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  76/646475

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

No Conflicting Marks

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

 

 

Section 2(e)(1) Refusal

 

Registration is refused because the proposed mark merely describes the nature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

Applicant has applied to register the mark TOUCH TEST for goods identified as “medical device for evaluating sensory perception of users.”  The definition of TOUCH is:  “To bring something into light contact with: touched the sore spot with a probe.”  The definition of TEST is “A procedure for critical evaluation; a means of determining the presence, quality, or truth of something; a trial: a test of one's eyesight; subjecting a hypothesis to a test; a test of an athlete's endurance.”  Used together as TOUCH TEST, the mark immediately describes the nature of the goods, that is, that they are used in a procedure that relies on bringing something, in this case the medical device, into light contact with the skin. 

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

 

Prior Registration on Supplemental Register Does Note Establish Distinctiveness

 

An applicant may not base a claim of acquired distinctiveness under Trademark Act Section 2(f) on ownership of a registration on the Supplemental Register.  In re Canron, Inc., 219 USPQ 820 (TTAB 1983); TMEP §1212.04(d).

 

In this case, applicant has claimed that “the mark has become distinctive, as applied to the applicant’s goods as evidenced by the ownership on the Principal Register for the same mark for related goods of U.S. Registration No. 2267899.”  U.S. Registration No. 2267899 is on the Supplemental Register and therefore not eligible as a basis for claiming acquired distinctiveness in this application.

 

Section 2(f) Distinctiveness Based on Five Years’ Use

 

The record indicates that applicant has used its mark for a long time; therefore, applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness.  To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

 

Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d).

 

 

Deletion from Drawing Page

 

Applicant has duplicated the mark in the drawing by submitting TOUCH TEST as a typed word and by providing, on the drawing page, a specimen of the mark showing a display of the same mark.  The examining attorney has concluded that the drawing page does not show two materially different marks, but applicant must still delete the photograph of the goods so that the drawing page shows only one version of the mark.  TMEP §§807.01 and 807.14(a).  Applicant should resubmit the drawing page and the specimen on separate pages so that there is no confusion regarding which is which.

 

Questions

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

 

 

 

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.