| To: | Heraeus Kulzer GmbH (ndkramer@mindspring.com) |
| Subject: | TRADEMARK APPLICATION NO. 76680984 - PALACOS - Heraeus 1151 |
| Sent: | 11/25/2007 12:11:58 PM |
| Sent As: | ECOM111@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/680984
MARK: PALACOS
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Heraeus Kulzer GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 11/25/2007
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Applicant has not specified a filing basis for the application. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §2.32(a)(5); TMEP §806. An application may be filed based on any of the following:
(1) Use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));
(2) A bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));
(3) A claim of priority, based on an foreign application filed within six months of the filing date of the U.S. application, under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c)); and/or
(4) A foreign registration of a mark in applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)).
Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. TMEP §806.
Depending on the circumstances, applicant may be entitled to assert more than one of the above bases for filing. In such a case, applicant must: (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies. See 37 C.F.R. §2.34; TMEP §§806.02 et seq.
Although multi-basis applications are permitted, applicant may not assert both use in commerce and intent to use for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
The wording in the identification of goods is unacceptable as indefinite because it fails to indicate, with greater specificity, the particular type of goods being provided by the applicant. Specifically, the wording “medical apparatus and instruments” and “plastic materials,” standing alone, is indefinite and too broad. Applicant must amend the identification to further clarify the nature of said goods. Moreover, please note that the identified goods are properly classified in at least three International Classes. If applicant chooses to add a class to the application, then applicant must comply with the requirements for combined applications as outlined below. The applicant may amend this wording to the following, if accurate. TMEP §1402.01.
Bone cement for surgical and orthopaedic purposes, in International Class 5.
Medical apparatus and instruments, namely, ____ [specify, e.g., spatulas, spoons] for processing bone cement; plastic material for embedding and fixation of bones and cartilage; in International Class 10.
Plastic materials in the form of ____ [specify, e.g., bars, blocks, pellets, sheets] for use in manufacturing medical goods, namely, artificial bones, limbs and parts of bones and limbs for repairing bones and cartilage, in International Class 17.
For assistance with identifying 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 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.
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 and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional class of goods and/or services, applicant must submit:
(a) 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;
(b) 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;
(c) 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
(d) 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).
If applicant prosecutes 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 an intent to use the mark in commerce under Trademark Act Section 1(b)/a foreign registration under Trademark Act Section 44(e)/an intent to use the mark in commerce under Trademark Act Section 1(b) and 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 (current fee information should be confirmed at http://www.uspto.gov).
37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
Applicant must submit a statement attesting to the facts set forth in the application, dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.32(b) and 2.33. No signed verification was provided with the application.
If the application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the verified statement must include an allegation that “the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901.
If the application is based on Trademark Act Section 1(b) or 44, 15 U.S.C. §1051(b) or §1126, the verified statement must include an allegation that “applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.” 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.
To satisfy this requirement, applicant may include the following declaration paragraph at the end of its response, properly signed and dated:
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date; that the facts set forth in the application are true and correct; that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Renee McCray/
Trademark Examining Attorney
Law Office 111
571.272.9388
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 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.