Offc Action Outgoing

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  76/508786

 

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

 

Search Results

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.

 

2(e)(4) - Surname Refusal

The examining attorney refuses registration on the Principal Register because the mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §1211.  The examining attorney must consider the primary significance of the mark to the purchasing public to determine whether a term is primarily merely a surname.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).  Please see the attached evidence from the Lexis/Nexis database, establishing the surname significance of the mark.  TMEP §§1211 et seq. 

 

An applicant may register a surname under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by establishing acquired distinctiveness.  The applicant may present any of the following to establish distinctiveness.  TMEP §§1211 and 1212.02(a). 

 

(1) The applicant may rely on a claim of ownership of one or more prior registrations on the Principal Register for a mark which is the same as the mark in this application for the same or related goods.  37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

 

(2) The applicant may provide a statement that the mark has become distinctive of the applicant’s goods/services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years next preceding the date of the statement.  The applicant must verify this statement with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.

 

(3) The applicant may submit actual evidence of acquired distinctiveness.  37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.

 

Identification of Goods/Services

 

The identification of goods and services is unacceptable as indefinite because the nature of some of the goods and services is unclear.  The applicant may adopt the following identification, if accurate:    TMEP §1402.01.

 

Class 9:

 

Data processors; electronic apparatus for recording and transmitting data, namely, [specify type of instrument by common commercial name]; computer software recorded on disks for use in [specify function or purpose of software], measuring apparatus and instruments, namely, [specify items by common commercial name] for recording measured physical data in the nature of [indicate type of data being measured]; operating software and interface device for all the aforesaid instruments for use in remote transmission of information and data or remote control functions; computers and data processors the monitoring of patients.

 

Class 10:

 

apparatus for use in medical analysis, namely, [specify items by common commercial name]; medical apparatus and instruments, namely, [specify b y common commercial name]; electrocardiographs; spirometers; medical diagnostic equipment for measuring heart, circulation, breathing and lung functioning; testing instruments for medical purposes, namely, [specify by common commercial name]; resuscitation apparatus, namely, respirators for artificial respiration; medicotechnical apparatus for electronic acquisition, or capture, processing, presentation, storage, transmission and printing of patient’s physiological data, namely, [specify types of data recorded e.g. temperature, oxygen saturation, respiration, cardiac rhythms etc.] for medical treatment and diagnostic purposes.

 

Class 38:

 

Providing high speed access to area networks and global computer networks for remote access of data and documents.

 

Class 39:

 

Electronic storage of files and documents

 

Class 42:

 

Computer programming for others

 

The wording “PROVIDING OR LEASING ACCESS TIME TO DATA OR DOCUMENTS STORED ELECTRONICALLY IN COMPUTER DATABASES FOR REMOTE ACCESS” in the recitation of services is no longer accepted as an identification because the “leasing access time” is ancillary to the service of providing specific content on a site. The service is providing information in a specific field or topic and the service is classified according to the subject matter.  The applicant may amend this wording to “Providing online information in the field of [specify subject or topic],” if accurate.  TMEP §1402.11.  As noted, the correct classification will depend upon the subject matter of the information.  As a result, it might be necessary for the applicant to add a class of services and fulfill any other requirements for a combined application.

 

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 or services that are not within the scope of the goods and services recited in the present identification.

 

Certificate Required

An application under Trademark Act Section 44(e), 15 U.S.C. §1126(e), must include a copy of a foreign registration from the applicant’s country of origin.  The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.

 

The application does not contain a copy of the foreign registration.  Therefore, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration.  If the foreign certificate of registration is not written in English, the applicant must provide an English translation.  The translator should sign the translation.  See TMEP §§1004.01 and 1004.01(b).

 

Option to Delete Basis

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. 

 

Fee Increase

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

Applicant may respond to this Office action using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces processing time and eliminates the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to Office actions.  Applicants using TEAS should not submit a duplicate paper copy of the response.

 

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

 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

703-306-7914; 703-746-8116 (fax)

ecom116@uspto.gov (formal response only)

 

 

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.