UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/583960
APPLICANT: COCHLEAR LIMITED
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: COCHLEAR
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CORRESPONDENT’S REFERENCE/DOCKET NO: COCH-0015-1
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/583960
This letter responds to the applicant’s communication filed on April 18, 2005.
In its response, the applicant has amended the identification of goods by adopting the language proposed by the examining attorney for Class 10. The amendment is acceptable and has been made of record.
In its response the applicant indicates that it provides a substitute declaration based on the belief that the original application declaration was not signed and failed to indicate that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application. The original application was signed and includes the statement, “Pursuant to Section 1(b) of the Lanham Act, as amended, 15 U.S.C. § 1051(b), Applicant has a bona fide intention to use or use through Applicant's related company or licensee the mark in commerce on or in connection with all of the goods and/or services identified below: medical electronic apparatus; namely, implantable prosthetic…” Thus, it is acceptable. The substitute declaration is also acceptable and has been made of record.
The applicant has submitted an acceptable substitute drawing that has been made of record.
The applicant will note the following issue(s) now made final.
In its response, the applicant traverses the requirement for a disclaimer of the term COCHLEAR. The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive. Accordingly, the requirement is continued and made final.
The applicant must disclaim the descriptive wording “COCHLEAR” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive because it describes the applicant’s goods as cochlear implants and hearing devices for use with the cochlea or cochlear nerve. The examining attorney relies on the dictionary definitions previously made of record along with the attached third party registrations showing the term disclaimed for the same or similar goods. The examining attorney also relies on the following Lexis-Nexis story excerpts referencing cochlear implants and systems that can restore hearing via the cochlea or cochlear nerve. Finally, the examining attorney relies on the attached web pages from the applicant’s web site in which the applicant identifies its products as cochlear implants. Please see attached story excerpts and web pages resulting from a computerized database search performed on May 4, 2005.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use COCHLEAR apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
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).
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class. The new fee requirements will apply to any fees filed on or after January 31, 2005.
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Tracy L. Fletcher/
Trademark Examining Attorney
Law Office 115
U.S. Patent & Trademark Office
Telephone: (571) 272-9471
Facsimile: (571) 273-9471
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
Print Request: Selected Document(s): 3-6,8-11,35,54
Time of Request: May 05, 2005 07:39 PM EDT
Number of Lines: 239
Job Number: 1841:43510559
Client ID/Project Name:
Research Information:
News, Most Recent Two Years (English, Full Text)
cochlear w/10 hearing
3 of 1970 DOCUMENTS
Copyright 2005 Detroit Free Press
All Rights Reserved
Detroit Free Press
May 3, 2005 Tuesday 1 EDITION
LENGTH: 726 words
HEADLINE: Cochlear implants used for serious hearing loss;
Auditory nerve gets electrical stimulation
BYLINE: BY LAURALEE ORTIZ; FREE PRESS SPECIAL WRITER
BODY:
...Michigan's Cochlear Implant Program. The Food and Drug Administration approved devices for children in 1990. "They stimulate the nerve of hearing directly instead of using the outer and inner ear functions."
Different from a hearing aid, which amplifies sound, a cochlear implant compensates for damaged or nonworking parts of the inner ear. In normal hearing, parts of the inner ear convert sound waves in the air into electrical impulses. These impulses are then sent to the brain, where the hearing person recognizes them as sound.
A cochlear implant works in a similar manner, Telian says.
The components include:
*A microphone that picks up sounds from the environment.
*An external speech processor that selects and arranges those sounds.
*An external ...
4 of 1970 DOCUMENTS
Copyright 2005 St. Louis Post-Dispatch, Inc.
St. Louis Post-Dispatch (Missouri)
May 3, 2005 Tuesday
FIVE STAR LATE LIFT EDITION
SECTION: ST. CHARLES COUNTY POST; Pg. 3
LENGTH: 656 words
HEADLINE: Shop's die cast cars make the heart go vroom
BYLINE: BY LACEY BURNETTE Of the Post-Dispatch
BODY:
...disease.
"I've always been hearing impaired. I remember when I couldn't here crickets any more and things like that," he said. "Seven years ago when I did my student teaching they made me get a hearing aid."
Atwood believes he may eventually be a candidate for a cochlear implant, which would allow him to regain some hearing. But he's not sure he would do that. He reads lips extremely well.
But that doesn't get a teacher through a special-education class. He's on leave from Fort Zumwalt.
In the classroom, he said, "behavior ...
5 of 1970 DOCUMENTS
Copyright 2005 Canada NewsWire Ltd.
Canada NewsWire
May 2, 2005, Monday
SECTION: DOMESTIC NEWS
DISTRIBUTION: Attention News/Assignment/Health/Photo Editors
LENGTH: 617 words
HEADLINE: Media Advisory/Photo Opportunity - Sick Kids celebrates 500th cochlear implant during Speech and Hearing Awareness Month
DATELINE: TORONTO, May 2
BODY:
To mark May as Speech and Hearing Awareness Month,
the Cochlear Implant Program at The Hospital for Sick Children (Sick Kids) is
celebrating on Tuesday, May 3, the gift of sound for patients who have
received cochlear implants. Since the Sick Kids ...
Researchers are studying whether enhanced speech understanding and an improved
ability for a child to identify the location of a sound may be achieved
through the addition of a second cochlear implant.
Different from a hearing aid, which amplifies sound, a cochlear implant
bypasses the work of the non-functioning inner ear. It consists of three
parts: an electrode array surgically placed in the cochlea; a transmitter and
microphone worn behind the ear; and a ...
