UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/656230
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: OCH-0015-T2
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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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 76/656230
This letter is intended to supersede the office action dated 08/16/2006 where an error pertaining to the identification of goods has been detected.
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.
IDENTIFICATION OF GOODS IS INDEFINITE
The identification of goods is unacceptable as indefinite because some of the goods were not identified with sufficient specificity. Trademark Manual of Examining Procedure Section 1402, (3rd Edition January 2002).
The applicant must also replace some semicolons with commas for purposes of continuity of the description of the goods. Additionally, the term “system” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification by listing the major parts of the system and describing the nature and use of the system. TMEP §1402.03(a). Please note that the proper classification of the major component part listed first determines the proper classification of the system as a whole. Finally, the applicant needs to reclassify some of the goods in International Class 9 instead of 10.
The applicant may adopt the following amended identification of the goods, if accurate:
“Receiver-stimulator module, electronic speech processors, audio input selectors, electric cables, and electronic headsets and related accessories, namely, electric coils, magnets, inserts, earhooks, microphones, and telephone adaptors, in International Class 009.”
“Surgical instruments for use in the implantation of prosthetic hearing devices and components thereof; medical electronic apparatus, namely, implantable prosthetic hearing devices and associated accessories and monitoring equipment, namely, programmable prosthetic hearing implants, multi-channel implantable hearing prosthesis, interface devices for programming prosthetic hearing implants via computer, medical diagnostic systems consisting of [indicate what makes up the systems], and medical programming systems consisting of [indicate what makes up the systems], medical electrode arrays, medical promontory stimulators in International Class 010.”
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.
REQUIREMENTS FOR MULTI CLASS APPLICATIONS
If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods based on actual use in commerce under Trademark Act Section 1(a):
Applicant must list the goods by international class with the classes listed in ascending numerical order;
Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
For each additional class of goods, applicant must submit:
dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
FILING FEES
The filing fee for adding classes to an application is as follows:
$325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
$375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
DISCLAIMER
Applicant must insert a disclaimer of “COCHLEAR” in the application because it informs the consumers what some of the goods are or what they are used with, namely, instruments used in connection with the ear. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213. Cochlear is defined as a spiral-shaped cavity of the inner ear that resembles a snail shell and contains nerve endings essential for hearing[1][1] and applicant’s goods are specifically designed to be used in connection with that part of the body.
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
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).
Please note, a disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone or e-mail the assigned examining attorney.
Florentina Blandu, Esq.
/FBLANDU/
l.o.117
tel. (571) 272-9128
fax (571) 273-9128
e-mail florentina.blandu@uspto.gov (for informal communications)
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.