UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

Serial Number  76/556710

 

The examining attorney has reviewed the applicant’s response to the first Office action on its Statement of Use, submitted on 10/18/05, and has determined that the substitute specimens are also unacceptable. Therefore, the requirement that the applicant submit a substitute specimen of use and a declaration in support is continued and made final.

 

SPECIMEN UNACCEPTABLE/REQUIREMENT THAT APPLICANT SUBMIT A SUBSTITUTE SPECIMEN AND DECLARATION IN SUPPORT CONTINUED AND MADE FINAL

 

In the first Office action, the examining attorney required that the applicant submit a substitute specimen and a declaration in support.  The applicant has submitted various substitute specimens, all of which are unacceptable.  Therefore, the requirement that the applicant submit a substitute specimen and a declaration in support is continued and made final.

 

The current specimens comprise:

 

1. Apneoplasty surgical form:  This tends to indicate that the devices have been implanted but does not show use of the mark on or in connection with the goods or on packaging for the goods.

 

2. Tongue Implant label, Pharyngeal Wall implant label:  Although labels are often acceptable as specimens of use for goods, neither of these is acceptable because neither shows use of APNEOPLASTY in  connection with the goods. 

 

3. 1^st page of instructions for use for Apneon Magnetic Implants: While instructions are sometimes acceptable as specimens of use for goods if they show use of the mark and are packaged with the goods, these instructions are unacceptable because APNEOPLASTY does not appear on the instructions.   The examining attorney understands that APENOPLASTY IMPLANTS is the proprietary device name that corresponds to the common/generic device name APNEON MAGNETIC IMPLANTS, however, there is no reference to this on the instructions, and APNEOPLASTY does not appear in any form.

 

4. FDA Device Registration, FDA Device Listing Database:  Neither of these is acceptable in form as a specimen of use.  Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.  FDA device registrations do not fall into any of these categories:  the registrations do not show use of the mark in commerce, merely that it is registered with a United States federal agency.

 

In view of the above, Applicant must submit a specimen showing use of the mark for the goods and/or services specified in the application, because the specimen currently of record does not show use of the mark for any goods and/or services identified in the statement of use.  37 C.F.R. §§2.56 and 2.88(b)(2); TMEP §1109.09(b).  Applicant must also submit a statement that “the substitute specimen was in use in commerce prior to the expiration of the time allowed applicant for filing a statement of use,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(b)(2); TMEP §904.09.

 

The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:

 

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce prior to the expiration of the time allowed to the applicant for filing a statement of use; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

RESPONSES TO FINAL OFFICE ACTIONS

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/nancy clarke/

Nancy Clarke

Trademark Examining Attorney

Law Office 102

Tel. (571) 272-9253

Fax (571) 273-9102

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.