6 of 1970 DOCUMENTS
Copyright 2005 Nationwide News Pty Limited
Gold Coast Bulletin (Australia)
May 2, 2005 Monday
LENGTH: 382 words
HEADLINE: Kids must be saved from killer disease
BODY:
...many families still do not realise the importance of protecting their children from the killer bug.
Pneumococcal is not as likely to kill as meningococcal, but its effects are still heartbreaking. Children such as Kye Montgomery can suffer total hearing loss within just hours as the disease calcifies the cochlear.
Many devastated families have one thing in common - they did not know a vaccine for the illness existed. Even now that the vaccine is free for all children under two, there are many toddlers ...
8 of 1970 DOCUMENTS
Copyright 2005 PR Newswire Association LLC.
All Rights Reserved.
PR Newswire US
May 2, 2005 Monday 02:00 PM GMT
LENGTH: 440 words
HEADLINE: PA Labor and Industry Celebrates May as Better Speech and Hearing Month
DATELINE: HARRISBURG, Pa. May 2
BODY:
...areas, having hearing screened early and checking with a qualified audiologist and/or otolaryngologist if you experience any changes in hearing. For those who are deaf or hard of hearing there are many devices available to assist in communication such as hearing aids, assistive listening devices, amplified telephones, captioned telephones, cochlear implants, real-time caption and video remote interpreting.
"I know first-hand the struggles that those who are deaf, deaf and blind and hard of hearing face, not only in the business world, but ...
9 of 1970 DOCUMENTS
Copyright 2005 Johnson Publishing Company, Inc.
Ebony
May 2005
SECTION: FRONT ROW; Center Stage; Pg. 24
LENGTH: 401 words
HEADLINE: Connie Briscoe;
Best-Selling Author and Novelist
BODY:
AS a young girl, she had difficulty hearing. In college, the problem worsened. By the time she reached her 30s, she was nearly deaf. But now, after successful cochlear-implant surgery which restored 80 percent of her hearing, Connie Briscoe, the 52-year-old best-selling author, wife and mother of two, can hear the melodious sounds of success ringing loud and true.
GRAPHIC:
Picture, Connie Briscoe won her battle with hearing loss through successful cochlear-implant surgery. She has sold over 1 million books worldwide., Ctsy. Connie Briscoe
10 of 1970 DOCUMENTS
Copyright 2005 Newsday, Inc.
Newsday (New York)
May 1, 2005 Sunday
NASSAU AND SUFFOLK EDITION
SECTION: NEWS; Pg. A72
LENGTH: 472 words
HEADLINE: NEW YORK;
Charles Salk, 89, union rep, former postal clerk
BYLINE: BY HILARY JOHNSON. STAFF WRITER
BODY:
...Army during World War II as a postal clerk in San Francisco. The Army fitted Salk with hearing aids, his wife said, and over the years he underwent about six operations for his hearing, but they were all unsuccessful, until eight years ago a cochlear implant helped him. "My father didn't believe in 'I can't,'" his daughter said.
Around 1950, Salk met his future wife, Reva Gerb, at a union dance in Chelsea. She ...
11 of 1970 DOCUMENTS
Copyright 2005 Nursing Home & Elder Business Week via IncRx.com via NewsRx.com and NewsRx.net
Nursing Home & Elder Business Week
May 1, 2005
SECTION: EXPANDED REPORTING; Pg. 127
LENGTH: 422 words
HEADLINE: UNIVERSITY OF CALIFORNIA, IRVINE;
Combined acoustic and electric hearing enhances speech, music recognition
BODY:
The combination of acoustic and electric hearing can enhance speech and music recognition in cochlear implant recipients.
"Speech recognition in noise and music perception is especially challenging for current cochlear implant users," scientists in the United States explained.
In a recent study, Y.Y. Kong and coauthors at the University of California-Irvine utilized "the residual acoustic hearing in the nonimplanted ear in five cochlear implant users to elucidate the role of temporal fine structure at low frequencies in auditory perception, and to test the hypothesis that combined acoustic and electric hearing produces better performance than either mode alone."
35 of 1970 DOCUMENTS
Copyright 2005 Biotech Law Weekly via LawRx.com via NewsRx.com and NewsRx.net
Biotech Law Weekly
April 15, 2005
SECTION: EXPANDED REPORTING; Pg. 61
LENGTH: 217 words
HEADLINE: COCHLEAR AMERICAS;
FDA approves new cochlear implant system
BODY:
The Nucleus Freedom is designed to mimic functions of the human ear.
"The Nucleus Freedom is the first device to offer SmartSound, a combination of three unique sound technologies designed to enable better hearing in everyday listening situations. It is also the only cochlear implant system with a water-resistant speech processor, allowing users to participate in activities around water while wearing the speech processor," said Chris Smith, president, Cochlear Americas.
The Nucleus ...
54 of 1970 DOCUMENTS
Copyright 2005 Washington Business Information, Inc., All Rights Reserved
Devices & Diagnostics Letter
April 11, 2005
SECTION: Vol. 32, No. 15
LENGTH: 567 words
HEADLINE: CMS Expands Cochlear Implant Coverage
BODY:
...Advanced Bionics hoped that this extension of coverage within approved clinical studies for patients with up to 60 percent sentence discrimination scores would lead to further studies that could provide "an opportunity to demonstrate the benefit of cochlear implantation for additional beneficiaries."
Cochlear implants help patients with sensorineural hearing loss or nerve deafness, which results when hair cells in the inner ear have been damaged and fail to perform their normal function of converting sound waves into electrical currents. The devices do not restore normal hearing; rather, the devices provide an improvement in the use of sound.
The cochlear implant consists of three parts: a headpiece, speech processor and a receiver. With the implant, sound is picked up by a microphone in a headpiece worn behind the patient's ear. The sound is ...