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  76/496024

 

 

Action on this application was previously suspended pending the disposition of an earlier-filed application for a potentially conflicting mark.  Updated Office records now indicate that the prior application has abandoned, and is thus no longer a potential bar to registration of the applicant’s mark under Section 2(d).

 

Accordingly, this application is now removed from suspended status.  In light of the fact that the only remaining issue is the requirement for an acceptable identification and classification of goods (with the previous suspension letter having continued this requirement), the examining attorney finds that this requirement must now be maintained and made FINAL.  However, the applicant should have little difficulty in complying with this requirement within the response period to this final action, and the applicant is encouraged to telephone the examining attorney for further assistance or to resolve the issue by means of an Examiner’s Amendment.

 

 

Identification and Classification of Goods

 

The original identification read as follows:  “equipment for back, neck and balance rehabilitation; office management and staff communications systems and consulting.”  In the initial Office action, the examining attorney required that the applicant clarify the nature of the goods and/or services, and provided the requirements for a multi-class application in light of the fact that the wording appeared to identify goods/services in more than one class.  In particular, the examining attorney noted that the “equipment for back, neck and balance rehabilitation” could be identifying Class 10 medical equipment or Class 28 exercise equipment.

 

The applicant submitted a response to the initial Office action in which the identification was amended to read as follows:  “exercise equipment, namely, machines, tables, weights and mats for back, neck and balance rehabilitation” in Class 28.

 

As discussed in the previous suspension letter, the examining attorney finds that the applicant’s amendment must be further clarified in order to ensure that the goods are properly classified.  Specifically, this Office distinguishes between exercise equipment for therapeutic/rehabilitative purposes (Class 10) and exercise equipment for purposes of physical conditioning (Class 28).  Third-party registrations were attached to the previous suspension letter as examples of how such goods are identified and classified in keeping with this distinction between Class 10 and Class 28, and the examining attorney noted that where the goods are used for both types of purposes, the goods will be listed in both classes using the appropriate purpose-related wording for each class.

 

In this case, the applicant has identified the particular types of exercise equipment and has specified (in keeping with the scope of the original identification) that such equipment is “for back, neck and balance rehabilitation” – with this phrase describing a Class 10 therapeutic/rehabilitative purpose for the goods.  The applicant, however, classified the goods in Class 28.

 

Accordingly, the examining attorney finds that further clarification of the identification is required to ensure that the goods are properly identified and classified.  Either of the following (or both, if the goods are used both for therapeutic/rehabilitative purposes as well as for conditioning and strengthening purposes) would be acceptable:

 

Class 10: Exercise equipment for therapeutic purposes, namely, machines, tables, weights and mats for back, neck and balance rehabilitation

 

Class 28: Exercise equipment for physical conditioning and strengthening, namely, machines, tables, weights and mats for back, neck and balance improvement

 

The above suggestions clarify the purposes of the goods in view of this Office’s distinction between Class 10 and Class 28 equipment, and the examining attorney finds that either or both of these identifications would be permitted as within the scope of the original identification, since the original reference to “back, neck and balance rehabilitation” could be referring to actual physical therapy or more to physical conditioning/strengthening.

 

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

        

            (1)  The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

        

            (2)  The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  The filing fee is currently $335 per class.    

 

Accordingly, for the above reasons, the requirement for an acceptable identification and classification of goods is hereby made final.  If the applicant chooses not to add a second class (or if the applicant has a deposit account for purposes of paying for an additional class), then this issue may be resolved in an expedited manner by means of an Examiner’s Amendment.

 

 

Options

 

Please note that the only appropriate response to a final action is 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).

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

        /Elizabeth A. Hughitt/

/Elizabeth A. Hughitt/

Examining Attorney

Law Office 111

(571) 272-9384

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.