UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/511970      

 

NOTICE OF SUSPENSION

 

This letter responds to the applicant’s communication filed on April 13, 2004 in which the applicant amended the identification of goods, claimed ownership of a prior registration, discussed significance of the wording in the mark, and argued against the citation of three prior pending applications for potential likelihood of confusion under Trademark Act Section 2(d). 

 

The applicant’s claim of ownership is acceptable and has been entered in the record.

 

Potential Likelihood of Confusion – Citations Withdrawn as to Serial Nos. 75147625 and 75147629  

Prior pending Application Serial Nos. 75147625 and 75147629 have abandoned.  As a result, the citation of prior pending Application Serial Nos. 75147625 and 75147629 is withdrawn.

 

Option to Delete Basis

The applicant’s April 13, 2004 communication predicated the deletion of the Section 1(b) filing basis on whether the application is otherwise in condition for publication.  Because the application is not otherwise in condition for publication, the Section 1(b) filing basis has not been deleted.  

 

Identification of Goods – Requirement Continued

The October 13, 2003 Office Action required the applicant to provide an acceptable identification of goods and proper classification of the same.  The applicant amended the identification of goods in its April 13, 2004 communication. 

 

While some of the amended identification is acceptable, the following wording remains unacceptable as indefinite and/or overly broad because it is not sufficiently clear for proper classification or it could include items classified in other classes:

 

“Diagnostic apparatus and instruments … magnetic resonance CT apparatus, … blood testing apparatus, … clinical probes, … clinical thermometers, … surgical excisers, … surgical amputaters … electric bone operating machines, … surgical raspatries … anaesthetic inhalers, … pneumothorax apparatus, … puncture apparatus for therapeutic purposes, … sprayers for medical purposes, … suture apparatus for medical purposes, … instrument cabinets for hospital use, … prescription table for hospital use, … pharmaceutical apparatus and instruments;  … dental cleansers, … dental spreaders, … dental broaches and dental units; … castration devices for pets and livestock, … obstetric devices for pets and livestock, … veterinary devices and instruments for operating on pets and livestock, … horseshoeing devices and instruments, … supporters for medical purposes, … splints for medical purposes, … acoustic aids for the deaf, … X-ray CT scanners; … dropping pipettes for medical purposes, … teats for medical use; … clothing for medical purposes, namely scrubs, tops, shirts, pants, caps; … patient clothing, namely shirts, pants, jackets, caps and gowns for medical use; … surgical aprons; … pillow cases for surgical use; bed sheets specifically for surgical purposes”.

 

TMEP §§1402.01 and 1402.03.

 

As a result of the foregoing, the requirement for an acceptable identification of goods and proper classification of the same is CONTINUED.

 

The applicant may amend the identification and classification to the following, if accurate.   [Changes are noted in bold type.]:  

 

“Biological tissue intended for subsequent implantation, namely, bone joints for surgical purposes” in International Class 005

 

“Laboratory apparatus, namely, centrifuges for use in blood testing; pharmaceutical apparatus and instruments, namely, electronic apparatus for testing the sterility of pharmaceuticals and injectable solutions” in International Class 009

 

“Prescription reminder pads for hospital use” in International Class 016

 

