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  76/656230

 

THIS IS A FINAL ACTION

 

This letter responds to applicant’s communication dated 03/27/2007. Registration was refused under Trademark Act Section 6, 15 U.S.C. Section 1056, TMEP sections 1213, because the term   for which registration is sought is primarily merely descriptive of one of the traits of the goods. Additionally, applicant’s identification was found to be unacceptable as submitted due to the broad nature of the description of the goods.  Therefore, the amended identification was refused pursuant to TMEP section 1402.01.

 

The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 1213 is maintained and made FINAL.  Additionally, the applicant’s amended identification of goods is unacceptable as indefinite due to improper use of punctuation.  Therefore, the refusal under TMEP section 1402.01 is also maintained and made FINAL.

 

DISCLAIMER - FINAL REFUSAL

 

The applicant argues that the term COCHLEAR is suggestive of applicant’s goods. The applicant did not submit any evidence to support its arguments.  The examining attorney came across evidence in the nature of excerpts from the internet to show that the applicant is well known for their cochlear implants and that applicant’s type of goods are used in connection with the cochlear.  The examining attorney also attached a definition of the term cochlear for your review and consideration.  Finally, attached are trademark registrations, most of which belong to the applicant, where the term COCHLEAR was disclaimed apart from the mark as shown, registered on the Supplemental Register or registered with a 2(f) claim.  The evidence is intended to support a disclaimer requirement.

 

Applicant must disclaim the descriptive wording “COCHLEAR” apart from the mark as shown because it merely describes a feature of the goods, namely, that the applicant’s devices are used in connection with the cochlear.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

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).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, 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). 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  A disclaimer does not affect the appearance of the applied-for mark.

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

 

The following cases explain the disclaimer requirement more fully:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).

 

IDENTIFICATION OF GOODS IS UNACCEPTABLE – FINAL REFUSAL

 

The applicant inserted a semicolon in the place of a comma and this way it is unclear what the “associated accessories and monitoring equipment” comprise.  Therefore, the amended identification should read as follows, if accurate:

 

Surgical instruments for use in the implantation of prosthetic hearing devices and components thereof; medical electronic apparatus, namely, implantable prosthetic hearing devices, 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 electrode arrays and medical promontory stimulators, in International Class 10.

 

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.

 

Therefore, for the reasons listed above, the refusal to register based on TMEP sections  1213 and 1402.01 are maintained and made FINAL.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

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 matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

PLEASE NOTE:  The informalities raised can be resolved by telephone or by e-mail.  The applicant may telephone or e-mail the examining attorney, instead of submitting a written response, to expedite the application.

 

 

fblandu

/fblandu/

tel. (571) 272-9128

fax (571) 273-9128

e-mail (for informal communications only) florentina.blandu@uspto.gov

 

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.