Offc Action Outgoing

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 76/562007

This letter is in response to the applicant’s written communication concerning the referenced mark. The information contained in the applicant’s correspondence has been entered into the record, including applicant’s acceptable substitution of filing basis for the Class 5 goods and statement that the mark is not in color.

The applicant is advised of the following:

Identification of Goods – Classes 9 and 10

Portions of the identification of goods remain unacceptable as indefinite. TMEP §1402.01. Particularly, applicant’s use of “systems,” “equipment” and “tools” without further specification of the encompassed goods is unacceptable. In addition, if the software in Class 9 is not operating software, applicant must specify the function of the programs. The applicant may adopt the following identification, if accurate:

Class 9 – Lasers for non-medical purposes; laser beam scanning systems,[1] namely, [specify each item comprising the system by its common commercial name] for ophthalmic application for lasers for non-medical purposes; laser beam scanning apparatus and equipment, namely, [specify each item composing the equipment by its common commercial name] for lasers for ophthalmic application for non-medical purposes; tracking systems,[2] namely, [specify each item comprising the system by its common commercial name] for ophthalmic application for lasers for non-medical purposes; tracking apparatus and equipment, namely, [specify each item composing the equipment by its common commercial name] for ophthalmic application for lasers for non-medical purposes; parts, fittings and accessories for the aforesaid goods; software [specify the function of the programs, e.g., for use in database management, use as a spreadsheet, word processing, etc.] and computer programs for non-medical lasers, non-medical laser beam scanning systems, non-medical laser beam scanning apparatus, tracking systems for non-medical lasers, tracking apparatus for non-medical lasers, ophthalmic purposes involving the use of apparatus for the diagnosis, correction, treatment and detection of vision and eye problems, ophthalmic procedures involving the use of apparatus for the diagnosis, correction, treatment and detection of vision and eye problems, ophthalmic surgery involving the use of apparatus for the detection, diagnosis, correction and treatment of vision and eye problems, eye tracking and ancillary procedures involving the use of apparatus for the detection, diagnosis, correction and treatment of vision and eye problems, ophthalmic apparatus, ophthalmic equipment and diagnostics for measuring the visual pathways of the eye.

Class 10 – Lasers for medical purposes, namely, lasers for ophthalmic surgery and ophthalmic procedures; laser beam scanning systems, namely, [specify each item comprising the system by its common commercial name] for ophthalmic application for lasers for medical purposes; laser beam scanning apparatus and equipment, namely, [specify each item composing the equipment by its common commercial name] for ophthalmic application for lasers for medical purposes; tracking apparatus and equipment, namely, [specify each item composing the equipment by its common commercial name] for ophthalmic application for lasers for medical purposes; medical apparatus, equipment and instruments, namely, eye scanning apparatus and equipment, namely, [specify each item composing the equipment by its common commercial name] involving the use of apparatus for the detection, diagnosis, correction and treatment of vision and eye problems; eye tracking apparatus and equipment, namely, [specify each item composing the equipment by its common commercial name] involving the use of apparatus for the detection, diagnosis, correction and treatment of vision and eye problems; diagnostic apparatus, equipment and tools, namely, [specify each item composing the equipment and tools by its common commercial name] for ophthalmic application for measuring the visual pathways of the eye; parts, fittings and accessories in this class for any of the aforesaid goods.

The identification of goods for Class 5 is acceptable as currently worded.

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

Final Refusal

The requirement that the applicant submit an acceptable identification of goods is hereby made final.

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).

/Matthew J. Pappas/

Law Office 105

HELP LINE: 571/272-9250

matthew.pappas@uspto.gov (informal)

571/272-9206 phone

571/273-9105 fax

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.

[1] Applicant may substitute “laser beam scanners” without further explanation (same applies for Class 10).

[2] Applicant may substitute “trackers” without further explanation.