Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/609005

 

The following is in response to the communication received on April 24, 2006.  The foreign registration certificate for International Class 9 is accepted.  However, the requirement that the applicant submit a foreign registration certificate for International Class 10 is hereby continued.  Although applicant states that it has submitted that foreign registration, the Office is not in receipt of the same.  Further, the requirement that the applicant amend the identification of International Class 10 goods is hereby continued.

 

A.                Foreign Registration Certificate for International Class 10

 

With respect to the goods in International Class 10 only, applicant must submit a copy of the foreign registration to satisfy the requirement of Trademark Act Section 44(e).  15 U.S.C. §1126(e).  If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

The application does not presently contain a copy of the foreign registration.  An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration or a registered extension of protection of an international registration from the applicant’s country of origin.  If applicant’s country of origin does not issue registrations or certificates of extension of protection, applicant may submit a copy of the international registration, showing that protection of the international registration has been extended to applicant’s country of origin.  TMEP §§1004 et seq. and 1016.

 

Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.

 

B.                 Identification of International Class 10 Goods Indefinite

 

The current wording used to describe the goods in International Class 10 needs clarification because applicant must identify the nature of the remote control devices, or at least describe their actual functions with respect to the ultrasound machines.  Applicant should also state whether the goods are sold with the actual ultrasound machines or sold separately.  TMEP §1402.01.

 

Applicant must rewrite the identification in its entirety, listing each good or service according to its appropriate international classification.  In the event that the application contains goods and/or services belonging in more than one international class, the applicant must list the international classes in ascending order.  37 C.F.R. §2.74(b).  Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

C.                Applicant May Wish to Divide The Application

 

Because the requirements discussed herein pertain only to the applicant’s goods in International Class 10, applicant may wish to, but does not have to, file a request to divide out the goods or services that have not been refused registration, so that the mark may be published for opposition in the class to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

D.                Partial Abandonment Warning

 

If applicant should fail to respond to this Office action within the six month time limit, then the goods and/or services specifically discussed above will be deleted from the application.  The application will then proceed forward for the remaining goods and services only.  37 C.F.R. §2.65(a).

 

 

 

 

\Scott Oslick\

Trademark Examining Attorney

Law Office 109

(571) 272-9348 (Telephone)

(571) 273-9109 (Fax - Official Responses Only)

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.