Offc Action Outgoing

This action recognizes 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 copy of its foreign registration.

Upon further review of the referenced application, the examining attorney has determined the following. The examining attorney apologizes for any inconvenience caused by this additional requirement.

Identification of Goods

The wording “accessories” in the identification of goods is indefinite and must be clarified. TMEP §1402.01. Particularly, applicant must specify each accessory by its common commercial name. Id. Applicant may adopt the following:

Class 9 – Lasers for non-medical purposes; laser beam scanning systems for ophthalmic application for lasers for non-medical purposes; laser beam scanning apparatus and equipment for lasers for ophthalmic application for non-medical purposes; tracking systems for ophthalmic application for lasers for non-medical purposes; tracking apparatus and equipment for ophthalmic application for lasers for non-medical purposes; parts and fittings for the aforesaid goods; accessories for the aforesaid goods, namely, [specify each item by its common commercial name]; software 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 for ophthalmic application for lasers for medical purposes; laser beam scanning apparatus and equipment for ophthalmic application for lasers for medical purposes; tracking apparatus and equipment for ophthalmic application for lasers for medical purposes; medical apparatus, equipment and instruments, namely, eye scanning apparatus and equipment involving the use of apparatus for the detection, diagnosis, correction and treatment of vision and eye problems; eye tracking apparatus and equipment involving the use of apparatus for the detection, diagnosis, correction and treatment of vision and eye problems; diagnostic apparatus, equipment and tools for ophthalmic application for measuring the visual pathways of the eye; parts and fittings for the aforesaid goods; accessories for the aforesaid goods, namely, [specify each item by its common commercial name].[1]

For assistance with identifying and classifying 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.

Multiple Class Application

Because applicant is prosecuting this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods and/or services based on a foreign registration under Trademark Act Section 44(e):

(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and

(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid[2] (current fee information should be confirmed at http://www.uspto.gov).

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

Response Guidelines

There is no required format or form for responding to this Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the following information: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.). TMEP §§712 et seq.

Informational

Applicants may now file requests to change the correspondence address electronically on up to 20 applications at one time. The Office encourages applicants to use this time-saving form, available online at http://www.gov.uspto.report/teas/index.html.

The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. Please note that an application serial number or registration number is needed to be able to access this database. TARR is available 24 hours a day, 7 days a week.

Advisory

NOTICE OF IMPLEMENTATION OF THE NEW EDITION OF THE NICE AGREEMENT - CHANGES TO CLASSIFICATION APPLY TO APPLICATIONS FILED ON OR AFTER JANUARY 2, 2007: Effective January 1, 2007, the Ninth Edition of the Nice Agreement brought about significant changes to the classification of certain goods and services. All applications filed on or after January 2, 2007, must comply with the classification specified in the Ninth Edition. For applications filed before January 2, 2007, compliance with the Ninth Edition is optional; and any such applicants who opt to follow the Ninth Edition must advise the assigned trademark examining attorney. The USPTO’s online Acceptable Identifications of Goods and Services Manual, located at http://tess2.gov.uspto.report/netahtml/tidm.html, has been updated to reflect the classification changes in the ninth edition.

The Agreement brought about changes to goods previously classified in International Class 14. Most goods made of precious metal are no longer classified in International Class 14 (except jewelry, jewelry boxes, watches and other horological and chronometric instruments and gold and silver in an unfinished state). Rather, such goods are now classified in the international class relevant to their function or purpose. For example, picture frames made of precious metal, which were classified in International Class 14 under the previous edition of Nice, are now classified in International Class 20, which is the relevant international class for picture frames regardless of material composition.

The only exception to this change applies to goods whose function has no specified international class, such as sculptures or figurines, which continue to be classified based on their material composition. Thus, for example, sculptures of metal are in International Class 6, sculptures made of precious metal remain in International Class 14, clay sculptures are in International Class 19, and plastic sculptures are in International Class 20.

/Matthew J. Pappas/

Law Office 107

HELP LINE: 571/272-9250

matthew.pappas@uspto.gov (informal)

571/272-9206 phone

571/273-9107 fax

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

[1] Applicant is advised that the U.S. does not recognize “in this class” as an acceptable clarification or specification of the goods. Therefore, the examining attorney has deleted said wording from the suggested identification.

[2] To date, applicant has paid for two classes of goods.