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  76/536234

 

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

 

INDEFINITE IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable as indefinite because it states goods in multiple classes without delineating them by class, and uses vague language.  In the first part of the identification, the specific nature of the medical devices must be stated. If the goods are truly medical devices, meaning that they are for use actually in touching  the patient or as diagnostic devices, they would fall in class 10.  However, software and other computer type goods used for collecting or analyzing data from a medical device do not fall in class 10, but rather fall in class 9.  If the items after the first semi-colon are used only for collecting or analyzing data, they fall in class 9.  The function of the software and type of software must be stated.  Note that the software would fall in class 10 only if it actually controlled the operation of the medical device.  Amendment and proper classification are required.  TMEP §1402.01.

 

The applicant may adopt the following identification, if accurate:

Computer monitor, computer hardware, computer peripherals, and computer software for analyzing and displaying data obtained from a … [state general nature of the medical device], relating to the autonomic nervous system, all sold as a unit.  In class 9.

 

Medical devices, namely,…[state the specific nature of the device], for monitoring and assessing the reactivity of the autonomic nervous system.  In class 10.

 

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.

 

MULTIPLE CLASS REQUIREMENTS

 

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).

 

The applicant must list the goods by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

SEARCH CLAUSE

 

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.

 

If the applicant has any questions about this Office action, please telephone the assigned examining attorney.

 

 

 

/Steven Foster/ Trademark Attorney

Law Office 106

(703) 308-9106 Ext. 123

Fax number for the Law Office: (703) 746-8106

E-mail responses: ecom106@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.