambulatory devices, namely, _______ [list the items and classify as appropriate]; interface and analysis software and computer hardware and firmware for downloading and processing movement, cardiovascular and environmental data collected from person and animal monitoring apparatus and instruments; 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 and light sensitivity of persons and animals for use in the medical or veterinary fields, in International Class 9;

 

Person and animal monitoring apparatus and instruments, namely, electrical or electronic sensors for measuring the physical movement of humans and animals and their temperature, heart rate, blood pressure, muscle tone, light sensitivity and energy expenditure; person and animal monitoring apparatus and instruments, namely, electrical or electronic sensors for measuring cardiovascular function and energy expenditure for fitness applications; apparatus and instruments for sensing and measuring movement, namely motion sensors and detectors; medical and veterinary monitoring apparatus, namely electronic blood pressure measuring apparatus, blood pressure monitors, medical thermometers, digital electro-cardiograph monitors, physical-movement-measuring apparatus, and energy-expenditure-measuring apparatus for use on humans and animals; monitors for sensing cardiovascular function, temperature or blood pressure of a person or an animal; cardiovascular rate monitor; digital electrocardiographs for use on humans and animals; portable medical apparatus for use in monitoring and diagnosing a variety of medical conditions, namely, diabetes, eating and psychiatric disorders, in International Class 10.

 

Filing Basis Advisory – 1(b)/44(e)

 

The copy of the foreign registration is noted and accepted into the record.  Accordingly, the applicant should note the following.

 

The applicant has filed relying on its claim of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and on a foreign registration under Section 44(e), 15 U.S.C. §1126(e).  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.  The applicant must advise the examining attorney, however, if the applicant intends to rely solely on the foreign registration as the basis for registration. 

 

Unless the applicant indicates otherwise, this Office will presume that the applicant wishes to rely on Section 1(b) as well as on Section 44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed. 

 

Failure to Respond/Partial Abandonment

 

If the applicant should fail to respond to this Office action within the six month time limit, then the following goods will be deleted from the application:  Person and animal monitoring apparatus and instruments, namely, electrical or electronic sensors for measuring the physical movement of humans and animals and their temperature, heart rate, blood pressure, muscle tone, light sensitivity and energy expenditure; person and animal monitoring apparatus and instruments, namely, electrical or electronic sensors for measuring cardiovascular function and energy expenditure for fitness applications; apparatus and instruments from which data may be downloaded to a computer, personal digital assistant, and digital cellular phone, namely, apparatus and instruments as defined above; ambulatory devices, namely, apparatus and instruments as defined above.  

 

The application will then proceed forward for the remaining goods only.

 

Responding to a Final Office Action

 

The applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing 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 final action, then the goods to which the final requirement applies will be deleted from the application.  The application will proceed forward for the remaining goods only.  37 C.F.R. §2.65(a).

 

 

 

 

/Stacy B. Wahlberg/

Trademark Attorney

Law Office 113

(703) 308-9113 ext. 206

LO Fax (703) 746-8113

LO email: ecom113@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.