“Medical diagnostic apparatus and instruments, namely gastroscopes, magnetic resonance CT imaging apparatus, keratoscopes, tonometers, speculums, sphygmomanometers, pelvimeters, clinical urethral and cardiac probes, electrocardiographs, tongue depressors, clinical thermometers for medical use, body-fat monitors, percussion hammers, stethoscopes, audiometers, electroencephalographs and blood testing apparatus, namely, blood drawing apparatus and blood glucose meter; surgical apparatus and instruments, namely sharp curettes, surgical retractors, surgical forceps, surgical elevators, thoracoscopes, obstetric dilators, gynecological dilators, surgical excisers, namely, surgical scissors, surgical amputaters and electric bone operating machines, namely, surgical saws, surgical perforators, dressing forceps for surgical use, electric cauteries for surgical use, electric scalpels for surgical purposes, blunt curettes for surgical use, surgical knives, surgical raspatries for use in [indicate type of surgery or purpose], surgical scissors, platinum cauteries for surgical use, bougies and anaesthetic masks; injection needles for nerve block; therapeutic apparatus and instruments, namely therapeutic inhalers, radio-frequency electrodes for pain therapy, oxygen inhalers for therapeutic purposes, ultraviolet radiator units for therapeutic purposes, defibrillators, pneumothorax apparatus for reinflating a collapsed lung, heart pacemakers, mercury arc lamp units for therapeutic purposes, infrared radiator units for therapeutic purposes, puncture apparatus for therapeutic purposes, namely, acupuncture needles, lavage apparatus for therapeutic purposes, carbon arc lamp units for therapeutic purposes, injection syringes, syringe barrels, injection needles, infusion apparatus for therapeutic purpose, dialyzers, acupuncture needles, sprayers for medical purposes sold empty, suture apparatus for medical purposes, namely, suturing needles, massage apparatus for medical purposes, incubators for babies and blood transfusion apparatus; hospital supportive equipment, namely dissecting tables, wheel stretchers for patient transport, instrument stands for hospital use, instrument tables for hospital use, operating tables for surgical use, shadowless lights for use in surgical operations, examining tables for hospital use, and stretchers for patient transport; dental machines and apparatus, namely, dental sprayers for cleaning gums and teeth, dental drills, dental spreaders for use in root canal filling, dental chairs, dental excavators, dental broaches for removing the pulp of a tooth or exploring the canal; veterinary apparatus and instruments, namely, castrating pincers for pets and livestock, obstetric apparatus for pets and livestock, veterinary devices and instruments for operating on pets and livestock, namely, [indicate specific items, e.g., scalpels, blades and staplers and/or indicate type of surgery or purpose], and horseshoeing devices and instruments, namely, hoof knives, hoof gauge, hoof levelers and hoof picks; auxiliary medical machines and apparatus, namely supports for medical purposes, artificial eyes, artificial limbs, artificial skin for surgical purposes, health trusses, straight jackets, splints for medical purposes [indicate use, e.g., arms, legs, fingers, and/or orthopedic or surgical], anus prolapse bands, umbilical belts, elastic stockings for medical purposes, abdominal belts for medical purposes, hearing aids for the deaf, acoustic aids for the deaf, namely, [indicate specific item(s)], Bone joint surgical implants composed of artificial materials, crutches, medical X-ray apparatus and X-ray diagnostic apparatus, namely, X-ray CT scanners; ice bag pillows for medical purposes; triangular elastic bandages; orthopedic supportive bandages; surgical catguts; feeding cups for medical purposes, dropping pipettes for medical purposes that are used for [specify use]; teats for medical use in feeding bottles; medical ice bags; medical ice bag holders; baby bottles; vacuum bottles for nursing; finger guards for medical purposes; non-chemical contraceptive apparatus, namely condoms and pessaries; artificial tympanic membranes; gloves for medical use; electric massage apparatus; urinals for medical purposes; bed pans; ear picks for medical use; clothing for medical purposes, namely surgical scrubs, tops, shirts, pants, caps, and surgical aprons; patient clothing, namely shirts, pants, jackets, caps and gowns for medical examination use; masks for surgical purposes; surgical drapes; shoe covers for surgical purposes” in International Class 010

 

Dental units, namely, heated plymerization units for [indicate use] dental restoration compounds” in International Class 011.

 

Instrument cabinets for hospital use, namely, wheeled cabinets for transporting medical supplies” in International Class 012

 

“Pillow cases and bed sheets used with surgical recovery beds and pillows” in International Class 024.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

The applicant is reminded that an application may be amended to clarify or limit the identification, but 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.

 

Combined Applications

The applicant is reminded that if it 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.  

 

Request for Information – Requirement Continued

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The October 13, 2003 Office Action required the applicant to “submit samples of advertisements or promotional materials for goods of the same type … [or] a photograph of similar goods”.  In its April 13, 2004 communication, the applicant stated that “such materials are not available at this time”. 

 

However, samples of advertisements or promotional materials or a photograph of the following goods is necessary to permit proper examination of the application: “percussion hammers, cauteries, needles, and arc lamp units”.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

As a result, the requirement for the above stated information is CONTINUED.

 

Significance of Wording in the Mark

Although the applicant generally discussed the significance of the wording in the mark, the applicant must indicate whether any of the identified goods incorporate, use or are used with one or more “long, relatively slender, generally rounded piece[s] of wood or other material” and/or one or more “magnetic pole[s]”.  (See attached entries from The American Heritage Dictionary of the English Language, Fourth Edition, 2000.)  37 C.F.R. §2.61(b).

 

Potential Likelihood of Confusion – Citation Continued as to Application Serial No. 78095203

While the applicant correctly notes that it owns U.S. Registration No. 2679109 for the typed mark “POLE”, cited prior pending Application Serial No. 78095203 is still active and has not abandoned.  As a result, the citation of prior pending Application Serial No. 78095203 is CONTINUED.

 

Action on this application is suspended pending the disposition of:

 

                        - Application Serial No(s). 78095203

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application(s) was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

 

/Nelson B. Snyder III/

Trademark Examining Attorney

Law Office 103

(703) 308-9103 ext. 147

(703) 746-8103 (fax)